UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00016
`
`Patent 8,033,458 B2
`
`____________
`
`PATENT OWNER’S RESPONSE
`
`

`
`TABLE OF CONTENTS
`
`V. 
`
`
`I. 
`INTRODUCTION ........................................................................................... 1 
`STATEMENT OF MATERIAL FACTS ........................................................ 4 
`II. 
`III.  THE WECHSELBERGER DECLARATION SHOULD BE GIVEN
`LITTLE OR NO WEIGHT .............................................................................. 4 
`A.  No Evidentiary Standard Is Disclosed in the Wechselberger
`Declaration ............................................................................................ 4 
`IV.  OVERVIEW OF U.S. PATENT NO. 8,033,458 ............................................ 6 
`A.  Overview of the Technology of the Patent ........................................... 6 
`B. 
`Claim Construction ............................................................................... 8 
`CLAIMS 1, 6, 8, AND 10 OF THE ‘458 PATENT ARE DIRECTED TO
`STATUTORY SUBJECT MATTER ........................................................... 10 
`A. 
`The Two-Part Test for Statutory Subject Matter ................................ 10 
`The ‘458 Patent Claims Are Statutory Under the Second Step of Mayo
`B. 
`and Alice .............................................................................................. 10 
`Claims 1, 6, 8, and 10 of the ‘458 Patent Do Not Result in
`Inappropriate Preemption .................................................................... 20 
`Preemption under DDR Holdings ............................................. 20 
`1. 
`Preemption under Mayo and Alice ........................................... 23 
`2. 
`3. 
`Non-Infringing Alternatives Show a Lack of Preemption ........ 25 
`VI.  PETITIONER HAS ALREADY LOST A CHALLENGE TO SOME OF
`THE SAME CLAIMS ON THE SAME STATUTORY GROUNDS IN ITS
`LITIGATION WITH PATENT OWNER ..................................................... 27 
`VII.  CLAIM 11 IS NOT INDEFINITE UNDER 35 U.S.C. § 112, SECOND
`PARAGRAPH ............................................................................................... 28 
`VIII.  THE USPTO IS ESTOPPED FROM REVISITING THE ISSUE OF
`WHETHER THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT
`MATTER ....................................................................................................... 30 
`IX.  CONCLUSION .............................................................................................. 31 
`
`C. 
`
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`- i -
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`
`
`Exhibit Number
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`Exhibit Description
`
`Reserved
`
`Redline Showing “Corrected Petition” Compared to Original
`Petition in CBM2015-00016
`
`Reserved
`
`Congressional Record - House, June 23, 2011, H4480-4505
`
`Congressional Record - Senate, Sep. 8, 2011, S5402-5443
`
`2006-2048 Reserved
`
`2049
`
`2050
`
`Report and Recommendation (on Defendants’ Motions for
`Summary Judgment of Invalidity Pursuant to 35 U.S.C. §
`101), from Smartflash LLC, et al. v. Apple Inc., et al., Case
`No. 6:13-CV-447 (E.D. Tex.) and Smartflash LLC, et al. v.
`Samsung Electronics Co. Ltd, et al., Case No. 6:13-CV-448
`(E.D. Tex.), dated Jan. 21, 2015
`
`Order adopting Report and Recommendation (on
`Defendants’ Motions for Summary Judgment of Invalidity
`Pursuant to 35 U.S.C. § 101), from Smartflash LLC, et al. v.
`Apple Inc., et al., Case No. 6:13-CV-447 (E.D. Tex.) and
`Smartflash LLC, et al. v. Samsung Electronics Co. Ltd, et al.,
`Case No. 6:13-CV-448 (E.D. Tex.), dated Feb. 13, 2015
`
`2051-2057 Reserved
`
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`- ii -
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`
`2058
`
`Memorandum Opinion and Order (on Defendants’ Motions
`for Stay Pending the Outcome of CBMs) from Smartflash
`LLC, et al. v. Apple Inc., et al., Case No. 6:13-CV-447 (E.D.
