Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper No. 9
`Entered: March 30, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`____________
`
`Case CBM2014-00204
`Patent 8,336,772 B2
`____________
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`MATTHEW R. CLEMENTS, and PETER P. CHEN,
`Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`571-272-7822
`
`
`
`
`
` Paper No. 9
`Entered: March 30, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`____________
`
`Case CBM2014-00204
`Patent 8,336,772 B2
`____________
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`MATTHEW R. CLEMENTS, and PETER P. CHEN,
`Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`CBM2014-00204
`Patent 8,336,772 B2
`
`
`
`INTRODUCTION
`
`A. Background
`Samsung Electronics America, Inc. and Samsung Electronics Co.,
`Ltd. (“Petitioner”)1 filed a Corrected Petition (Paper 4, “Pet.”) to institute a
`covered business method patent review of claims 5, 10, 14, 26, and 32 of
`U.S. Patent No. 8,336,772 B2 (Ex. 1001, “the ’772 patent”) pursuant to § 18
`of the Leahy-Smith America Invents Act (“AIA”)2. Smartflash LLC
`(“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 324, which provides that a
`covered business method patent review may not be instituted “unless . . . it is
`more likely than not that at least 1 of the claims challenged in the petition is
`unpatentable.”
`After considering the Petition and Preliminary Response, we
`determine that the ’772 patent is a covered business method patent. We
`further determine that Petitioner has not demonstrated that it is more likely
`than not that at least one of the challenged claims is unpatentable.
`Therefore, we do not institute a covered business method patent review of
`the ’772 patent.
`
`
`1 Petitioner provided in its updated mandatory notice that “Samsung
`Electronics America, Inc., and Samsung Electronics Co.,
`Ltd. are now the real-parties-in-interest in this Covered Business Method
`Review. Samsung Telecommunications America, LLC, (“STA”) originally
`a Petitioner and real-party-in-interest at the time of filing the Petition
`requesting Covered Business Method Review, has merged with and into
`Petitioner Samsung Electronics America, Inc. as of January 1, 2015, and
`therefore STA no longer exists as a separate corporate entity.” Paper 8, 2.
`2 Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011).
`
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`2
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`Patent 8,336,772 B2
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`B. Asserted Grounds
`Petitioner contends that the challenged claims are unpatentable based
`on the following grounds. Pet. 3–5, 26–80.
`Reference(s)
`Basis
`Claims Challenged
`Not Applicable
`§ 101
`5, 10, 14, 26, and 32
`Gruse3
`§ 102(a)
`14 and 26
`Gruse and Stefik4
`§ 103
`32
`Gruse and Hasebe5
`§ 103
`5
`Gruse, Stefik, and
`§ 103
`10
`Hasebe
`
`Petitioner also provides a declaration from Dr. Jeffrey A. Bloom (Bloom
`Declaration,” Ex. 1003).
`Patent Owner contends correctly that the § 101ground is not otherwise
`discussed in the Petition. PO Resp. 13. Under 37 C.F.R. § 42.22(a)(2),
`“[e]ach petition . . . must include . . . [a] full statement of the reasons for the
`relief requested, including a detailed explanation of the significance of the
`evidence including material facts, and the governing law, rules, and
`precedent.” See 37 C.F.R. § 304 (Rules covering Covered Business Method
`Patent Review incorporating § 42.22). Because Petitioner’s asserted ground
`under 35 U.S.C. § 101 does not comply with Rules 42.22 and 42.304, we
`deny review based on this ground.
`
`
`3 PCT Publication No. WO 00/08909 (Ex. 1006) (“Gruse”).
`4 U.S. Patent No. 5,530,235 (Ex. 1004) (“Stefik ’235”), which Petitioner
`alleges incorporates U.S. Patent No. 5,629,980 (Ex. 1005) (“Stefik ’980”).
`Pet. 50.
`5 U.S. Patent No. 5,761,651 (Ex. 1027) (“Hasebe”).
`
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`C. Related Matters
`The parties indicate that the ’772 patent is the subject of the following
`co-pending district court cases: Smartflash LLC v. Apple Inc., Case No.
