`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`SAMSUNG ELECTRONICS AMERICA, INC., et al.,
`
`Petitioners
`
`v.
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`SMARTFLASH LLC
`
`Patent Owner
`
`____________
`
`Case CBM2014-00204
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`Patent 8,336,772
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`____________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`
`
`TABLE OF CONTENTS
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`
`PATENT OWNER’S LIST OF EXHIBITS ............................................................ iii
`
`I.
`
`II.
`
` OVERVIEW OF U.S. PATENT NO. 8,336,772 ............................................ 1
`
` THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`FINANCIAL PRODUCT OR SERVICE ........................................................ 3
`
`
`III. THE CHALLENGED CLAIMS OF THE ‘772 PATENT ARE
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW ...... 8
`
`
`IV. THE MULTIPLE PETITIONS AGAINST THE ‘772 PATENT SHOULD
`BE TREATED AS A SINGLE PETITION HAVING A LENGTH IN
`VIOLATION OF 37 CFR 42.24(a)(iii) ......................................................... 10
`
`
`V.
`
` CLAIMS 5, 10, 14, 26 AND 32 ARE DIRECTED TO STATUTORY
`SUBJECT MATTER ..................................................................................... 12
`
`
`VI.
`
`INVALIDITY IN LIGHT OF STEFIK HAS ALREADY BEEN RAISED
`IN ANOTHER PROCEEDING ..................................................................... 13
`
`
`VII. STEFIK ‘235 and STEFIK ‘980 ARE NOT A SINGLE REFERENCE ...... 15
`
`VIII. COMBINATION OF STEFIK ‘235 AND GRUSE IS UNSUPPORTED AS
`PETITIONER HAS NOT PROVEN THAT STEFIK ‘235 AND STEFIK
`‘980 ARE A SINGLE REFERENCE ............................................................ 17
`
`
`IX. GRUSE HAS NOT BEEN SHOWN TO BE 102(A) PRIOR ART
`AGAINST THE CHALLENGED CLAIMS ................................................. 18
`
`
`X.
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` GRUSE DOES NOT ANTICIPATE CLAIMS 14 AND 26 ......................... 21
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`- i -
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`XI. COMBINATION OF GRUSE AND HASEBE DOES NOT RENDER
`OBVIOUS CLAIM 5 ..................................................................................... 24
`
`
`XII. CONCLUSION .............................................................................................. 26
`
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`- ii -
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`PATENT OWNER’S LIST OF EXHIBITS
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`Exhibit Number
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`Exhibit Description
`
`2001
`
`2002
`
`Congressional Record - House, June 23, 2011, H4480-4505
`
`Congressional Record - Senate, Sep. 8, 2011, S5402-5443
`
`2003-2023
`
`Reserved
`
`2024
`
`Samsung’s Motion To Stay Litigation Pending CBM Review
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`
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`- iii -
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`Patent Owner sets forth below, in its Preliminary Response, why no Covered
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`Business Method (CBM) review should be instituted for the patent-at-issue.
`
`Arguments presented herein are presented without prejudice to presenting
`
`additional arguments in a later response should the PTAB institute a CBM review.
`
`
`
`I.
`
`OVERVIEW OF U.S. PATENT NO. 8,336,772
`
`Although the claims define the actual scope of coverage of the patent, as
`
`described in the first paragraph of the BACKGROUND OF THE INVENTION,
`
`the patent-at-issue, U.S. Patent No. 8,336,772 (hereinafter “the ‘772 patent”)
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`generally describes “data storage and access systems ... [and] is particularly useful
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`for managing stored audio and video data, but may also be applied to storage and
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`access of text and software, including games, as well as other types of data.” Col.
`
`1, lines 23-31.
`
`Preferred embodiments described in the paragraph crossing cols. 15 and 16
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`illustrate this further: “FIG. 7 ... shows a variety of content access terminals for
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`accessing data supply computer system 120 over internet 142. The terminals are
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`provided with an interface to a portable data carrier or ‘smart Flash card’ (SFC) as
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`generally described with reference to FIG. 2 and as described in more detail below.
