IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Racz et al.
`Attorney Docket No.: 39843-0008CP1
`
`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
`
`
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`
`
`CORRECTED PETITION FOR COVERED BUSINESS METHOD PATENT
`
`REVIEW OF UNITED STATES PATENT NO. 8,336,772 PURSUANT TO 35
`
`U.S.C. 321 AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
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`

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`Attorney Docket No 39843-0008CP1
`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) ...................... 2 
`PAYMENT OF FEES ..................................................................................... 2 
`II. 
`III.  REQUIREMENTS FOR CBM UNDER 37 C.F.R. § 42.304 ......................... 2 
`A.  Grounds for Standing Under 37 C.F.R. § 42.304(a) ................................... 2 
`B.  Challenge Under 37 C.F.R. § 42.304(b) and Relief .................................... 2 
`C.  Claim Construction under 37 C.F.R. §§ 42.304(b)(3) ................................ 5 
`D.  The ‘772 Patent is a Covered Business Method Patent .............................. 8 
`A.  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 ........................................................... 14 
`A.  Brief Description ............................................................................................ 14 
`B.  Summary of the Prosecution History of the ‘772 Patent .......................... 16 
`C.  The Effective Priority Date of the Claims of the ‘772 Patent .................. 17 
`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 .......................................................... 22 
`A.  GROUND 1 – Gruse Anticipates Claims 14 and 26. ................................ 22 
`1.  Overview of Gruse ........................................................................ 22 
`2.  Gruse Anticipates claims 14 and 26. ............................................. 26 
`B.  GROUND 2 – Gruse In View of Stefik ‘235 Renders Obvious Claim 32.
`
`50 
`1.  Overview of Stefik ‘235 ................................................................ 50 
`2. 
`Combinability of Gruse with Stefik .............................................. 51 
`3.  Gruse In View of Stefik Renders Obvious Claim 32. ................... 54 
`C.  GROUND 3 – Gruse In View of Hasebe Renders Obvious Claims 5. .. 64 
`1.  Overview of Hasebe ...................................................................... 64 
`2. 
`Combinability of Gruse and Hasebe ............................................. 67 
`3.  Gruse in view of Hasebe Renders Obvious Claim 5. .................... 69 
`D.  GROUND 4 – Gruse In View of Stefik Further In View of Hasebe
`Renders Obvious Claim 10. .......................................................................... 74 
`1. 
`Combinability of Gruse, Stefik and Hasebe .................................. 74 
`
`ii
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`Attorney Docket No 39843-0008CP1
`CBM of U.S. Patent No. 8,336,772
`2.  Gruse In View of Stefik Further In View of Hasebe Renders
`Obvious Claims 8 and 10. ............................................................. 75 
`VI.  CONCLUSION .............................................................................................. 80 
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`iii
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`Attorney Docket No 39843-0008CP1
`CBM of U.S. Patent No. 8,336,772
`
`EXHIBITS
`
`SAMSUNG-1001 U.S. Patent No. 8,336,772 to Hulst et al. (“the ‘772 Patent”)
`
`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 U.S. Patent No. 5,530,235 (“Stefik ‘235”)
`
`SAMSUNG-1005 U.S. Patent No. 5,629,980 (“Stefik ‘980”) (incorporated by
`5,530,235)
`
`SAMSUNG-1006 PCT Publication No. WO 00/08909 (“Gruse”)
`
`SAMSUNG-1007 PCT Application PCT/GB00/04110 (“the ‘110 Appln”) or
`(‘110)
`
`SAMSUNG-1008 United Kingdom Patent Application GB9925227.2 (“the ‘227.2
`Appln.”) (‘227.2)
`
`SAMSUNG-1009 Transitional Program for Covered Business Method Pa-tents—
`Definitions of Covered Business Method Patent and Technolog-
`ical Invention, 77 Fed. Reg. 157 (Aug. 14, 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 (Jul. 27, 2010)
`
`SAMSUNG-1012 Apple Inc. v. Sightsound Technologies, LLC, CBM2013-00019
`Paper No. 17 (entered Oct. 8, 2013) at 11-13
`
`SAMSUNG-1013 Volusion, Inc. v. Versata Software, Inc. and Versata Devel-
`opment Group, Inc., CBM2013-00017 Paper No. 8 (entered
`Oct. 24, 2013)
`
`iv
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`