`Tex.), Smartflash LLC, et al. v. Samsung Electronics Co. Ltd,
`et al., Case No. 6:13-CV-448 (E.D. Tex.), Smartflash LLC, et
`al. v. Google, Inc., et al., Case No. 6:14-CV-435 (E.D. Tex.),
`and Smartflash LLC, et al. v. Amazon, Inc., et al., Case No.
`6:14-CV-992 (E.D. Tex.) dated May 29, 2015
`
`2059-2067 Reserved
`
`2068
`
`2069
`
`2070
`
`Deposition Transcript of Anthony J. Wechselberger dated
`May 28, 2015
`
`Reserved
`
`Declaration of Emily E. Toohey in Support of Patent
`Owner’s Response
`
`2071-2072 Reserved
`
`2073
`
`2074
`
`Apple’s Preliminary Claim Constructions and Extrinsic
`Evidence filed in Smartflash LLC, et al. v. Apple Inc., et al.,
`Case No. 6:13-cv-447-MHS-KNM (E.D. Tex.)
`
`Civil Docket Report from Smartflash LLC, et al. v. Apple
`Inc., et al., Case No. 6:13-CV-447 (E.D. Tex.)
`
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`I.
`
`INTRODUCTION
`
`Covered business method review was instituted for U.S. Patent 8,033,458
`
`(“the ‘458 Patent”) claims 1, 6, 8, and 10 as being directed to patent-ineligible
`
`subject matter under 35 U.S.C. § 101; and claim 11 as being indefinite under 35
`
`U.S.C. § 112, second paragraph. Decision - Institution of Covered Business
`
`Method Patent Review and Denying Motion for Joinder 37 C.F.R. § 42.208 37
`
`C.F.R. § 42.222(b), Paper 23 at 26 (PTAB April 10, 2015).
`
`Claims 1, 6, 8, and 10 of the ‘458 Patent are directed to statutory subject
`
`matter because they claim a solution “necessarily rooted in computer technology in
`
`order to overcome a problem specifically arising in the realm of computer
`
`networks.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
`
`Cir. 2014). In particular, claims 1, 6, 8, and 10 of the ‘458 Patent address the
`
`problem of data content piracy on the Internet “[b]y combining digital rights
`
`management with content data storage using a single carrier” such that “the stored
`
`content data becomes mobile and can be accessed anywhere while retaining control
`
`over the stored data for the data content provider or data copyright owner.” Ex.
`
`1201, ‘458 Patent at 5:29-33. In other words, claims 1, 6, 8, and 10 of the ‘458
`
`Patent are directed to a system that combines on the data carrier both the digital
`
`content and the use rules/use status data, so that access control to the digital
`
`content can be continuously enforced prior to each access to the digital content.
`
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`As demonstrated below, claims 1, 6, 8, and 10 of the ‘458 Patent do not
`
`result in inappropriate preemption of the “idea of paying for and controlling access
`
`to data” (Corrected Petition, Paper 9 at 6) or the “idea of paying for and controlling
`
`access to content” (Ex. 1220, Declaration of Anthony J. Wechselberger
`
`(hereinafter “the Wechselberger Declaration”) at ¶ 82). Nor is there any evidence
`
`that a disproportionate amount of future innovation is foreclosed by claims 1, 6, 8,
`
`and 10 of the ‘458 Patent.
`
`Additionally, in February 2015, Petitioner already lost in Federal Court the
`
`purely legal issue of whether claims 8 and 10 of the ‘458 Patent are directed to
`
`statutory subject matter under 35 U.S.C. § 101 – which the Board is being asked to
`
`reconsider here. See Exhibit 2049, Report and Recommendation (on Defendants’
`
`Motions for Summary Judgment of Invalidity Pursuant to 35 U.S.C. § 101)
`
`(hereinafter “Report and Recommendation”), from Smartflash LLC, et al. v. Apple
`
`Inc., et al., Case No. 6:13-CV-447 (E.D. Tex.) and Smartflash LLC, et al. v.