`6:13-cv-447 (E.D. Tex.); and Smartflash LLC v. Samsung Electronics Co. ,
`Case No. 6:13-cv-448 (E.D. Tex.). Pet. 1–2; Paper 5, 2–3. Patent Owner
`also indicates that the ’772 patent is the subject of a third district court case:
`Smartflash LLC v. Google, Inc., Case No. 6:14-cv-435 (E.D. Tex.). Paper 5,
`3. Petitioner further asserts that patents claiming priority back to a common
`series of applications are currently the subject of CBM2014-00102,
`CBM2014-00106, CBM2014-00108, and CBM2014-00112, filed by Apple
`Inc. See Paper 5, 2. Petitioner further advises us that Apple Inc. also filed
`petitions for covered business method patent review of the ’772 patent:
`CBM2014-00110 and CBM2014-00111. Pet. 2.
`Petitioner filed a concurrent petition for covered business method
`patent review of the ’772 patent: CBM2014-00200 (“the 200 Petition”).6 In
`addition, Petitioner filed eight other Petitions for covered business method
`patent review challenging claims of other patents owned by Patent Owner
`and disclosing similar subject matter: CBM2014-00190; CBM2014-00192;
`CBM2014-00193; CBM2014-00194; CBM2014-00196; CBM2014-00197;
`CBM2014-00198; and CBM2014-00199.
`
`
`6 Patent Owner argues that the multiple petitions filed against the ’772 patent
`violate the page limit requirement of 37 C.F.R. § 42.24(a)(iii), but does not
`cite any authority to support its position. Prelim. Resp. 10–12. The page
`limit for petitions requesting covered business method patent review is 80
`pages (37 C.F.R. § 42.24(a)(iii)), and each of the ’200 and ’204 Petitions
`meets that requirement.
`
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`D. The ’772 Patent
`The ’772 patent relates to “a portable data carrier for storing and
`paying for data and to computer systems for providing access to data to be
`stored” and the “corresponding methods and computer programs.”
`Ex. 1001, 1:24–28. Owners of proprietary data, especially audio recordings,
`have an urgent need to address the prevalence of “data pirates,” who make
`proprietary data available over the internet without authorization.
`Id. at 1:32–58. The ’772 patent describes providing portable data storage
`together with a means for conditioning access to that data upon validated
`payment. Id. at 1:62–2:3. According to the ’772 patent, this combination of
`the payment validation means with the data storage means allows data
`owners to make their data available over the internet without fear of data
`pirates. Id. at 2:10–18.
`As described, the portable data storage device is connected to a
`terminal for internet access. Id. at 1:62–2:3. The terminal reads payment
`information, validates that information, and downloads data into the portable
`storage device from a data supplier. Id. The data on the portable storage
`device can be retrieved and output from a mobile device. Id. at 2:4–7. The
`’772 patent makes clear that the actual implementation of these components
`is not critical, and the alleged invention may be implemented in many ways.
`See, e.g., id. at 25:59–62 (“The skilled person will understand that many
`variants to the system are possible and the invention is not limited to the
`described embodiments.”).
`
`E. Illustrative Claim
`Petitioner challenges claims 5, 10, 14, 26, and 32 of the ’772 patent.
`Claim 14 is an independent claim; claim 5 depends from claim 1; claim 10
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`Patent 8,336,772 B2
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`depends from claim 8; claim 26 depends from claim 25; and claim 32
`depends from claim 30. Claim 25 is illustrative of the challenged claims and
`is reproduced below.