`
`In most embodiments of the terminal the SFC interface allows the smart Flash card
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`data carrier to be inserted into and removed from the terminal, but in some
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`- 1 -
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`embodiments the data carrier may be integral with the terminal.” Exemplary
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`terminals include, but are not limited to, set-top boxes 154, CD/DVD Players 170
`
`and mobile communications devices 152. Col. 16, lines 12-26.
`
`Referring to preferred embodiments, the ‘772 patent discloses that a data
`
`supply system may provide users with a seamless purchase and content delivery
`
`experience. Col. 24, lines 5-10. Users are able to purchase content from a variety
`
`of different content providers even if they do not know where the content providers
`
`are located or how the content is delivered. See id. The exemplary system is
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`operated by a “content data supply ‘system owner,’” who may act as an
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`intermediary between a user seeking to purchase content and content providers,
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`such as record labels, movie studios, and software providers. See col. 14, lines 1-8.
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`When a user accesses the system, he or she is able to select content to purchase or
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`rent from a variety of different content providers. See col. 5, lines 1-12. If the user
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`finds a content item to buy, his or her device will transmit stored “payment data” to
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`a “payment validation system” to validate the payment data. See col. 8, lines 7-11.
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`The payment validation system returns proof that the payment data has been
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`validated, in the form of “payment validation data,” and the user is able to retrieve
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`the purchased content from the content provider. See col. 8, lines 11-14.
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`
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`- 2 -
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`II.
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`FINANCIAL PRODUCT OR SERVICE
`
`Samsung Electronics America, Inc., et al. (collectively “Petitioner”) has
`
`cited claim 10 as being the basis for requesting that a covered business method
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`review be instituted. Petition at 9-10. Since claim 10 does not, in fact, meet the
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`requirements for instituting a review, the Petition should be denied.
`
`As set forth in 37 CFR 42.301(a), to be eligible for CBM review, claim 10
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`must be found to be claiming “a method or corresponding apparatus for performing
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`data processing or other operations used in the practice, administration, or
`
`management of a financial product or service.” In the publication of the Final
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`Rules for “Transitional Program for Covered Business Method Patents -
`
`Definitions of Covered Business Method Patent and Technological Invention,” the
`
`PTO stated:
`
`The definition set forth in § 42.301(a) for covered business
`method patent adopts the definition for covered business method
`patent provided in section 18(d)(1) of the AIA. In administering the
`program, the Office will consider the legislative intent and history
`behind the public law definition and the transitional program itself.
`For example, the legislative history explains that the definition of
`covered business method patent was drafted to encompass patents
`“claiming activities that are financial in nature, incidental to a
`financial activity or complementary to a financial activity.” 157
`CONG. REC. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
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`- 3 -
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`Schumer). This remark tends to support the notion that “financial
`product or service” should be interpreted broadly.
`
`
`Regardless of this explanation, it is improper for this tribunal to rely on the
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`legislative history of the AIA to determine the specific issue before it, i.e., whether
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`trial should be instituted on the present petition. The Supreme Court has “stated
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`time and again that courts must presume that a legislature says in a statute what it
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`means and means in a statute what it says. When the words of a statute are
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`unambiguous, then, this first canon of construction is also the last: judicial inquiry
`
`is complete.” Connecticut Nat’l Bank v. Germain, 503 U.S. 249, 253–54 (1992).
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`“[W]hen the language of the statute is plain, legislative history is irrelevant.”
`
`Zedner v. United States, 547 U.S. 489, 510–11 (2006) (Scalia, J., concurring-in-
`
`part). This long standing rule is based on the constitutional limitation that
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`legislators cannot achieve through floor statements what “they were unable to
`
`achieve through the statutory text.” Exxon Mobil Corp. v. Allapattah Servs., Inc.,
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`545 U.S. 546, 568 (2005). Because Section 18 is unambiguously limited to
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`“financial product[s] and service[s],” there is no reason to look to the statements of
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`a single Senator to re-tool text that was approved by both houses of Congress and
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`signed by the President.