`
`Samsung Electronics Co. Ltd, et al., Case No. 6:13-CV-448 (E.D. Tex.), dated Jan.
`
`21, 2015, and Exhibit 2050, Order adopting Report and Recommendation (on
`
`Defendants’ Motions for Summary Judgment of Invalidity Pursuant to 35 U.S.C.
`
`101), from Smartflash LLC, et al. v. Apple Inc., et al., Case No. 6:13-CV-447 (E.D.
`
`Tex.) and Smartflash LLC, et al. v. Samsung Electronics Co. Ltd, et al., Case No.
`
`6:13-CV-448 (E.D. Tex.), dated Feb. 13, 2015.
`
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`Claim 11 is not indefinite under 35 U.S.C. § 112, second paragraph because
`
`the claim language is sufficient to inform those skilled in the art about the scope of
`
`the invention with reasonable certainty. Any alleged ambiguity by Petitioner is
`
`contrived and contradicts Apple’s claim construction position in District Court in
`
`which Apple offered a single definition for “use rule” and “use rule data.”
`
`Moreover, the USPTO has already adjudicated the threshold question of whether
`
`Claim 11 comports with 35 U.S.C. § 112, second paragraph, which is a question of
`
`law, during the prosecution of the ‘458 Patent. The USPTO is estopped from re-
`
`litigating this purely legal issue already considered and adjudicated by the USPTO.
`
`Patent Owner submits that the USPTO has already adjudicated the threshold
`
`question of whether claims 1, 6, 8, and 10 of the ‘458 Patent comport with 35
`
`U.S.C. § 101, which is a question of law, during the prosecution of the ‘458 Patent.
`
`The USPTO is estopped from re-litigating this purely legal issue already
`
`considered and adjudicated by the USPTO.
`
`In support of this Patent Owner’s Response, reference will be made to
`
`concurrently filed Exhibit 2068, the Deposition Transcript of Anthony J.
`
`Wechselberger, dated May 28, 2015.
`
`
`
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`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`The Wechselberger Declaration does not state that Mr.
`
`Wechselberger’s opinions presented therein were based on a “preponderance of the
`
`evidence” standard.
`
`2.
`
`The Wechselberger Declaration does not state that Mr.
`
`Wechselberger’s opinions presented therein were based on a “more likely than not”
`
`evidentiary weight standard.
`
`III. THE WECHSELBERGER DECLARATION SHOULD BE GIVEN
`LITTLE OR NO WEIGHT
`A. No Evidentiary Standard Is Disclosed in the Wechselberger
`Declaration
`
`The Wechselberger Declaration does not disclose the underlying facts on
`
`which the opinions are based and is, therefore, entitled to little or no weight. 37
`
`CFR § 42.65 (“Expert testimony that does not disclose the underlying facts or data
`
`on which the opinion is based is entitled to little or no weight.”). More
`
`specifically, the Wechselberger Declaration does not state the evidentiary weight
`
`standard (e.g., substantial evidence versus preponderance of the evidence) that Mr.
`
`Wechselberger used in arriving at his conclusions. Given that there is no evidence
`
`that Mr. Wechselberger even knows how much weight need be relied upon to show
`
`that a claim is non-statutory, the PTAB can only afford little or no weight to the
`
`testimony therein. To do otherwise would be to accept his opinions without
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`knowing “the underlying facts ... on which the opinion is based” (i.e., how much
`
`evidence he thinks shows any of his opinions discussed therein).
`
`Similarly, the Board cannot assess under FRE 702 whether Mr.
`
`Wechselberger’s opinion testimony is “the product of reliable principles and
`
`methods” or if Mr. Wechselberger “reliably applied the principles and methods to
`
`the facts of the case” given that Mr. Wechselberger did not disclose the standard
`
`against which he measured the evidence in arriving at his opinions.