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`Attorney Docket No 39843-0008CP1
`CBM of U.S. Patent No. 8,336,772
`SAMSUNG-1014 Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024
`Paper No. 16 (entered Nov. 19, 2013)
`
`SAMSUNG-1015 RESERVED
`
`SAMSUNG-1016 U.S. Patent No. 8,118,221 (“the ‘221 Patent” or “’221)
`
`SAMSUNG-1017 U.S. Patent No. 8,061,598 (“the ‘598 Patent” or “‘598”)
`
`SAMSUNG-1018 U.S. Patent No. 8,033,458 (“the ‘458 Patent” or “‘458”)
`
`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 RESERVED
`
`SAMSUNG-1024 RESERVED
`
`SAMSUNG-1025 RESERVED
`
`SAMSUNG-1026 U.S. Patent Application No. 13/212,047 (“the ‘047 Appln.” or
`“047”)
`
`
`SAMSUNG-1027 U.S. Patent No. 5,761,651 (“Hasebe”)
`
`SAMSUNG-1028 Weinstein “MasterCard Plans Point-of-Sale Product for Mer-
`chants Leery of Bank Cards”
`
`SAMSUNG-1029 Mayo Collaborative Serv v. Prometheus Labs., Inc., 132 S. Ct.
`1289 (2012)
`
`v
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`

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`Attorney Docket No 39843-0008CP1
`CBM of U.S. Patent No. 8,336,772
`SAMSUNG-1030 Gottschalk v. Benson, 409 U.S. 63 (1972)
`
`SAMSUNG-1031 Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366
`(Fed. Cir. 2011)
`
`SAMSUNG-1032 Bilski v. Kappos, 130 S. Ct. 3218 (2010)
`
`SAMSUNG-1033 Alice Corp. v. CLS Bank International,134 S.Ct. 2347 (2014)
`
`SAMSUNG-1034 Bancorp Serv., L.L.C. v. Sun Life Assur. Co. (U.S.) 687 F.3d
`1266 (Fed. Cir. 2012)
`
`SAMSUNG-1035 Dealertrack, Inc. v. Huber, 674 F.3d 1323 (Fed. Cir. 2012)
`
`SAMSUNG-1036 SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed.
`Cir. 2010)
`
`SAMSUNG-1037 In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008)
`
`SAMSUNG-1038 Accenture Global Services, GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013)
`
`SAMSUNG-1039 Keith, Michael C., The Radio Station Broadcast, Satellite and
`Internet, Eighth Edition, 2009
`
`
`
`
`
`vi
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`

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`Attorney Docket No 39843-0008CP1
`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 (“Peti-tioner”
`
`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
`
`5, 10, 14, 26, 32 (“the Challenged Claims”) of U.S. Patent No. 8,336,772 (“the
`
`‘772 patent”). As explained in this petition, there exists a reasonable likelihood
`
`that Samsung will prevail 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 petition. Samsung respectfully submits that a CBM review should
`
`be instituted, and 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
`
`
`
`Samsung Telecommunications America, LLC are jointly filing this Petition, and
`
`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
`
`1
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`

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`Attorney Docket No 39843-0008CP1
`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
`
`concurrently petitioning, in another petition assigned attorney docket number
`
`39843-0008CP2, for CBM review of the ‘772 Patent under grounds additional to
`
`those presented in this petition.
`
`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
`
`Thomas Rozylowicz, Reg. No. 50,620, as Backup Counsel, both available for ser-
`
`vice at 3200 RBC Plaza, 60 South Sixth Street, Minneapolis, MN 55402 (T: 202-
`
`783-5070) or via electronic service by email at CBM39843-0008CP1@fr.com.
`
`PAYMENT OF FEES
`
`II.
`Samsung authorizes charges to Deposit Account No. 06-1050 for the fee set
`
`in 37 C.F.R. § 42.15(b) for this Petition and for any related additional fees.
`
`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
`
`is not barred or estopped from requesting this review challenging the Challenged
`
`Claims on the below-identified grounds.
`
`B. Challenge Under 37 C.F.R. § 42.304(b) and Relief
`
`2
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`