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`Moreover, the PTO’s synopsis of the legislative history is an improper
`
`oversimplification and does not address that “financial product or service” was
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`intended to be interpreted narrowly. In fact, when the House of Representatives
`
`debated Congressman Schock’s Amendment to remove Section 18 in its entirety
`
`from the America Invents Act, several members of Congress discussed their
`
`understanding of that narrower interpretation. For example, Mr. Schock himself
`
`discussed at the beginning of his remarks that “Section 18 carves out a niche of
`
`business method patents covering technology used specifically in the financial
`
`industry and would create a special class of patents in the financial services field
`
`subject to their own distinctive post-grant administrative review.” (Exhibit 2001,
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`Congressional Record - House, June 23, 2011, H4496.) (Emphasis added.)
`
`Similarly, Congressman Shuster expressly discussed his understanding of
`
`the narrow interpretation of the legislation. He stated:
`
`Mr. Chair, I would like to place in the record my understanding
`that the definition of ‘‘covered business method patent,’’ Section
`18(d)(1) of H.R. 1249, the America Invents Act, is intended to be
`narrowly construed to target only those business method patents that
`are unique to the financial services industry in the sense that they are
`patents which only a financial services provider would use to
`furnish a financial product or service. The example that I have been
`given is a patent relating to electronic check scanning, which is the
`type of invention that only the financial services industry would
`utilize as a means of providing improved or more efficient banking
`services. In contrast, Section 18 would not encompass a patent that
`can be used in other industries, but which a financial services
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`- 5 -
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`provider might also use. Lastly, it is also my understanding from
`discussions with the Committee that Section 18 is targeted only
`towards patents for non-technological inventions.
`
`
`
`Id. at H4497. (Emphasis added.) It was based on that understanding that
`
`Congressman Shuster then voted to keep Section 18 in the bill. (See Id. at H4503.)
`
`
`
`Likewise, Congresswoman Waters discussed that Section 18 was directed to
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`cost savings measures in the banking industry when she stated “too-big-to-fail
`
`banks ... are now coming to Congress in hopes that [Congress] will help them steal
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`a specific type of innovation and legislatively take other financial services-related
`
`business method patents referenced in H.R. 1249, section 18. ... Financial
`
`services-related business method patents have saved financial services companies
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`billions of dollars.” Id. at H4496. See also Exhibit 2002, 157 Cong. Rec. S5428
`
`(Rep. Pryor) (“It is of crucial importance to me that we clarify the intent of the
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`[AIA § 18] process and implement it as narrowly as possible.”)
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`In contrast to the banking or other financial products or services patents,
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`claim 8 recites:
`
`8. A data access terminal for controlling access to one or more
`
`content data items stored on a data carrier, the data access terminal
`
`comprising:
`
`a user interface;
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`a data carrier interface;
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`a program store storing code implementable by a processor; and
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`a processor coupled to the user interface, to the data carrier
`
`interface and to the program store for implementing the stored code,
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`the code comprising:
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`code to request identifier data identifying one or more content
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`data items stored on the data carrier;
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`code to receive said identifier data;
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`code to present to a user via said user interface said identified
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`one or more content data items available from the data carrier;
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`code to receive a user selection selecting at least one of said one
`
`or more of said stored content data items;
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`code responsive to said user selection of said selected content
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`data item to transmit payment data relating to payment for said
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`selected content item for validation by a payment validation system;
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`code to receive payment validation data defining if said
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`payment validation system has validated payment for said content
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`data item; and
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`code to control access to said selected content data item
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`responsive to the payment validation data.