`
`For example, when Mr. Wechselberger reviewed various “examples of these
`
`well-known, routine activities and components in the prior art” (Wechselberger
`
`Declaration at ¶¶ 88-92) and opined that “the challenged claims are directed to
`
`nothing more than implementing the basic concept of providing access to content
`
`based on payment data or rules, using generic features present on general purpose
`
`computers. Therefore, none of those claims is patentable” (id. at ¶ 93) is that
`
`opinion based on less than a preponderance of the evidence, or more? Without Mr.
`
`Wechselberger having disclosed what evidentiary standard he used in forming his
`
`opinions, and given that there is no evidence that he even knew what evidentiary
`
`standard he was supposed to be using, the PTAB cannot rely on his statements.
`
`Thus, the PTAB should find that the Wechselberger Declaration is entitled to little
`
`or no weight.
`
`
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`IV. OVERVIEW OF U.S. PATENT NO. 8,033,458
`A. Overview of the Technology of the Patent
`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, the ‘458 Patent, generally describes “data storage and access
`
`systems ... [and] is particularly useful for managing stored audio and video data,
`
`but may also be applied to storage and access of text and software, including
`
`games, as well as other types of data.” Ex. 1201, ‘458 Patent at 1:20-28.
`
`Preferred embodiments described in the ‘458 Patent at 15:53-62 illustrate
`
`this further: “FIG. 7 ... shows a variety of content access terminals for accessing
`
`data supply computer system 120 over internet 142. The terminals are provided
`
`with an interface to a portable data carrier or ‘smart Flash card’ (SFC) as 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 data
`
`carrier to be inserted into and removed from the terminal, but in some
`
`embodiments the data carrier may be integral with the terminal.” Exemplary
`
`terminals include, but are not limited to, set-top boxes 154, CD/DVD Players 170
`
`and mobile communications devices 152. Id. at 15:65-16:15.
`
`Referring to preferred embodiments, the ‘458 Patent discloses that a data
`
`supply system may provide users with a seamless purchase and content delivery
`
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`experience. Id. at 23:63-24:1. 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
`
`operated by a “content data supply ‘system owner,’” who may act as an
`
`intermediary between a user seeking to purchase content and content providers,
`
`such as record labels, movie studios, and software providers. See id. at 13:60-67.
`
`When a user accesses the system, he or she is able to select content to purchase or
`
`rent from a variety of different content providers. See id. at 4:64-5:8. If the user
`
`finds a content item to buy, his or her device will transmit stored “payment data” to
`
`a “payment validation system” to validate the payment data. See id. at 8:3-6. The
`
`payment validation system returns proof that the payment data has been validated,
`
`in the form of “payment validation data,” and the user is able to retrieve the
`
`purchased content from the content provider. See id. at 8:7-9.
`
`The ‘458 Patent discloses that “FIG. 13 ... shows a flow chart for user access
`
`of stored data on a smart Flash card using a data access device such as the MP3
`
`player of FIG. 1.” Id. at 24:16-18. “The data access device uses the use status data
`
`and use rules to determine what access is permitted to data stored on the data
`
`carrier.” Id. at 9:20-22. “The carrier may ... store content use rules pertaining to
`
`allowed use of stored data items. These use rules may be linked to payments made
`
`from the card to provide payment options such as access to buy content data
`
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`outright; rental access to content data for a time period or for a specified number of
`
`access events; and/or rental/purchase, for example where rental use is provided
`
`together with an option to purchase content data at the reduced price after rental
`
`access has expired.” Id. at 4:67-5:8. Further, “use status data [is retrieved] from
`
`the data carrier [to] indicat[e] past use of the stored data.” Id. at 9:33-35 Thus,
`
`“[b]y combining digital rights management with content data storage using a single
`
`carrier, the stored content data becomes mobile and can be accessed anywhere
`
`while retaining control over the stored data for the data content provider or data
`
`copyright owner.” Id. at 5:29-33.
`
`By using a system that combines on the data carrier both the digital content
`
`and the use rules/use status data, access control to the digital content can be
`
`continuously enforced prior to access to the digital content. By comparison, unlike
`
`a system that uses use rules/use status data as claimed, when a DVD was
`
`physically rented for a rental period, there was no mechanism to write partial use
`
`status data to the DVD when only part of the DVD had been accessed (e.g., to
`
`track whether a renter had “finished with” the DVD yet).