`25. A handheld multimedia terminal for retrieving and
`accessing protected multimedia content, comprising:
`a wireless interface configured to interface with a wireless
`network for communicating with a data supplier;
`non-volatile memory configured to store multimedia
`content, wherein said multimedia content comprises one or more
`of music data, video data and computer game data;
`a program store storing processor control code;
`a processor coupled to said non-volatile memory, said
`program store, said wireless interface and
`a user interface to allow a user to select and play said
`multimedia content;
`a display for displaying one or both of said played
`multimedia content and data relating to said played multimedia
`content;
`wherein the processor control code comprises:
`code to request identifier data identifying one or
`more items of multimedia content available for retrieving
`via said wireless interface;
`code to receive said identifier data via said wireless
`interface, said identifier data identifying said one or more
`items of multimedia content avails for retrieving via said
`wireless interface;
`code to request content information via said
`wireless interface, wherein said content information
`comprises one or more of description data and cost data
`pertaining to at least one of said one or more items of
`multimedia content identified by said identifier data;
`code to receive said content information via said
`wireless interface;
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`code to present said content information pertaining
`to said identified one or more items of multimedia content
`available for retrieving to a user on said display;
`code to receive a first user selection selecting at
`least one of said one or more items of multimedia content
`available for retrieving;
`code responsive to said first user selection of said
`selected at least one item of multimedia content to transit
`payment data relating to payment for said selected at least
`one item of multimedia content via said wireless interface
`for validation by a payment validation system;
`to a user on said display said identified one or more
`items of multimedia content available from the non-
`volatile memory;
`code to receive a user selection to select at least one
`of said one or more of said stored items of multimedia
`content;
`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;
`code to receive payment validation data via said
`wireless interface defining if said payment validation
`system has validated payment for said at least one
`selected item of multimedia content;
`code responsive to said payment validation data to
`retrieve said selected least one item of multimedia content
`via said wireless interface from a data supplier and to
`write said retrieved at least one item of multimedia
`content into said non-volatile memory, code to receive a
`second user selectin selecting one or more of said items of
`retrieved multimedia content to access;
`code to read use status data and use rules from said
`non-volatile memory and use rules from said non-volatile
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`memory pertaining to said second selected one or more
`items of retrieved multimedia content; and
`code to evaluate said use status data and use rules to
`determine whether access is permitted to said second
`selected one or more items of retrieved multimedia
`content,
`wherein said user interface is operable to enable a user to
`make said first user selection of said selected at least one item
`of multimedia content available for retrieving,
`wherein said user interface is operable to enable a user to
`make said second user selection of said one or more items of
`retrieved multimedia content available for accessing, and
`wherein said user interface is operable to enable a user to
`access said second user section of said one or more item of
`retrieved multimedia content responsive to said code to control
`access permitting access to said second selected one or more
`items of retrieved multimedia content.
`Ex. 1001, 29:40–30:47.
`
`ANALYSIS
`
`A. Claim Construction
`As discussed below, the basis for our decision does not require
`an express construction of any specific claim term.
`
`B. Covered Business Method Patent
`Section 18 of the AIA provides for the creation of a transitional
`program for reviewing covered business method patents. A “[c]overed
`business method patent” is a patent that “claims 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,
`except that the term does not include patents for technological inventions.”
`AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have only one
`
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`8
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`claim directed to a covered business method to be eligible for review. See
`Transitional Program for Covered Business Method Patents—Definitions of
`Covered Business Method Patent and Technological Invention; Final Rule,
`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”) (Comment 8).
`
`1. Financial Product or Service
`Petitioner asserts that claim 8, from which challenged claim 10
`depends, is directed towards “data processing in the practice, administration,
`or management of financial products and services,” because it recites, in
`part, “[a] data access terminal data carrier, and payment validation system.”
`Pet. 9–10 (citing Ex. 1003 ¶ 23).
`Based on this record, we agree with Petitioner that the subject matter
`of claim 8, (and, therefore, of claim 10, which depends from claim 8), is
`directed to activities that are financial in nature, namely data access
`conditioned on payment validation. Claim 8 recites “code . . . to transmit
`payment data relating to payment for said selected content item for
`validation by a payment validation system,” “code to receive payment
`validation data defining if said payment validation system has validated
`payment for said content data item,” and “code to control access to said
`selected content data item responsive to said payment validation data.” We
`are persuaded that payment validation is a financial activity, and
`conditioning data access based on payment validation amounts to a financial
`service. This is consistent with the Specification of the ’772 patent, which
`confirms claim 8’s connection to financial activities by stating that the
`invention “relates to a portable data carrier for storing and paying for data.”
`Ex. 1001, 1:23–25. The Specification also states repeatedly that the
`
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`disclosed invention involves managing access to data based on payment
`validation. See, e.g., Ex. 1001, 1:62–2:3, 6:64–7:1, 20:59–63.
`Patent Owner disagrees, arguing that claim 87 does not claim a
`“financial product or service.” Prelim. Resp. 3, 6–8. In addition, Patent
`Owner contends “financial product or service” was intended to be
`interpreted narrowly as covering technology limited to the financial industry.
`Id. at 4–5. Patent Owner cites to various portions of the legislative history
`as support for its proposed interpretation. Id. at 4–6.
