IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Racz et al.
`Attorney Docket No.: 39843-0008CP2
`
`U.S. Patent No.: 8,336,772
`
`Issue Date:
`December 25, 2012
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`Appl. Serial No.: 13/212,047
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`Filing Date:
`August 17, 2011
`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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`CORRECTED PETITION FOR COVERED BUSINESS METHOD PATENT
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` REVIEW OF UNITED STATES PATENT NO. 8,336,772 PURSUANT TO 35
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`U.S.C. § 321 AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
`
`
`
`
`In re Patent of: Racz et al.
`Attorney Docket No.: 39843-0008CP2
`
`U.S. Patent No.: 8,336,772
`
`Issue Date:
`December 25, 2012
`
`Appl. Serial No.: 13/212,047
`
`Filing Date:
`August 17, 2011
`Title:
`DATA STORAGE AND ACCESS SYSTEMS
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`CORRECTED PETITION FOR COVERED BUSINESS METHOD PATENT
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` REVIEW OF UNITED STATES PATENT NO. 8,336,772 PURSUANT TO 35
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`U.S.C. § 321 AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
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`
`
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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
`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 ................................. 3
`C. Claim Construction under 37 C.F.R. §§ 42.304(b)(3) .............................. 5
`D. The ‘772 Patent is a Covered Business Method Patent ............................ 8
`E. The ‘772 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 ‘772 PATENT ........................................................... 13
`A. Brief Description ..................................................................................... 14
`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
`‘772 PATENT IS UNPATENTABLE .......................................................... 16
`A. GROUND 1 – Ginter Anticipates Claims 5, 10, 14, 26, 32. .................. 16
`1. Overview of Ginter ........................................................................ 16
`2. Ginter Anticipates Claims 5, 10, 14, 26, and 32. .......................... 26
`VI. CONCLUSION .............................................................................................. 80
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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
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`EXHIBITS
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`SAMSUNG-1001 U.S. Patent No. 8,336,772 to Hulst et al. (“The ‘772 Patent” or
`“‘772”)
`
`SAMSUNG-1002 Excerpts from the Prosecution History of The ‘772 Patent (“the
`Prosecution History”)
`
`SAMSUNG-1003 Declaration of Dr. Jeffrey Bloom re The ‘772 Patent
`
`SAMSUNG-1004 RESERVED
`
`SAMSUNG-1005 RESERVED
`
`SAMSUNG-1006 RESERVED
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`SAMSUNG-1007 PCT Application PCT/GB00/04110 (“the ‘110 Appln.” or
`“‘110”)
`
`SAMSUNG-1008 United Kingdom Patent Application GB9925227.2 (“the ‘227.2
`Appln.” or “‘227.2”)
`
`SAMSUNG-1009 Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and Technolog-
`ical Invention, 77 Fed. Reg. 157 (August14, 2012)
`
`SAMSUNG-1010 A Guide to the Legislative History of the America Invents Act;
`Part II of II, 21 Fed. Cir. Bar J. No. 4
`
`SAMSUNG-1011 Interim Guidance for Determining Subject Matter Eligibility for
`Process Claims in View of Bilski v. Kappos (July 27, 2010)
`
`SAMSUNG-1012 Apple Inc. v. Sightsound Technologies, LLC, CBM2013-00019
`Paper No. 17 (entered October 8, 2013) at 11-13
`
`SAMSUNG-1013 Volusion, Inc. v. Versata Software, Inc. and Versata Develop-
`ment Group, Inc., CBM2013-00017 Paper No. 8 (entered Octo-
`ber 24, 2013)
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`iii
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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
`SAMSUNG-1014 Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024
`Paper No. 16 (entered November 19, 2013)
`
`SAMSUNG-1015 RESERVED
`
`SAMSUNG-1016 U.S. Patent No. 8,118,221 (“the ‘221 Patent” or “‘221”)
`
`SAMSUNG-1017 RESERVED
`
`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 U.S. Patent Application No. 13/212,047 (“the ‘047 Appln.” or
`“047”)
`
`SAMSUNG-1027 RESERVED
`
`SAMSUNG-1028 RESERVED
`
`SAMSUNG-1029 RESERVED
`
`SAMSUNG-1030 RESERVED
`
`iv
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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
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`SAMSUNG-1031 RESERVED
`
`SAMSUNG-1032 RESERVED
`
`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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`v
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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
`Three sister companies, Samsung Electronics America, Inc., Samsung Elec-
`
`tronics Co., Ltd., and Samsung Telecommunications America, LLC (“Petitioner”
`
`or “Samsung”) petition for Covered Business Method Patent Review (“CBM”) un-
`
`der 35 U.S.C. §§ 321 and § 18 of the Leahy-Smith American Invents Act of claims
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`5, 10, 14, 26, 32 (“the Challenged Claims”) of U.S. Patent No. 8,336,772. As ex-