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`Attorney Docket No 39843-0008CP1
`CBM of U.S. Patent No. 8,336,772
`Samsung requests a CBM review of the Challenged Claims on the grounds
`
`set forth in the table shown below, and requests that each of the Challenged Claims
`
`be found unpatentable. An explanation of how these claims are unpatentable under
`
`the statutory grounds identified below is provided in the form of detailed descrip-
`
`tion that follows, indicating where each claim elements can be found in the cited
`
`prior art, and the relevance of that prior art. Additional explanation and support for
`
`each ground of rejection is set forth in Exhibit SAMSUNG-1003, the Declaration
`
`of Dr. Jeffrey Bloom (“Bloom”), referenced throughout this Petition.
`
`Ground
`
`‘772 Patent Claims
`
`Basis for Rejection
`
`Ground 1 5, 10, 14, 26, 32
`
`§ 101
`
`Ground 2 14 and 26
`
`§ 102: Gruse
`
`Ground 3 32
`
`Ground 4 5
`
`Ground 5 10
`
`§ 103: Gruse in view of Stefik
`
`§ 103: Gruse in view of Hasebe
`
`§ 103: Gruse in view of Stefik, further in
`
`view of Hasebe
`
`The ‘772 patent issued Dec. 25, 2012 from the ‘047 Appln. (SAMSUNG
`
`1008), which was filed Aug. 17, 2011. The ‘047 Appln. is a continuation of the
`
`‘872 Appln. (SAMSUNG-1022), which was filed Nov. 10, 2010 (now U.S. Patent
`
`3
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`

`

`Attorney Docket No 39843-0008CP1
`CBM of U.S. Patent No. 8,336,772
`No. 8,118,221, SAMSUNG-1016); which is a continuation of the ‘558 Appln.
`
`(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. filed Jan. 19, 2006 (now
`
`U.S. Patent No. 7,334,720, SAMSUNG-1021), which is a continuation of the ‘716
`
`Appln. filed Sep. 17, 2002 (now abandoned), which is a National Stage Entry of
`
`the ‘110 Appln. (SAMSUNG-1007) filed Oct. 25, 2000 in the UK. The ‘110 Ap-
`
`pln. claimed priority to United Kingdom Patent Appln. GB9925227.2 (SAM-
`
`SUNG-1008, “the 227.2 Appln.” or “227.2”), which was filed Oct. 25, 1999.
`
`However, as noted in detail below in Section IV.C, because the ‘227.2 disclosure
`
`fails to support the Challenged Claims, the effective filing date of the Challenged
`
`Claims is no earlier than Oct. 25, 2000.
`
`Stefik ‘235, U.S. Patent No. 5,530,235, Stefik ‘980, U.S. Patent No.
`
`5,629,980, and Hasebe, U.S. Patent No. 5,761,651, each qualify as prior art under
`
`35 U.S.C. § 102(b). Specifically, Stefik ‘235 (SAMSUNG-1004) issued June 25,
`
`1996, and Stefik ‘980 (SAMSUNG-1005) issued May 13, 1997, Hasebe (SAM-
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`SUNG-1027) issued June 2, 1998, each more than one year before the earliest ef-
`
`fective filing date of the Challenged Claims.
`
`Gruse, PCT Pub. No. WO00/08909, qualifies as prior art under 35 U.S.C. §
`
`102(a). Specifically, Gruse (SAMSUNG-1006) is a publication of a PCT Appln.
`
`(PCT/US99/18383) that was filed in the U.S. on Aug. 12, 1999, based on U.S. pro-
`
`4
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`