`
`B. Claim Construction
`Petitioner argues that “payment data” should be “construed to mean ‘data
`
`representing payment made for requested content data’ and is distinct from ‘access
`
`control data.’” Corrected Petition, Paper 9 at 20. However, “payment data” in the
`
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`- 8 -
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`context of the claims of the ‘458 Patent should be interpreted to mean “data that
`
`can be used to make payment for content” when using a broadest reasonable
`
`interpretation.1
`
`The ‘458 Patent at 20:59-62, states “payment data for making a payment …
`
`is received from the smart Flash card by the content access terminal and forwarded
`
`to an e-payment system.” That is, the payment data is used for making a
`
`payment. Furthermore, as can be seen in Figure 12c of the ‘458 Patent, step S54
`
`reads “PAYMENT FOR SCHEME OWNER RECEIVED FROM CARD BY
`
`CONTENT ACCESS TERMINAL AND FORWARDED TO e-PAYMENT
`
`SYSTEM.” Step S55 then reads “PAYMENT RECORD DATA RECEIVED
`
`FROM e-PAYMENT SYSTEM BY CONTENT ACCESS TERMINAL AND
`
`FORWARDED TO CARD.” Both of those steps precede step S56 which recites
`
`“PAYMENT RECORD DATA, PURCHASE REQUEST AND CARD
`
`REGISTRATION DATA TRANSMITTED TO SCHEME OWNER.” Thus, as
`
`1 Patent Owner’s use of the “broadest reasonable interpretation” (BRI)
`
`standard herein is not an admission that the BRI standard is the proper standard for
`
`CBM proceedings such as this one. However, for the purposes of this proceeding
`
`based on the issues in the instituted proceeding, Patent Owner has presented its
`
`arguments utilizing the BRI standard for “payment data.” Patent Owner reserves
`
`its right to argue for a different standard at a later date or in a different proceeding.
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`payment has not yet been made when the payment data of step S54 is sent,
`
`“payment data” should be interpreted to mean “data that can be used to make
`
`payment for content.”
`
`V. CLAIMS 1, 6, 8, AND 10 OF THE ‘458 PATENT ARE DIRECTED TO
`STATUTORY SUBJECT MATTER
`A. The Two-Part Test for Statutory Subject Matter
`The Supreme Court articulated a two-part test for patentability in Mayo
`
`Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012),
`
`which has been followed by Alice Corp. Pty. v. CLS Bank Int'l, 134 S. Ct. 2347
`
`(2014). The first step in the analysis is to determine whether the claims at issue are
`
`directed to patent-ineligible concepts. If the claims at issue are directed to a
`
`patent-ineligible concept, the second step of the analysis is to determine whether
`
`the limitations of the claims, individually and as ordered combinations, contain an
`
`inventive concept that transforms the nature of the claims into patent-eligible
`
`subject matter. Mayo, 132 S. Ct. at 1294.
`
`B.
`
`The ‘458 Patent Claims Are Statutory Under the Second Step of
`Mayo and Alice
`Post Mayo and Alice, the Federal Circuit has provided guidance on how to
`
`distinguish statutory claims, like those of the ‘458 Patent, from non-statutory
`
`claims. In DDR Holdings, the Federal Circuit analyzed claims, like the ‘458 Patent
`
`claims at issue here, that have technological solutions to technological problems
`
`created by the nature of digital content and the Internet. In DDR Holdings, the
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`system of exemplary claim 19 included (a) a computer store containing the data
`
`needed to support operation of the system and (b) a computer server (or processor)
`
`that was coupled to the computer store, where the claimed system was
`
`programmed to (by having code configured to) perform the solution to a network-
`
`specific problem. The computer server was “programmed to” perform four steps.