`Although we agree with Patent Owner that the statutory language
`controls whether a patent is eligible for a covered business method patent
`review, we do not agree that the phrase “financial product or service” is as
`limited as Patent Owner proposes. The AIA does not include as a
`prerequisite for covered business method patent review, a “nexus” to a
`“financial business,” but rather 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.” AIA
`§ 18(d)(1). Further, contrary to Patent Owner’s view of the legislative
`history, the legislative history indicates that the phrase “financial product or
`service” is not limited to the products or services of the “financial services
`industry,” and is to be interpreted broadly. CBM Rules, 77 Fed. Reg. at
`48,735–36. 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
`
`
`7 Patent Owner refers to claim 10, but its arguments are directed to the
`limitations of claim 8, from which claim 10 depends.
`
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`10
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`activity or complementary to a financial activity.’” Id. (citing 157 Cong.
`Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)).
`Moreover, although we agree with Patent Owner that the limitation
`recited in dependent claim 10 itself is not directed to a “financial product or
`service,” claim 10 includes the limitations of the claim from which it
`depends, i.e., claim 8, which does include limitations directed to a financial
`product or service. In addition, to the extent Patent Owner alleges that a
`specifically challenged claim must claim a financial product or service, it is
`mistaken. A patent need have only one claim directed to a covered business
`method to be eligible for review. See CBM Rules, 77 Fed. Reg. 48,734,
`48,736.
`In addition, Patent Owner asserts that claim 8 is not directed to an
`apparatus or method that is financial in nature because claim 8 “omits the
`specifics of how payment is made.” Prelim. Resp. 8. We are not persuaded
`by this argument because § 18(d)(1) of the AIA does not include such a
`requirement, nor does Patent Owner point to any other authority that makes
`such a requirement. Prelim. Resp. 8. We determine that because payment is
`required by claim 8, as Patent Owner acknowledges, the financial in nature
`requirement of § 18(d)(1) is satisfied.
`For the reasons stated above, and based on the particular facts of this
`proceeding, we conclude that the ’772 patent includes at least one claim that
`meets the financial-in-nature requirement of § 18(d)(1) of the AIA.
`
`2. Exclusion for Technological Inventions
`Petitioner asserts that the claims of the ’772 patent do not fall within
`AIA § 18(d)(2)’s exclusion for “technological inventions.” Pet. 11. In
`particular, Petitioner argues any computer related terms appearing in the
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`claims are generic and fail to recite novel or unobvious technology. Id. at 12
`(citing Ex. 1003 ¶¶ 23, 24). Petitioner further argues the ’772 patent does
`not relate to a technical problem but rather to allowing “owners of . . . data
`to make the data available themselves over the internet without fear of loss
`of revenue . . . undermining the position of data pirates.” Id. at 13 (citing
`Ex. 1001, 2:15–19, 5:16–20). Patent Owner disagrees and focuses on claim
`10. Prelim. Resp. 8–9.
`We are persuaded that claim 8, as a whole, does not recite a
`technological feature that is novel and unobvious over the prior art. For
`example, claim 8 recites only features such as “user interface,” “data carrier
`interface,” “program store,” and “processor.” Dependent claim 10 adds only
`that the data terminal of claim 8 is integrated into a “mobile communications
`device and audio/video player,” neither of which is even mentioned in the
`Specification and appears only in the claims. There is no suggestion that
`either is anything but commonly known.
`In addition, the ’772 patent makes clear that the asserted novelty of
`the invention is not in any specific improvement of software or hardware,
`but in the method of controlling access to data. For example, the ’772 patent
`states that “there is an urgent need to find a way to address the problem of
`data piracy” (Ex. 1001, 1:56–58), while acknowledging that the “physical
`embodiment of the system is not critical and a skilled person will understand
`that the terminals, data processing systems and the like can all take a variety
`of forms” (id. at 12:37–40). Thus, we determine that claim 8 is merely the
`recitation of a combination of known technologies, which indicates that it is
`not a patent for a technological invention. See Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012).
`
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`12
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`Patent Owner disagrees and argues that claim 8, as a whole, recites at
`least one technological feature that is novel and unobvious over the prior art.