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`Attorney Docket No 39843-0008CP1
`CBM of U.S. Patent No. 8,336,772
`visional applications filed as early as Aug. 13, 1998. Gruse was published on Feb.
`
`24, 2000, more than two years before the Apr. 25, 2002 filing date of the earliest
`
`U.S. Patent Appln. to which the ‘458 Patent claims priority (i.e., the ‘716 Appln),
`
`and more than eight months before the Oct. 25, 2000 filing date of the ‘110 Appln.
`
`Accordingly, Stefik ‘235, Stefik ‘980, and Gruse are eligible under AIA §
`
`18(a)(1)(C) as 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-
`
`
`
`tion in light of the specification of the patent in which it appears.” 37 C.F.R. §
`
`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.
`
`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
`
`view of the specification of the ‘772 Patent. 1
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`1.
`
`CONSTRUCTION 1 – Payment data
`
`
`1 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).
`
`5
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`

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`Attorney Docket No 39843-0008CP1
`CBM of U.S. Patent No. 8,336,772
`For purposes of this CBM review, “payment data” should be construed to
`
`include and be met by data that relates to previous, present, and/or prospective
`
`payment.
`
`Claims 1, 4, 8, 14, 19, 25, 30, and 35 of the ‘772 Patent each recite the term
`
`“payment data.” Claim 14 of the ‘772 Patent, for example, recites the following -
`
`“code responsive to said user selection of said selected at least one item of multi-
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`media content to 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 validation system . . . .” A POSITA2 would understand that, as used in
`
`claims 1, 4, 8, 14, 19, 25, 30, and 35, the term “payment data” indicates and is met
`
`by data that relates to previous, present, and/or prospective payment. Bloom at,
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`e.g., ¶ 30.
`
`This interpretation is consistent with the relevant disclosure in the specifica-
`
`tion of the ‘772 Patent. Bloom at, e.g., ¶ 30. 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
`
`authority such as a bank or building society,” such that “[t]he combination of the
`
`
`2 The term “POSITA”, as used in this Petition, refers to a Person of Ordinary Skill
`
`In the Art at the ‘772 Patent’s effective filing date.
`
`6
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`Attorney Docket No 39843-0008CP1
`CBM of U.S. Patent No. 8,336,772
`payment validation means with the data storage means allows the access to the
`
`downloaded data which is to be stored by the data storage means, to be made con-
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`ditional upon checked and validated payment being made for the data.” ‘772 at
`
`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
`
`that “payment data” may relate previous, present, and/or prospective pay-
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`ment. Bloom at, e.g., ¶ 30 The ‘772 Patent also states, e.g., in the Abstract, that
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`“[d]ata storage and access systems are described for downloading a paying for data
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`such as audio and video data, text, software, games, and other types of data” – fur-
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`ther supporting that “payment data”, as used in the claims of the ‘772 Patent, can
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`relate to present payment. See also ‘772 at 4:54-61 (“the portable data carrier fur-
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`ther comprises a program store for storing code . . . wherein the code comprises
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`code to output payment data from the payment data memory”), 3:49-64, 4:36-38.
`
`In yet another example, the ‘772 Patent states that “[t]he carrier may also store
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`content use rules pertaining to allowed use of stored data items,” and that “these
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`use rules may be linked to payments made from [a] card . . .” – further supporting
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`that “payment data”, as used in the claims of the ‘772 Patent, can relate to previous
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`payment. ‘772 at 5:1-12; see also 5:4-11, 5:17-20.
`
`As such, the disclosure in the specification of the ‘772 Patent is consistent
`
`with the term “payment data,” as used in claims 1, 4, 8, 14, 19, 25, 30, and 35, as it
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`7
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`