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`Claim 10 depends from claim 8 and recites “10. A data access terminal as claimed
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`in claim 8, wherein said data access terminal is integrated with a mobile
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`communications device and audio/video player.” Rather than recite the “practice,
`
`administration, or management of a financial product or service,” claim 10 actually
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`omits the specifics of how payment is made and focuses on technical aspects of
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`data on a data carrier, e.g., code to control access to a selected content data item
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`responsive to payment validation data. Claim 10, therefore, does not recite a
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`“financial product or service” when that phrase is properly construed, both under
`
`its plain meaning and in light of the legislative history showing Congress’ intent of
`
`the narrow meaning of that phrase.
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`
`
`III. THE CHALLENGED CLAIMS OF THE ‘772 PATENT ARE
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW
`
`As set forth in 37 CFR 42.301(a), even if claim 10 were considered to be
`
`claiming “a method or corresponding apparatus for performing data processing or
`
`other operations used in the practice, administration, or management of a financial
`
`product or service,” Petitioner must show that claim 10 does not meet the
`
`exception of being directed to a technological invention. Section 42.301(b) sets
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`forth that a claim is directed to a technological invention (and therefore not the
`
`basis for instituting a CBM review) if “the claimed subject matter as a whole
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`- 8 -
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`recites a technological feature that is novel and unobvious over the prior art; and
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`solves a technical problem using a technical solution.”
`
`Claim 10, as a whole, recites at least one technological feature that is novel
`
`and unobvious over the prior art and solves a technical problem using a technical
`
`solution. At least one technological problem solved by the data access terminal of
`
`claim 10 is controlling access to one or more content data items stored on a data
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`carrier, e.g., as part of a convenient, legitimate acquisition of data from a data
`
`supplier. Moreover, it does so using a technical solution, by using “code to control
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`access to said selected content data item responsive to the payment validation
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`data.”
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`Sections III.D. and E. of the Petition also do not allege, much less prove, that
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`“code to control access to said selected content data item responsive to the
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`payment validation data” was known at the time of the invention of the patent-at-
`
`issue. Thus, as previously held in Epsilon Data Management, LLC et al. v. RPOST
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`Comm. Ltd., CBM2014-00017, paper 21, page 8, any analysis in any other portion
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`of the Petition (other than the portion relating to whether CBM review is proper)
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`need not be considered in determining that the Petitioner has not met its burden of
`
`proving that the claim at issue is a covered business method patent. Id. (“In
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`addition, although Patent Owner addresses the analysis in the Declaration of
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`[Petitioner’s Declarant] (id. at 19), which Petitioner submitted with the Petition,
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`- 9 -
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`this analysis was not included in the relevant portion of the Petition (Pet. 2-6), and
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`need not be considered in determining that the ... Patent[-at-issue] is a covered
`
`business method patent.”) Thus, Petitioner has not proven that the claims of the
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`‘772 patent are not directed to technological inventions exempt from CBM review.
`
`
`
`IV. THE MULTIPLE PETITIONS AGAINST THE ‘772 PATENT SHOULD
`BE TREATED AS A SINGLE PETITION HAVING A LENGTH IN
`VIOLATION OF 37 CFR 42.24(a)(iii)
`
`The Petition under consideration (in CBM2014-00204) is one of two
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`Petitions filed by Petitioner on the same day against the same patent (i.e., the ‘772
`
`patent). (The second Petition was filed in CBM2014-00200.) Both Petitions
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`include a substantial amount of overlap and are at least directed to issues of
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`invalidity in light of alleged prior art including the anticipation and obviousness of
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`claims in the ‘772 patent. However, instead of filing a single Petition addressing
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`all the prior art issues within the page limits set by the PTAB, Petitioner seeks to
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`circumvent the page limits of 37 CFR 42.24(a)(1)(iii) by filing two separate but
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`overlapping Petitions.