`Prelim. Resp. 9. Patent Owner argues the data access terminal of claim 8,
`which controls access to data, solves the technological problem of allowing
`“convenient, legitimate acquisition of data from a data supplier.” Id. Patent
`Owner contends claim 8 includes “code to control access to said selected
`content data,”8 which it alleges is a technical solution used to solve the
`technical problem. Id. We are not persuaded by this argument because, as
`Petitioner argues, the problem being solved by claim 8 is a business
`problem—data piracy. Pet. 13. For example, the Specification states that
`“[b]inding the data access and payment together allows the legitimate
`owners of the data to make the data available themselves over the internet
`without fear of loss of revenue, thus undermining the position of data
`pirates.” Id. (citing Ex. 1001, 2:15–19). Thus, based on the particular facts
`of this proceeding, we conclude that claim 8 does not recite a technological
`invention and is eligible for a covered business method patent review.
`
`3. Conclusion
`In view of the foregoing, we conclude that the ’772 patent is a covered
`business method patent under AIA § 18(d)(1) and is eligible for review
`using the transitional covered business method patent program.
`C. Effective Filing Date of ’772 Patent
`The ’772 patent claims priority to International PCT Application No.
`GB00104110 (“the ’110 application”), filed on October 25, 2000, which
`claims priority to UK Application No. 9925227.2 (“the GB application”),
`
`
`8 Claim 8 includes this limitation and, by its dependency, so does claim 10.
`
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`filed on October 25, 1999. Ex. 1001, 1:6–17. Gruse was published on
`February 24, 2000. Ex. 1006, Cover page.
`All of Petitioner’s §§ 102 and 103 challenges are based on Gruse or a
`combination that includes Gruse. Pet. 3–5, 26–80. According to Petitioner,
`Gruse is prior art to the Challenged Claims under 35 U.S.C. § 102(a)9
`because the date of its publication—February 24, 2000—is before the
`earliest filing date to which the Challenged Claims are entitled—October 25,
`2000 (the filing date of the ’110 application.). Pet. 4, 21. Petitioner’s
`position is that the Challenged Claims lack written description support in the
`GB application. Id. at 19–20. See Tech. Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316, 1327 (Fed. Cir. 2008); Ariad Pharms. v. Eli Lilly and Co.,
`598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
`Petitioner contends the GB application does not provide written
`description support for independent claims 1, 8, 14, 25, and 30, and, thus,
`that dependent claims 5, 10, 26, and 32 are likewise unsupported. Pet. 21.
`Without the ’772 patent’s claim to effective filing date of the GB
`application, Gruse is prior art to the ’772 patent. Generally, Petitioner
`contends “the [GB application’s] scant disclosure fails to support many
`limitations recited in the Challenged Claims.” Id. at 19. Specifically,
`Petitioner argues that the GB application does not support two limitations
`recited in claim 1. Id. at 19–21.
`The priority dispute between the parties focuses on whether the GB
`application sufficiently supports the following “code responsive to”
`
`
`9 The ’772 patent was filed prior to the effective date of § 102, as amended
`by the AIA—March 16, 2013— and is governed by the pre-AIA version of
`§ 102(a). See AIA § 3(n)(1).
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`limitations of claim 1: (1) “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”;
`and (2) “wherein said user interface is operable to enable a user to access
`said at least one selected item of multimedia content responsive to said code
`to control access permitting access to said at least one selected item of
`multimedia content.” Pet. 19–20 (emphasis in original). Patent Owner
`contends Petitioner has not met its burden in showing that claim 1 is
`unsupported by the GB application because the features alleged to be
`missing are disclosed in the GB application. Prelim. Resp. 21.
`With respect to the recited “code responsive to said user selection of
`said at least one selected item of multimedia content” limitation of claim 1
`(Pet. 21), Patent Owner argues the GB application includes numerous
`references to the user “selection of content over the internet.” Prelim. Resp.
`21 (citing Ex. 1008, 4, 7, Fig. 4A10). For example, the GB application
`describes downloading data, including MP3 audio, video, music, and games,
`to a data storage means. Ex. 1008, 1–4. The GB application explains that
`“[t]o download data onto the data storage means the user can employ a data
`access terminal coupled to the internet” and that “a user could pay to enable
`an extra level on a game or to enable further tracks of an album.” Id. at 4.
`The GB application further describes restricting access to the
`downloaded data (i.e., user selected data) based upon checked and validated
`payment data, which reasonably conveys, under Ariad, transmitting payment
`
`
`10 As the parties do, we refer to the page number at the top of each page in
`Exhibit 1008.