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`Attorney Docket No 39843-0008CP1
`CBM of U.S. Patent No. 8,336,772
`would be understood by a POSITA: data that relates to previous, present, and/or
`
`prospective payment. Bloom at, e.g., ¶ 30 Thus, for purposes of this proceeding,
`
`“payment data” should be construed to include and be met by data that relates to
`
`previous, present, and/or prospective payment.
`
`D. The ‘772 Patent is a Covered Business Method Patent
`The ‘772 Patent, which generally relates to systems and methods “for down-
`
`loading and paying for data” is a “covered business method patent” (“CBM pa-
`
`tent”) as defined under § 18 of the AIA and 37 C.F.R. § 42.301. ‘772 at Abstract.
`
`The AIA defines a CBM patent as “a patent that claims a method or corre-
`
`sponding apparatus for performing data processing or other operations used in the
`
`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
`
`8
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`

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`Attorney Docket No 39843-0008CP1
`CBM of U.S. Patent No. 8,336,772
`product or service, including . . . marketing, customer interfaces [and] management
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`of data . . .” (emphases added). SAMSUNG-1010 at 635-36.
`
`Augmenting the statutory language with the above-referenced clarifications
`
`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-
`
`sponding apparatus for performing data processing or other operations used in ac-
`
`tivities that are financial in nature, incidental to a financial activity, or complemen-
`
`tary to a financial activity, including the management of data. See AIA § 18(d)(1);
`
`SAMSUNG-1009 at 48735; and SAMSUNG-1010 at 635-26.
`
`In the words of the Patent Owner, the claims of the ‘772 Patent are directed
`
`to a “portable data carrier for storing and paying for data and to computer systems
`
`for providing access to data to be stored.” See ‘772 at 1:24-25. Claim 8, for exam-
`
`ple (the limitations of which are incorporated into claim 10, which depends from
`
`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
`
`for said selected content item for validation by a payment validation system.”
`
`9
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`