`
`plained in this petition, there exists a reasonable likelihood that Samsung will pre-
`
`vail in demonstrating unpatentability with respect to at least one of the Challenged
`
`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.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Samsung Electronics America, Inc., Samsung Electronics Co., Ltd., and
`
`
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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)
`Petitioner is not aware of any disclaimers or reexamination certificates for
`
`The ‘772 Patent. The ‘772 Patent is the subject of a number of civil actions includ-
`
`ing: Smartflash LLC et al. v. Apple, Inc., Case No. 6:13-cv-00447 and Smartflash
`
`et al v. Samsung Electronics Co. Ltd. et al, Case No. 6:13-cv-00448. It is also the
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`1
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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
`subject of the following Petitions for Covered Business Method Review: Apple
`
`Inc. v. Smartflash LLC, CBM2014-00110 and CBM2014-00111. Petitioner is
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`concurrently petitioning, in another petition assigned attorney docket number
`
`39843-0008CP1, for CBM review of the ‘772 Patent under grounds additional to
`
`those presented in this petition.
`
`Petitioner respectfully submits that the grounds of rejection of the ‘772 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 ‘772 Patent that was filed on April 3, 2014
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`and that has been assigned case number CBM2014-00111. Petitioner notes, e.g.,
`
`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 CBM2014-00111 petition. In more detail,
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`this Petition demonstrates anticipation of claims 5, 10, 14, 26, and 32 of the ‘772
`
`Patent by Ginter; Apple Inc. instead argues in its CBM2014-00111 petition that
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`Ginter renders these claims obvious. Petitioner further notes that the evidence of
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`anticipation provided in the Declaration of Dr. Jeffrey Bloom is additional to the
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`evidence of invalidity advanced by Apple Inc. in the CBM2014-00111 proceeding,
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`and would further inform the Patent Trial and Appeal Board’s assessment of the
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`validity/invalidity of the ‘772 Patent. Based on these and other differences be-
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`tween the arguments and evidence presented by Petitioner and the arguments and
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`evidence presented by Apple Inc., Petitioner respectfully requests consideration by
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`2
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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
`the Patent Trial and Appeal Board of the grounds of rejection of the ‘772 Patent set
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`forth 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 for ser-
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`vice at 3200 RBC Plaza, 60 South Sixth Street, Minneapolis, MN 55402 (T: 202-
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`783-5070) or via electronic service by email at CBM39843-0008CP2@fr.com.
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`PAYMENT OF FEES
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`II.
`Samsung authorizes charges to Deposit Acct. 06-1050 for the fee set in 37
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`C.F.R. § 42.15(b) for this Petition and for payments of any related additional fees.
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`III. REQUIREMENTS FOR CBM UNDER 37 C.F.R. § 42.304
`
`A. Grounds for Standing Under 37 C.F.R. § 42.304(a)
`Samsung certifies that the ‘772 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
`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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`3
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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
`tion that follows, indicating where each claim elements can be found in the cited
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`prior art, and the relevance of that prior art. Additional explanation and support for
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`each ground of rejection is set forth in Exhibit SAMSUNG-1003, the Bloom of Dr.
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`Jeffrey Bloom (“Bloom”), referenced throughout this Petition.
`
`Ground
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`‘772 Patent Claims
`
`Basis for Rejection
`
`Ground 1 5, 10, 14, 26, 32
`
`§ 102: Ginter
`
`The ‘772 Patent issued Dec. 25, 2012 from the ‘047 Appln. (SAMSUNG-
`
`1026), which was filed Aug. 17, 2011. The ‘047 Appln. is a continuation of the
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`‘872 Appln. (SAMSUNG-1022), which was filed Nov. 10, 2010 (now U.S. Patent
`
`No. 8,118,221, SAMSUNG-1016); which is a continuation of the ‘558 Appln.