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`data to the payment validation system in response to the user selected data.
`See 598 F.3d at1351. In particular, the GB application discloses a “payment
`validation means” that allows “access to the downloaded data which is to be
`stored by the data storage means, to be made conditional upon checked and
`validated payment being made for the data.” Ex. 1008, at 2. In addition,
`“[t]he data storage means and/or the retrieval device can be provided with
`access control means to prevent unauthorized access to the downloaded
`data” or “to stop or provide only limited access of the user to the
`downloaded data in accordance with the amount paid.” Id. at 3–4. Based on
`the disclosure described above, we are persuaded that the GB application
`“reasonably conveys to those skilled in the art that the inventor had
`possession” of claim 1’s “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 . . . .”
`See Ariad Pharms., 598 F.3d at 1351.
`With respect to the recited “. . . responsive to said code to control
`access permitting access to said at least one selected item of multimedia
`content” limitation of claim 1 (Pet. 21), the GB application disclosure,
`discussed above, likewise provides written description support. Specifically,
`the GB application describes allowing access to the downloaded data in
`response to validated payment. For example, the GB application explains
`that the access control means can be “responsive to the payment validation
`means.” Id. at 4. In addition, “[t]he user’s access to the downloaded data
`could advantageously be responsive to the payment validation means.” Id.
`Based on the disclosure described above, we are persuaded that the GB
`application “reasonably conveys to those skilled in the art that the inventor
`
`
`
`16
`
`
`
`CBM2014-00204
`Patent 8,336,772 B2
`
`had possession” of claim 1’s “wherein said user interface is operable to
`enable a user to access . . . content . . . responsive to said code to control
`access permitting access to said at least one selected item of multimedia
`content.” See Ariad Pharms., 598 F.3d at 1351.
`Therefore, we are not persuaded that Petitioner has shown sufficiently
`that claim 1 is not entitled to the benefit of the GB application’s filing date.11
`Petitioner argues that independent claims 8, 14, 25, and 30 are
`unsupported because they include “[s]imilarly recited limitations” to claim
`1. Pet. 21. Petitioner argues that by virtue of their dependency, dependent
`claims 5, 10, 26, and 32, are likewise unsupported. Id. We have reviewed
`Petitioner’s analysis and supporting evidence, as well as Patent Owner’s
`Preliminary Response. Based upon our review and for the reasons discussed
`above in with respect to claim 1, we are not persuaded sufficiently that the
`benefit of the GB application’s filing date does not apply to the following
`claims: challenged claim 5, which depends from independent claim 1;
`challenged claim 10, which depends from independent claim 8; challenged
`independent claim 14; challenged claim 26, which depends from
`independent claim 25; and challenged claim 32, which depends from
`independent claim 30. Accordingly, we are not persuaded that Petitioner has
`demonstrated that more likely than not it would prevail in challenging any of
`
`
`11 We have also reviewed the portions of the Bloom Declaration as it relates
`to “Discussion of the Priority Application,” i.e., the GB application.
`Ex. 1003 ¶¶ 116–119. The Bloom Declaration concludes generally that “I
`cannot find support for the claims of the ’772 Patent in the ’227.2
`Application.” Id. at ¶ 116. The Bloom Declaration, however, does not
`identify any allegedly unsupported claim limitation other than the claim 1
`limitations discussed above. Id. at ¶ 117–119.
`
`
`
`
`17
`
`
`
`CBM2014-00204
`Patent 8,336,772 B2
`
`claims 5, 10, 14, 26, and 32, based on anticipation or obviousness because
`all such asserted grounds contend that Gruse is prior art under 35 U.S.C.
`§ 102(a). Pet. 3, 26, 30, 64, 74.
`
`ORDER
`For the reasons given, it is:
`ORDERED that a covered business method patent review of the U.S.
`Patent No. 8,336,772 is denied.
`
`
`
`
`18
`
`
`
`CBM2014-00204
`Patent 8,336,772 B2
`
`PETITIONER:
`W. Karl Renner
`Thomas Rozylowicz
`CBM39843-0008CP1@fr.com
`
`PATENT OWNER:
`
`Michael R. Casey
`mcasey@dbjg.com
`J. Scott Davidson
`jsd@dbjg.com
`docket@dbjg.com
`Davidson Berquist Jackson & Gowdey, LLP
`
`
`
`
`19
`
`
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