`
`The first two steps are “(i) receive from the web browser of a computer user a
`
`signal indicating activation of one of the links displayed by one of the first web
`
`pages; [and] (ii) automatically identify as the source page the one of the first web
`
`pages on which the link has been activated.” The third and fourth steps were “(iii)
`
`in response to identification of the source page, automatically retrieve the stored
`
`data corresponding to the source page; and (iv) using the data retrieved,
`
`automatically generate and transmit to the web browser a second web page that
`
`displays: (A) information associated with the commerce object associated with the
`
`link that has been activated, and (B) the plurality of visually perceptible elements
`
`visually corresponding to the source page.” The Court found the claims to be
`
`statutory because “the claimed solution is necessarily rooted in computer
`
`technology in order to overcome a problem specifically arising in the realm of
`
`computer networks.” Id. at 1257.
`
`Such is the case here too. Here, the claims are not directed to mental
`
`processes or processes performed using pen and paper, rather the claims are
`
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`directed to particular devices that can download and store digital content into a
`
`data carrier. By using a system that combines on the data carrier both the digital
`
`content and use rules/use status data, and by using “code to evaluate the use status
`
`data using the use rules data to determine whether access is permitted to the stored
`
`data” and “code to access the stored data when access is permitted,” access control
`
`to the digital content can be continuously enforced prior to access to the digital
`
`content, allowing subsequent use (e.g., playback) of the digital content to be
`
`portable and disconnected. Moreover, the claimed portable data carriers enable the
`
`tracking of partial use of a stored data item (e.g., so that the rest can be used/played
`
`back later). By comparison, unlike a system that uses use rules/use status data as
`
`claimed, when a DVD was physically rented for a rental period, there was no
`
`mechanism to write partial use status data to the DVD when only part of the DVD
`
`had been accessed (e.g., to track whether a renter had “finished with” the DVD
`
`yet).
`
`Thus, the claims are rooted in computer technology in order to overcome a
`
`problem specifically arising in the realm of computer networks – that of digital
`
`data piracy, and, like in DDR Holdings, “address … a challenge particular to the
`
`Internet.” Id. at 1257. The Report and Recommendation also acknowledged this
`
`distinction, finding:
`
`As in DDR Holdings, the patents here do not simply
`apply a known business practice from the pre-Internet
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`world to computers or the Internet. “The claimed solution
`is necessarily rooted in computer technology in order to
`overcome a problem specifically arising in the realm of
`computer networks.” ... Digital Rights Management is a
`technology that was developed after widespread use of
`the Internet. Entry into the Internet Era presented new
`and unique problems for digital content providers in
`combatting unauthorized use and reproduction of
`protected media content.
`
`Report and Recommendation at 19, lines 7-12 (quoting DDR Holdings, 773 F.3d at
`
`1257) (internal citation omitted).
`
`As an example of the ‘458 Patent claims meeting the requisites of § 101
`
`under DDR Holdings, independent claim 1 of the ‘458 Patent recites a portable
`
`data carrier (a system) that parallels the structure of the statutory claim 19 in DDR
`
`Holdings. The table below sets forth a mapping of claim 1 of the ‘458 Patent to
`
`claim 19 of the patent in DDR Holdings and shows that claim 1 is directed to
`
`statutory subject matter.