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`(SAMSUNG-1020) filed Jan. 15, 2008 (now U.S. Patent No. 7,942,317, SAM-
`
`SUNG-1019), which is a continuation of the ‘758 Appln. (SAMSUNG-1007) filed
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`Jan. 19, 2006 (now U.S. Patent No. 7,334,720, SAMSUNG-1021), which is a con-
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`tinuation of the ‘716 Appln. (SAMSUNG-1007) filed Sep. 17, 2002 (now aban-
`
`doned), which is a National Stage Entry of the ‘110 Appln. (SAMSUNG-1007)
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`filed Oct. 25, 2000 in the UK.1 Ginter (SAMSUNG-1023) qualifies as prior art
`
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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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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
`under 35 U.S.C. § 102(b); Ginter issued June 22, 1999, more than one year before
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`the earliest effective filing date of the Challenged Claims and before the filing date
`
`of the ‘227.2 Appln. Accordingly, Ginter is eligible under AIA § 18(a)(1)(C) as
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`prior art for CBM review of The ‘772 Patent.
`
`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 ‘772 Patent. 2
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`1.
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`CONSTRUCTION 1 – Payment data
`
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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 is not binding up-
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`on Petitioner in any litigation related to the subject patent. See In re Zletz, 893 F.2d
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`319, 321-22 (Fed. Cir. 1989).
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`5
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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
`For this CBM review, “payment data” should be construed to include and be
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`met by data that relates to previous, present, and/or prospective payment.
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`Claims 1, 4, 8, 14, 19, 25, 30, and 35 of the ‘772 Patent each recite the term
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`“payment data.” Claim 14, for example, recites the following - “code responsive
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`to said user selection of said selected at least one item of multimedia content to
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`transmit payment data relating to payment for said selected at least one item of
`
`multimedia content via said wireless interface for validation by a payment valida-
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`tion system . . . .” A POSITA3 would understand that, as used in claims 1, 4, 8, 14,
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`19, 25, 30, and 35, the term “payment data” indicates and is met by data that re-
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`lates to previous, 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-
`
`tion of the ‘772 Patent. See Bloom at, e.g., ¶ 28. The ‘317 Patent describes,
`
`e.g., “[d]ata storage and access systems . . . for downloading and paying for data,”
`
`including a payment validation system that “validate[s] payment with an external
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`authority such as a bank or building society,” such that “[t]he combination of the
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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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`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 ‘772 Patent’s effective filing date.
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`6
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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
`ditional upon checked and validated payment being made for the data.” ‘772 at
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`Abstract, 2:8-15. The ‘772 Patent’s description of making access to downloaded
`
`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 payment. See
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`Bloom at, e.g., ¶ 28. The ‘772 Patent also states, e.g., in the Abstract, that “[d]ata
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`storage and access systems are described for downloading a paying for data such as
`
`audio and video data, text, software, games, and other types of data” – further sup-
`
`porting that “payment data”, as used in the claims of the ‘772 Patent, can relate to
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`present payment. See also ‘772 at 4:54-61 (“the portable data carrier further com-
`
`prises a program store for storing code . . . wherein the code comprises code to
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`output payment data from the payment data memory”), 3:49-64, 4:36-38. In yet
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`another example, the ‘772 Patent states that “[t]he carrier may also store content
`
`use rules pertaining to allowed use of stored data items,” and that “these use rules
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`may be linked to payments made from [a] card . . .” – further supporting that
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`“payment data”, as used in the claims of the ‘772 Patent, can relate to previous
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`payment. ‘772 at 5:1-12; see also 5:4-11, 5:17-20.
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`As such, the disclosure in the specification of the ‘772 Patent is consistent
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`with the term “payment data,” as used in claims 1, 4, 8, 14, 19, 25, 30, and 35, as it
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`would be understood by a POSITA: data that relates to previous, present, and/or
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`prospective payment. Bloom at, e.g., ¶ 28. Thus, for purposes of this proceeding,
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`7
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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
`“payment data” should be construed to include and be met by data that relates to
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`previous, present, and/or prospective payment.