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`If the Petitioner was unable to file its Petition within the page limits set forth
`
`by 37 CFR 42.24(a)(1), then the Petitioner was free to file a motion to waive the
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`page limits. Section 42.24(a)(2) specifically sets forth that “Petitions to institute a
`
`trial must comply with the stated page limits but may be accompanied by a motion
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`- 10 -
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`to waive the page limits. The Petitioner must show in the motion how a waiver of
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`the page limits is in the interests of justice and must append a copy of the proposed
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`petition exceeding the page limit to the motion. If the motion is not granted, the
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`proposed petition exceeding the page limit may be expunged or returned.”
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`However, the Petitioner here instead effectively sought to grant its own motion by
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`filing two allegedly separate petitions, each within the 80-page limit and without
`
`showing “how a waiver of the page limits is in the interests of justice.” Clearly, if
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`there is no requirement for the Petitioner to file its allegations of invalidity over
`
`alleged prior art in a single Petition meeting the page limits set forth by the PTAB,
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`the requirements of Section 42.24(a)(2) are meaningless. Thus, Petitioner’s two
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`Petitions in CBM2014-00204 and -00200 should be treated as a single Petition
`
`beyond the page limits set forth by 37 CFR 42.24(a)(1) and each should be denied
`
`on that basis alone.
`
`Moreover, allowing more than one CBM request on the same patent by a
`
`single Petitioner is counter to “the just, speedy, and inexpensive resolution of every
`
`proceeding” and invites an unending stream of Petitions filed by Petitioners in an
`
`effort to drown the Patent Owner’s patents in administrative proceedings, as indeed
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`has happened in the case of this patent family. The PTAB has previously allowed
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`another petitioner to file multiple CBMs against a single patent in the patent family
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`of the patent under review. See CBM2014-00102 and -00103 for 8,118,221,
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`- 11 -
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`CBM2014-00104 and -00105 for 7,334,720, CBM2014-00106 and -00107 for
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`8,033,458, CBM2014-00108 and -00109 for 8,061,598, CBM2014-00110 and -
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`00111 for 8,336,772 (the patent under review), and CBM2014-00112 and -00113
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`for 7,942,317. However, the result has been a continuing barrage of filings such
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`that the other petitioner subsequently filed another 9 petitions against the same six
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`patents – at least one additional petition for each patent, and, in the cases of
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`7,334,720 and 8,336,772, two and three more petitions each, respectively.
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`Together with the ten petitions for the present Petitioner, the six patents in the
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`patent family under review have now been subject to 31 different petitions. Thus,
`
`of the 277 petitions filed through the end of 2014, 31/277 or more than 11% of all
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`CBMs ever filed have targeted only six patents belonging to the same assignee.
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`Clearly, the PTAB should enforce the single Petition requirements in order to meet
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`the requirements of 37 C.F.R. 42.1 that requires “the just, speedy, and inexpensive
`
`resolution of every proceeding.”
`
`
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`V.
`
`
`
`CLAIMS 5, 10, 14, 26 AND 32 ARE DIRECTED TO STATUTORY
`SUBJECT MATTER
`
`On page 3 of the Petition, Petitioner “requests a CBM review of the
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`Challenged Claims on the grounds set forth in the table shown below, and requests
`
`that each of the Challenged Claims be found unpatentable.” In the table, Petitioner
`
`lists Ground 1 as the unpatentability of claims 5, 10, 14, 26 and 32 under 35 U.S.C.
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`§ 101. However, no arguments for this ground are actually presented in the
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`Petition, and Ground 1 of the Petition (starting at page 22) is actually Ground 2 in
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`the table. Thus, Petitioner has not made a prima facie case of unpatentability
`
`under 35 U.S.C. § 101
`
`
`
`VI.
`
`INVALIDITY IN LIGHT OF STEFIK HAS ALREADY BEEN RAISED
`IN ANOTHER PROCEEDING
`
`Petitioner contends that WO/00/08909 (“Gruse”) in combination with Stefik
`
`‘235 (i.e., U.S. Patent No. 5,530,235) renders obvious claim 32 and claim 10.