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`Attorney Docket No 39843-0008CP1
`CBM of U.S. Patent No. 8,336,772
`Claim 10 adds that the “data access terminal as claimed in claim 8 . . . is integrated
`
`with a mobile communications device and audio/video player.”
`
`Unquestionably, the data access terminal, data carrier, and payment valida-
`
`tion system of claim 8 are used for data processing in the practice, administration,
`
`and management of financial products and services; specifically, for processing
`
`payments for data downloads. Bloom at, e.g., ¶ 23. Indeed, in a recent decision
`
`involving highly similar claims, the Board determined that selling a desired digital
`
`audio signal to a user constitutes financial activity. See SAMSUNG-1012 at 11-13
`
`(“The cited entities may not provide typical financial services, but . . . they do sell
`
`digital content, which is the financial activity recited in claim 1”).
`
`
`
`The specification of The ‘772 Patent, moreover, is replete with examples of
`
`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.”
`
`See ‘772 at 6:64-7:1, 13:30-42. Even if claim 8 did not explicitly reference finan-
`
`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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`10
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`Attorney Docket No 39843-0008CP1
`CBM of U.S. Patent No. 8,336,772
`tion have application to a wide range of industries’ including ‘financial services,’
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`despite the apparent lack of financial-related language in the claims); see also
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`SAMSUNG-1013 at 9-15 (“Although claim 8 does not expressly refer to financial
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`activity . . . When applied to the activities listed [in the patent’s specification] . . .
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`the method of claim 8 represents a financial product or service”).
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`Thus, for at least the reasons described above, the ‘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 Pa-
`tent.
`
`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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`Attorney Docket No 39843-0008CP1
`CBM of U.S. Patent No. 8,336,772
`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 a novel and unobvious technolog-
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`ical feature, and fail to recite a technical problem solved by a technical solution.
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`See Bloom at, e.g., ¶ 23. Thus, the patent is subject to Section 18 review. Alt-
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`hough the independent claims of The ‘772 Patent recite computer-related terms
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`such as “non-volatile memory”, “data terminal”, and “data carrier”, Congress has
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`explained that simply reciting words describing generic technology such as “com-
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`puter hardware, . . .software, memory, computer-readable storage medium, [or] da-
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`tabases” does not make a patent a technological invention. SAMSUNG-1010 at
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`634.
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`The specification of The ‘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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`Attorney Docket No 39843-0008CP1
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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]
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`person having ordinary skill in the art at the time that The ‘772 Patent was filed
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`would not have considered the methods described and claimed by The ‘772 Patent
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`to be technical”. Bloom at, e.g., ¶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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`Attorney Docket No 39843-0008CP1
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`problem solved by a technical solution. CBM review is therefore appropriate for
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`the ‘772 Patent.
`
`IV. SUMMARY OF THE ‘772 PATENT
`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 systems and
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`methods “for downloading and paying for data such as audio and video data, text,
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`software, [and] games . . . .” ‘772 at Abstract. The ‘772 Patent purports to address
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`a specific problem: “the growing prevalence of so-called data pirates” who “obtain
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`data either by unauthorized or legitimate means and then make this data available
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`essentially world-wide over the internet without authorization.” ‘772 at 1:32-42.
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`Within this context, the ‘772 Patent describes “combining digital right manage-
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`ment with content data storage,” and states that “[b]inding the data access and
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`payment together allows the legitimate owners of the data to make the data availa-
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`ble themselves over the internet without fear of loss of revenue, thus undermining
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`the position of data pirates.” ‘772 at 2:6-19, 5:33-37; See Bloom at, e.g., ¶ 23.
`
`With this backdrop, the ‘772 Patent purportedly proffers solutions using
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`conventional technologies. In one configuration, the ‘772 Patent claims “a
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`handheld multimedia terminal” for an end user to select and pay for “multimedia
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`content available for retrieving via said wireless interface” so that the end user can
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`“retrieve [the] multimedia content via said wireless interface from a data supplier
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`and write said retrieved multimedia content into said non-volatile memory.” See
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`‘772 at 27:55-28:39. This corresponds to the end user purchasing multimedia con-
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`tent for downloading from the Internet. Bloom at, e.g., ¶. One variation is when
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`the recited non-volatile memory is replaced with an external data carrier. Id. In
`
`this variation, the ‘772 Patent claims “a handheld multimedia terminal” for an end
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`user to select and pay for “multimedia content available for retrieving via said
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`wireless interface” so that the end user can “retrieve [the] multimedia content via
`
`said wireless interface from a data supplier and write said retrieved multimedia
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`content into said data carrier.” See ‘772 at 28:55-29:25.
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`In another configuration, the ‘772 Patent claims “a handheld multimedia
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`terminal” for an end user to select and pay for “multimedia content stored in the
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`non-volatile memory [of the handheld multimedia terminal]” so that the end user
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`can “access said [] multimedia content.” See ‘772 at 26:65-26:43. This can corre-
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`spond to the end user renewing a lease for the multimedia content already available
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`on the handheld multimedia terminal. Bloom at, e.g., ¶ One variation is when the
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`recited non-volatile memory is replaced with an external 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 “one or more content data items available from the data carri-
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`er” so that the end user can “control access to said selected content data item re-
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`sponsive 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.
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`Summary of the Prosecution History of the ‘772 Patent
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`B.
`The ‘772 patent issued on Dec. 25, 2012 from U.S. Patent Appln. No.
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`13/212,047 (“the ‘047 Appln.”) filed on Aug. 17, 2011 with 39 claims.
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`During prosecution of the ‘047 Appln., on Jul. 12, 2012, a Non-Final Office
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`Action rejected claims 1-36 on the ground of nonstatutory obviousness-type double
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`patenting as being unpatentable over claims of U.S. Patent No. 7,334,720. See
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`Non-Final Office Action of Apr. 14, 2012 at 3-6. Claims 37-39 were rejected un-
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`der 35. U.S.C. § 102(b) as being anticipated by U.S. Patent 5,682,027 to Bertina et
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`al. Id. at 6-7. Subsequently, the Patent Owner filed a Terminal Disclaimer (TD)
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`and cancelled claims 37-39. See Patent Owner’s Response Oct. 11, 2012 at 14.
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`The Patent Office responded with a Notice of Allowance allowing pending claims
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`1-36 because “the prior art fails to disclose a handheld device having a memory, a
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`program store, a processor, a user interface, a display and wherein processor con-
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`trol code comprises the codes having the functions and characteristics as recited in
`
`c