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`D. The ‘772 Patent is a Covered Business Method Patent
`The ‘772 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. ‘772 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-
`
`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-
`
`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,
`
`2011) (statement of Sen. Schumer)). Moreover, as the Guide to the Legislative His-
`
`tory of the America Invents Act indicates, the language “practice, administration, or
`
`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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`8
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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
`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 ‘772 Patent are directed
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`to a “portable data carrier for storing and paying for data and to computer systems
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`for providing access to data to be stored.” See ‘772 at 1:24-25. Claim 8, for exam-
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`ple (the limitations of which are incorporated into claim 10, which depends from
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`claim 8) recites “[a] data access terminal for controlling access to one or more con-
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`tent data items stored on a data carrier” that includes a processor to implement
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`“code to present to a user via said user interface said identified one or more content
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`data items available from the data carrier” and “code responsive to said user selec-
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`tion of said selected content data item to transmit payment data relating to payment
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`for said selected content item for validation by a payment validation system.”
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`Claim 10 adds that the “data access terminal as claimed in claim 8 . . . is integrated
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`with a mobile communications device and audio/video player.”
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`9
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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
`Unquestionably, the data access terminal, data carrier, and payment valida-
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`tion system of claim 8 are used for data processing in the practice, administration,
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`and management of financial products and services; specifically, for processing
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`payments for data downloads. Bloom at, e.g., ¶ 23. Indeed, in a recent decision
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`involving highly similar claims, the Board determined that selling a desired digital
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`audio signal to a user constitutes financial activity. See SAMSUNG-1012 at 11-13
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`(“The cited entities may not provide typical financial services, but . . . they do sell
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`digital content, which is the financial activity recited in claim 1”).
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`The specification of The ‘772 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 ‘772 at 6:64-7:1, 13:30-42. Even if claim 8 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 method of claim 10 is a method for performing data processing used in the
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`practice, administration, or management of a financial product or service and that,
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`therefore, The ‘772 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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`10
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`Attorney Docket No 39843-0008CP2
`CBM of U.S. Patent No. 8,336,772
`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 ‘772 Patent is a CBM pa-
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`tent that is eligible for the review requested by Petitioner.
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`E.
`The ‘772 Patent Is Not Directed to a Technological Inven-
`tion, 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, a patent need
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`only have one claim directed to a covered business method, and not a technological
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`invention. See, e.g., SAMSUNG-1009 at 48736-37.
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`The claims of the ‘772 Patent fail to recite novel and unobvious technology,
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`and fail to recite a technical problem solved by a technical solution. See Bloom at,
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`e.g., ¶ 23. Thus, the patent is subject to Section 18 review. Although the inde-
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`pendent claims of The ‘772 Patent recite computer-related terms such as “non-
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`volatile memory”, “data terminal”, and “data carrier”, Congress has explained that
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`simply reciting words describing generic technology such as “computer hardware, .
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`. .software, memory, computer-readable storage medium, [or] databases” does not
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`make a patent a technological invention. SAMSUNG-1010 at 634.
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`The specification of The ‘772 Patent confirms that the computer-related
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`terms recited in The ‘772 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.” ‘772 at 4:7-8, 16:52-55, 18:16-20. Consequently, the
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`‘772 patent claim is not transformed into a technological invention by their recita-
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`tion of these computer-related terms.
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`The ‘772 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.” ‘772 at 2:15-19, 5:16-20. The ‘772 Patent’s solution
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`to this non-technical problem is nothing more the combination of prior art struc-
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`tures to achieve a normal, expected, and predictable result: the use of a data supply
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`system, content provision system, data terminal and data carrier to restrict access to
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`data based on payment. See, e.g., ‘772 at Abstract, 13:30-42. A teaching of a
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`combination of prior art structures that achieves a predictable result does not “ren-
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`der a patent a technological invention.” SAMSUNG-1009 at 48755. Indeed, a per-
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`son having ordinary skill in the art at the time that the ‘772 Patent was filed would
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`not have considered the methods described and claimed by the ‘772 Patent to be
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`technical. See 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 ‘772 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 appropriate.
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`IV. SUMMARY OF THE ‘772 PATENT
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`A. Brief Description
`The ‘772 Patent includes 36 claims, of which claims 1, 8, 14, 25, 30, 35, and
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`36 are independent. The technology claimed in the ‘772 Patent generally relates to
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`systems and methods “for downloading and paying for data such as audio and vid-
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`eo data, text, software, [and] games . . . .” ‘772 at Abstract. The ‘772 Patent pur-
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`ports to address a specific problem: “the growing prevalence of so-called data pi-
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`rates” who “obtain data either by unauthorized or legitimate means and then make
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`this data available essentially world-wide over the internet without authorization.”