`
`Claim element from DDR Holding
`
`Similar claim element from claim 1
`
`19. A system useful in an outsource
`
`“1. A portable data carrier, comprising:”
`
`provider serving web pages offering
`
`commercial opportunities, the system
`
`comprising:
`
`(a) a computer store containing data, for
`
`“an interface for reading and writing
`
`each of a plurality of first web pages,
`
`data from and to the carrier;
`
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`- 13 -
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`Claim element from DDR Holding
`
`Similar claim element from claim 1
`
`defining a plurality of visually
`
`non-volatile payment data memory,
`
`perceptible elements, which visually
`
`coupled to the interface, for providing
`
`perceptible elements correspond to the
`
`payment data to an external device;
`
`plurality of first web pages; (i) wherein
`
`a program store storing code
`
`each of the first web pages belongs to
`
`implementable by a processor;”
`
`one of a plurality of web page owners;
`
`(ii) wherein each of the first web pages
`
`displays at least one active link
`
`associated with a commerce object
`
`associated with a buying opportunity of
`
`a selected one of a plurality of
`
`merchants; and (iii) …
`
`(b) a computer server at the outsource
`
`“a processor, coupled to the content data
`
`provider, which computer server is
`
`memory, the payment data memory, the
`
`coupled to the computer store and
`
`interface and to the program store for
`
`programmed to:
`
`implementing code in the program
`
`store”
`
`(i) receive from the web browser of a
`
`“a subscriber identity module (SIM)
`
`computer user a signal indicating
`
`portion to identify a subscriber to a
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`
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`- 14 -
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`

`
`Claim element from DDR Holding
`
`Similar claim element from claim 1
`
`activation of one of the links displayed
`
`network operator”
`
`by one of the first web pages;
`
`(ii) automatically identify as the source
`
`“wherein the code comprises code to
`
`page the one of the first web pages on
`
`output payment data from the payment
`
`which the link has been activated;
`
`data memory to the interface…”
`
`(iii) in response to identification of the
`
`“non-volatile data memory, coupled to
`
`source page, automatically retrieve the
`
`the interface, for storing data on the
`
`stored data corresponding to the source
`
`carrier”
`
`page; and
`
`(iv) using the data retrieved,
`
`“… and code to provide external access
`
`automatically generate and transmit to
`
`to the data memory”
`
`the web browser a second web page that
`
`displays: (A) information associated
`
`with the commerce object associated
`
`with the link that has been activated, and
`
`(B) the plurality of visually perceptible
`
`elements visually corresponding to the
`
`source page.
`
`
`
`
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`- 15 -
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`

`
`As another example of the ‘458 Patent claims meeting the requisites of § 101
`
`under DDR Holdings, independent claim 6 of the ‘458 Patent recites a data access
`
`terminal (a system) that also parallels the structure of the statutory claim 19 in
`
`DDR Holdings. The table below sets forth a mapping of claim 6 of the ‘458 Patent
`
`to claim 19 of the patent in DDR Holdings and shows that claim 6 is directed to
`
`statutory subject matter.
`
`Claim element from DDR Holding
`
`Similar claim element from claim 6
`
`19. A system useful in an outsource
`
`“6. A data access device for retrieving
`
`provider serving web pages offering
`
`stored data from a data carrier, the
`
`commercial opportunities, the system
`
`device comprising:”
`
`comprising:
`
`(a) a computer store containing data, for
`
`“a data carrier” that is used to store a
`
`each of a plurality of first web pages,
`
`use status of data stored on the data
`
`defining a plurality of visually
`
`carrier, and use rules data indicating
`
`perceptible elements, which visually
`
`permissible use of data stored on the
`
`perceptible elements correspond to the
`
`data carrier;
`
`plurality of first web pages; (i) wherein
`
`each of the first web pages belongs to
`
`one of a plurality of web page owners;
`
`(ii) wherein each of the first web pages
`
`
`
`- 16 -
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`

`
`Claim element from DDR Holding
`
`Similar claim element from claim 6
`
`displays at least one active link
`
`associated with a commerce object
`
`associated with a buying opportunity of
`
`a selected one of a plurality of
`
`merchants; and (iii) …
`
`(b) a computer server at the outsource
`
`“a processor coupled to the user
`
`provider, which computer server is
`
`interface, to the data carrier interface
`
`coupled to the computer store and
`
`and to the program store for
`
`programmed to:
`
`implementing the stored code, the code
`
`comprising:”
`
`(i) receive from the web browser of a
`
`“code to retrieve use status data
`
`computer user a signal indicating
`
`indicating a use status of data stored on
`
`activation of one of the links displayed
`
`the carrier...”