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`Petition at 50-64 and 75-80. Patent Owner notes that page 74 of the Petition states
`
`that “The features of claims 8 and 10 of the ‘772 patent are obvious over Gruse in
`
`view of Stefik further in view of Hasebe, rendering each of these claims
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`unpatentable under 35 U.S.C. § 103(a).” The heading of Section V.D.2 also states
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`“Gruse In View of Stefik Further In View of Hasebe Renders Obvious Claims 8
`
`and 10.” Nonetheless, Petitioner explicitly waived any challenge to claim 8 when
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`it stated “claim 10 depends from claim 8 and, therefore, incorporates the
`
`limitations of claim 8, which is not challenged.” Patent Owner has relied upon that
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`representation and is not, therefore, required to present arguments separately herein
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`to address claim 8.
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`Similarly, the Petition states on page 54 that “claim 32 depends from claim
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`30 and, therefore, incorporates the limitations of claim 30, which is not
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`challenged.” Patent Owner has relied upon that representation and is not,
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`therefore, required to present arguments separately herein to address claim 30.
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`In CBM2014-00104, an earlier petitioner already raised the issues of: (1)
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`anticipation of claims 10 and 32 in light of Stefik ‘235, (2) obviousness of claims
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`10 and 32 in light of Stefik ‘235 and Stefik ‘980 (U.S. Patent No. 5,629,980), and
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`(3) obviousness of claims 10 and 32 in light of Stefik ‘235, Stefik ‘980 and two
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`other references individually. When enacting the post-grant review proceedings,
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`Congress explicitly sought to protect patent owners from serial attacks, such as this
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`one, by including 35 U.S.C. 325(d) that provides in pertinent part “In determining
`
`whether to institute or order a proceeding …, the Director may take into account
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`whether, and reject the petition or request because, the same or substantially the
`
`same prior art or arguments previously were presented to the Office.” In this case,
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`the same prior art, Stefik ‘235, has been applied to the same claims (i.e., claims 10
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`and 32) in both the current proceedings and CBM2014-00110. Indeed, Petitioner
`
`was not only aware of the contents of the CBM2014-00110 Petition prior to filing
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`this Petition, Petitioner even agreed in litigation to be bound by the results of that
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`proceeding if the Texas litigation was to stayed. See footnote 4, page 3 of Exhibit
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`2024 (“should the Court grant Defendants’ Motion To Stay Pending CBM review,
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`the present Defendants would stipulate to be bound to the same extent as Apple is
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`under § 18(a)(1)(D) of the America Invents Act”).
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`In CBM2014-00110, the Petition, including the arguments based on Stefik,
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`was denied in its entirety. Thus, the Director should reject the petition under 35
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`U.S.C. 325(d) as well.
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`
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`VII. STEFIK ‘235 and STEFIK ‘980 ARE NOT A SINGLE REFERENCE
`
`The Petition alleges at page 50 that “Stefik ’235… incorporates Stefik ’980.”
`
`However, Petitioner has not proven that the alleged incorporation by reference in
`
`the ‘235 patent is sufficient to support a finding that the ‘235 and ‘980 patents
`
`should be considered a single reference. The ‘235 patent states, at col. 2, lines 48-
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`53, that “The currently preferred embodiment of a DocuCard is an instance of a
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`repository, as defined in co-pending application entitled ‘System for Controlling
`
`the Distribution and Use of Digital Works,’ serial number not yet assigned, which
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`is assigned to the assignee of the present invention and which is herein
`
`incorporated by reference.” However, such a reference does not meet the MPEP’s
`
`standard for incorporation by reference. MPEP 608.01(p) (Sixth Ed., Jan. 1995)
`
`set forth the procedure for incorporation by reference at the time the ‘235 patent
`
`was filed. As specified in the MPEP on page 600-55, left column, lines 11-13, “In
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`addition to other requirements for an application, the referencing application
`
`should include an identification of the referenced patent, application, or
`
`publication.” The Petitioner has not established that a reference to “co-pending
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`application entitled ‘System for Controlling the Distribution and Use of Digital
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`Works,’ serial number not yet assigned, which is assigned to the assignee of the
`
`present invention,” actually identifies the referenced application. For example, the
`
`application is not referenced by application serial number, filing date, inventors or
`
`attorney docket number.