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`‘772 at 1:32-42. Within this context, the ‘772 Patent describes “combining digital
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`right management with content data storage,” and states that “[b]inding the data
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`access and payment together allows the legitimate owners of the data to make the
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`data available themselves over the internet without fear of loss of revenue, thus
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`undermining the position of data pirates.” ‘772 at 2:6-19, 5:33-37.
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`Within this backdrop, the ‘772 Patent purportedly proffers solutions using
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`conventional and standard technologies. First, the ‘772 Patent claims “a handheld
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`multimedia terminal” for an end user to select and pay for “multimedia content
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`available for retrieving via said wireless interface” so that the end user can “re-
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`trieve [the] multimedia content via said wireless interface from a data supplier and
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`write said retrieved multimedia content into said non-volatile memory.” See ‘772
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`at 27:55-28:39. This corresponds to the end user purchasing multimedia content
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`for downloading from the Internet. See Bloom at, e.g., ¶¶ 23,24. One variation is
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`when the recited non-volatile memory is replaced with a data carrier. Id. In this
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`variation, The ‘772 Patent claims “a handheld multimedia terminal” for an end user
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`to select and pay for “multimedia content available for retrieving via said wireless
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`interface” so that the end user can “retrieve [the] multimedia content via said wire-
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`less interface from a data supplier and write said retrieved multimedia content into
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`said data carrier.” See ‘772 at 28:55-29:25.
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`Second, The ‘772 Patent claims “a handheld multimedia terminal” for an
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`end user to select and pay for “multimedia content stored in the non-volatile
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`memory [of the handheld multimedia terminal]” so that the end user can “access
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`said [] multimedia content.” See ‘772 at 26:65-26:43. This can correspond to the
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`end user renewing a license regarding multimedia content already available on the
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`handheld multimedia terminal. See Bloom at, e.g., ¶ 23, 24. One variation is when
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`the recited non-volatile memory is replaced with a data carrier. Id. In this varia-
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`tion, The ‘772 Patent claims “a handheld multimedia terminal” for an end user to
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`select and pay for “one or more content data items available from the data carrier”
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`so that the end user can “control access to said selected content data item respon-
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`sive to payment validation data.” See ‘772 at 27:15-41.
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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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`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 ‘772 PATENT IS UNPATENTA-
`BLE
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`Claims 5, 10, 14, 26, and 32 are challenged. Claim 5 depends from claim 1
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`and incorporates the subject matter of claim 1. Claim 10 depends from claim 8
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`and, therefore, incorporates the subject matter of claim 8. Claim 26 depends from
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`claim 25 and, therefore, incorporates the subject matter of claim 25. Claim 32 de-
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`pends from claim 30 and, therefore, incorporates the subject matter of claim 30.
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`As demonstrated below, claims 5, 10, 14, 26, and 32 are anticipated by Ginter.
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`A. GROUND 1 – Ginter Anticipates Claims 5, 10, 14, 26, 32.
`The features of claims 5, 10, 14, 26, and 32 are anticipated by Ginter, ren-
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`dering each of these claims unpatentable under 35 U.S.C. § 102(b).
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`1. Overview of Ginter
`Ginter describes secure transaction management and electronic rights protec-
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`tion achieved through a virtual distribution environment (“VDE”) that controls, us-
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`ing payment and other information, access to electronically disseminated and
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`stored content objects. Ginter at Abstract4; Bloom at, e.g., ¶ 29. In some imple-
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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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`mentations, Ginter’s content objects are delivered to end users in “containers,”
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`which, as shown by FIG. 5B (annotated), contain both information content (which
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`may include, e.g., textual, audio, video, and/or software elements) and associated
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`control information; in other implementations, Ginter’s control information is de-
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`livered separately from the content with which it is associated. Ginter at 13:50-67,
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`43:24-30, 58:57-65; Bloom at, e.g., ¶ 29; see also FIG. 5B ann. (a),(b).
`
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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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`In either case, controls on access to and/or the use of information content
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`may be enforced through budgeting, metering, and/or other methods that involve
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