`
`by one of the first web pages;
`
`(ii) automatically identify as the source
`
`“code to retrieve ... use rules data
`
`page the one of the first web pages on
`
`indicating permissible use of data stored
`
`which the link has been activated;
`
`on the carrier”
`
`(iii) in response to identification of the
`
`“code to evaluate the use status data
`
`source page, automatically retrieve the
`
`using the use rules data to determine
`
`
`
`- 17 -
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`

`
`Claim element from DDR Holding
`
`Similar claim element from claim 6
`
`stored data corresponding to the source
`
`whether access is permitted to the stored
`
`page; and
`
`data”
`
`(iv) using the data retrieved,
`
`“code to access the stored data when
`
`automatically generate and transmit to
`
`access is permitted”
`
`the web browser a second web page that
`
`displays: (A) information associated
`
`with the commerce object associated
`
`with the link that has been activated, and
`
`(B) the plurality of visually perceptible
`
`elements visually corresponding to the
`
`source page.
`
`
`
`Claims 8 and 10 depend from claim 6 and are likewise statutory.
`
`Thus, like in DDR Holdings, when “the limitations of the … claims are
`
`taken as [a] combination, the claims recite[] an invention that is not merely the
`
`routine or conventional use of the Internet.” DDR Holdings, 773 F.3d at 1259.
`
`Such a finding was further echoed by the Report and Recommendation when it
`
`held that the “asserted claims … recite specific ways of using distinct memories,
`
`data types, and use rules that amount to significantly more than the underlying
`
`
`
`- 18 -
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`

`
`abstract idea. Although in some claims the language is functional and somewhat
`
`generic, the claims contain significant limitations on the scope of the inventions.”
`
`Report and Recommendation at 19, lines 1-4.
`
`The Corrected Petition alleges that “[t]he challenged claims of the ’458
`
`Patent merely recite ‘[d]ata storage and access systems [that] enable downloading
`
`and paying for data,’ including a well-known ‘portable data carrier’ and a ‘data
`
`access device for retrieving stored data from a data carrier.’” Corrected Petition,
`
`Paper 9 at 3 (citing Ex.1201 Abstract, claims 1 and 6). The Corrected Petition
`
`glosses over independent claim 6, simply stating, “[c]laim 6 further recites code for
`
`retrieving use status data, evaluating use status data to determine if access to the
`
`data is permitted, and accessing the stored data when access is permitted.” Id. at 5,
`
`n.4. Claim 6, and its dependent claims 8 and 10, however, recite that the use rules,
`
`use status data, and the stored data are all stored in the same data carrier. Ex.
`
`1201, ‘458 Patent at 27:17-19. The Corrected Petition does not allege that such a
`
`configuration was known, nor does such a configuration relate to mental or pen-
`
`and-paper processes. By ignoring that the use rules, use status data, and the stored
`
`data are all stored in the same data carrier, it can be seen that the Corrected
`
`Petition is ignoring even the context of the problem – that a technological solution
`
`is necessary to address the technological problem created by the nature of digital
`
`
`
`- 19 -
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`

`
`content and the Internet. Accordingly, the claims of the ‘458 Patent are directed to
`
`statutory subject matter under the two-part test of Mayo and Alice.
`
`C. Claims 1, 6, 8, and 10 of the ‘458 Patent Do Not Result in
`Inappropriate Preemption
`1.
`Claims 1, 6, 8, and 10 of the ‘458 Patent do not result in inappropriate
`
`Preemption under DDR Holdings
`
`preemption of the “idea of paying for and controlling access to data” (Corrected
`
`Petition, Paper 9 at 6) or the “idea of paying for and controlling access to content”
`
`(Ex. 1220, Wechselberger Declaration at ¶ 82) under DDR Holdings, Mayo and
`
`Alice. The Corrected Petition alleges that “Here, the challenged claims’ broad
`
`functional (sic) firmly triggers preemption concerns.” Paper 9 at 34. However,
`
`using the analysis of the Federal Circuit in DDR Holdings, claims are statutory
`
`when “the claims ... do not attempt to preempt every application of the idea
`
`[relating