`
`As set forth in In re Fouche, 169 USPQ 429 (CCPA 1971), when the issue
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`arises as to whether an incorporation by reference is proper, the test is “whether the
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`original referring language was adequate to effect an incorporation by reference” --
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`a test which is resolved by determining whether the application allegedly
`
`incorporated by reference is distinguished “from all others.” Id. at 431. Petitioner,
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`which bears the burden of proof on the issue, has not proven that the application is
`
`distinguished from all others (e.g., by a declaration from Stefik describing that the
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`‘980 patent is the only such application). Thus, the alleged incorporation by
`
`reference is not proper, and the ‘235 and ‘980 patents should not be considered a
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`single reference.
`
`Furthermore, the Petition does not allege that if Stefik ‘235 does not
`
`properly incorporate Stefik ‘980 by reference that it would have been obvious to do
`
`so. As a result, any reliance by the Petition on Stefik ‘980 is an acknowledgment
`
`that the combination of Gruse and Stefik ‘235 does not actually render obvious
`
`claims 10 and 32. See, e.g., for claim 32: Petition at 51 (citing Stefik ‘980:
`
`
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`- 16 -
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`
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`Abstract), Petition at 56 (citing Stefik ‘980: 16:43-51), Petition at 58 (citing Stefik
`
`‘980: FIG. 12 and 14:11-50), Petition at 59 (citing Stefik ‘980: Fig. 12; 14:11-50),
`
`Petition at 60 (citing Stefik ‘980: Fig. 12; 14:15-27), Petition at 62 (citing Stefik
`
`‘980: 7:46-49), Petition at 64 (citing Stefik ‘980: 8:23-27; 13:48-50). See, e.g., for
`
`claim 10: Petition at 80 (citing Stefik ‘980: 8:23-27; 13:48-50). Also, for claim 10,
`
`with respect to claim 8 from which claim 10 depends, the Petition alleges that “The
`
`features of claims 8(a) to 8(d) are common to those of 30, and comprehensively
`
`addressed above at 30(a)-30(d).” Thus, all of the improper references to Stefik
`
`‘980 with respect to claim 30/32 are also improper with respect to claim 10.
`
`Moreover, as described in the first paragraph of the Petition at 53, the
`
`discussion of the external interface, which is the reason for combining Gruse with
`
`Stefik ‘235, is actually found in Stefik ‘980 (“Stefik ‘980 at FIGS. 2, 12, 7:43-56;
`
`14:11-50 (discussing external interface 1206 such as RS-232, PCMCIA, or
`
`FDDI).”).
`
`
`
`VIII. COMBINATION OF STEFIK ‘235 AND GRUSE IS UNSUPPORTED AS
`PETITIONER HAS NOT PROVEN THAT STEFIK ‘235 AND STEFIK
`‘980 ARE A SINGLE REFERENCE
`
`Pages 50-64 and 75-80 of the Petition allege that claims 32 and 10 are
`
`obvious based on Gruse in combination with Stefik ‘235. As described in Section
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`VII. above, Petitioner has not proven that the ‘235 and ‘980 patents are a single
`
`
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`- 17 -
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`
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`reference. As such, the Petition has not provided sufficient evidence that one of
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`ordinary skill in the art would have combined Gruse with the ‘235 and ‘980
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`patents.
`
`
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`
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`IX. GRUSE HAS NOT BEEN SHOWN TO BE 102(A) PRIOR ART
`AGAINST THE CHALLENGED CLAIMS
`
`The Petition alleges that “Gruse ... qualifies as prior art under 35 U.S.C.
`
`
`
`§ 102(a)” and discusses various dates (e.g., filing dates of priority applications)
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`related to Gruse. Petition at 4-5. However, the only relevant date with respect to
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`Gruse is its publication date: February 24, 2000. Gruse is not alleged to be prior
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`art under 35 U.S.C. § 102(e), and even if it was alleged to be so, prior art under 35
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`U.S.C. § 102(e) is improper in CBM proceedings. See Meridianlink, Inc. v. DH
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`Holdings, LLC, CBM2013-00008, Paper 24 (Sept. 12, 2013) (citing Section
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`18(a)(1)(C) of the America Invents Act).
`
`
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`In order to attempt to overcome the fact that the publication date of Gruse
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`(i.e., Feb. 24, 2000) is after the filing date (i.e., Oct. 25, 1999) of the Great Britain
`
`(GB) priority document (Exhibit 1008) to which priority is claimed, the Petition
`
`alleges that the challenged claims are not entitled to the filing date of the GB
`
`priority document. However, Petitioner has not met its burden of proof to establish
`
`
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`- 18 -
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`
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`that the challenged claims are not entitled to the filing date of the GB priority
`
`document.
`
`
`
`The Petition alleges that the GB priority document “fails to support many
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`limitations recited in the Challenged Claims” but then only attempts to explain in
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`detail1 why the GB priority document does not, with respect to claim 1, support:
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`code responsive to said user selection of said at least one
`
`selected item of multimedia content to transmit payment data relating
`
`to payment for said at least one selected item of multimedia content
`
`via said wireless interface for validation by a payment validation
`
`system; ...
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`wherein said user interface is operable to enable a user to access
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`said at least one selected item of multimedia content responsive to
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`said code to control access permitting access to said at least one
`
`selected item of multimedia content.
`
`See Petition at 19-20.
`
`1 Without providing any details, the Petition also states “Similarly recited
`
`limitations from independent claims 8, 14, 25, and 30 of the ‘772 Patent are
`
`likewise unsupported.” Petition at 21. “Thus, independent claims 1, 8, 14, 25, and
`
`30 are not supported by the ‘227.2 Appln[.] By virtue of dependency, claims 5,
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`10, 26, and 32 are likewise unsupported.” Id.
`
`
`
`- 19 -
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`
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`To support its allegations, the Petition creates a straw man argument that the
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`second sentence of the first full paragraph of page 4 of the GB priority document
`
`does not support the limitation allegedly missing from the GB priority document.
`
`Petition at 20. However, the Petition ignores that in addition to other disclosures in
`
`the priority document, the paragraph in the GB priority document before the one
`
`cited by Petitioner (crossing pages 3 and 4) recites:
`
`
`
`The data storage means and/or the retrieval device can be
`
`provided with access control means to prevent unauthorised access to
`
`the downloaded data. Alternatively, this access control means can be
`
`used to stop or provide only limited access of the user to the
`
`downloaded data in accordance with the amount paid. Thus, for
`
`example, a complete set of data information relating to a particular
`
`topic, a particular music track, or a particular software package might
`
`be downloaded, although access to part of the data set might thereafter
`
`be controlled by payments made by a user at a later stage. Thus, a user
`
`could pay to enable an extra level on a game or to enable further
`
`tracks of an album.
`
`The Petition further alleges on page 20 that “The only suggestion in
`
`the ‘227.2 Appln. that the access control means is responsive to the payment
`
`validation means is on page 4.” Such an assertion ignores that page 2 of the
`
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`- 20 -
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`
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`GB priority document teaches “The combination of the payment validation
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`means with the data storage means allows the access to the downloaded data
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`which is to be stored by the data storage means, to be made conditional upon
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`checked and validated payment being made for the data.” The Petition
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`further ignores numerous references in the GB priority document to
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`selection of content over the internet. See, e.g., page 2, last two
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