Covered Business Method Patent Review
`United States Patent No. 7,942,317
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Petitioner: Apple Inc.
`
`Attorney Docket No.:
`
` 104677-5008-816
`Customer No. 28120
`
`§
`Inventor: Racz et al.
`United States Patent No.: 7,942,317 §
`Formerly Application No.: 12/014,558 §
`Issue Date: May 17, 2011
`§
`Filing Date: January 15, 2008
`§
`Former Group Art Unit: 2887
`§
`Former Examiner: Thien M. Le
`§
`
`For: Data Storage and Access Systems
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 7,942,317 PURSUANT TO 35 U.S.C. § 321,
`37 C.F.R. § 42.304
`
`
`
`
`
`

`

`
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` Covered Business Method Patent Review
`United States Patent No. 7,942,317
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`
`TABLE OF CONTENTS
`
`(b) 
`
`B. 
`
`INTRODUCTION ....................................................................................................... 1 
`I. 
`II.  OVERVIEW OF FIELD OF THE CLAIMED INVENTION ......................... 4 
`III.  PETITIONER HAS STANDING .......................................................................... 11 
`A. 
`The ’317 Patent Is a Covered Business Method (“CBM”) Patent ........... 11 
`1. 
`Exemplary Claim 18 Is Financial In Nature .................................... 12 
`2. 
`Claim 18 Does Not Cover A Technological Invention ................. 14 
`(a) 
`Claim 18 Does Not Recite A Technological
`Feature That Is Novel and Unobvious .............................. 15 
`Claim 18 Does Not Solve A Technical Problem
`Using A Technical Solution ................................................. 17 
`Related Matters and Mandatory Disclosures; Petitioner Is a
`Real Party In Interest Sued For and Charged With Infringement ........... 19 
`IV.  DETAILED EXPLANATION OF REASONS FOR RELIEF
`REQUESTED, SHOWING IT IS MORE LIKELY THAN NOT
`THAT AT LEAST ONE CHALLENGED CLAIM IS
`UNPATENTABLE .................................................................................................... 20 
`A. 
`Claim Construction .......................................................................................... 20 
`B. 
`The Challenged Claims are Unpatentable Under § 101 ............................. 22 
`1. 
`The Challenged Claim is Directed To Abstract Ideas .................... 23 
`2. 
`The Challenged Claim Does Not Disclose An “Inventive
`Concept” That Is “Significantly More” Than an Abstract
`Idea ......................................................................................................... 26 
`Field Of Use Limitations Cannot Transform Abstract Ideas
`Into Patent Eligible Inventions .......................................................... 27 
`Generic Computer Implementation Cannot Transform
`Abstract Ideas Into Patent Eligible Inventions ............................... 28 
`The Functional Nature Of The Challenged Claims
`Confirms preemption and Patent Ineligibility ................................. 29 
`Machine-or-Transformation Test Also Confirms Patent
`Ineligibility ............................................................................................. 30 
`CONCLUSION........................................................................................................... 30 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`V. 
`
`ii
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`

`

`
`EXHIBIT LIST
`1201
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`1202
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`1203
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`1204
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`1205
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`1206
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`1207
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`1208
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`1209
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`1210
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`1211
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`1212
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`1213
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`1214
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`1215
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`1216
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`1217
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`1218
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`1219
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` Covered Business Method Patent Review
`United States Patent No. 7,942,317
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`
`U.S. Patent No. 7,942,317
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`Plaintiff’s First Amended Complaint
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`U.S. Patent No. 5,940,805
`
`U.S. Patent No. 4,999,806
`
`U.S. Patent No. 5,675,734
`
`U.S. Patent No. 4,337,483
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`File History for U.S. Patent No. 7,942,317
`
`Declaration of Megan F. Raymond In Support of Apple Inc.’s
`Petition for Covered Business Method Patent Review
`U.S. Patent No. 5,103,392
`
`U.S. Patent No. 5,530,235
`
`U.S. Patent No. 5,629,980
`
`U.S. Patent No. 5,915,019
`
`European Patent Application, Publication No. EP0809221A2
`
`International Publication No. WO 99/43136
`
`JP Patent Application Publication No. H11-164058 (transla-
`tion)
`Eberhard von Faber, Robert Hammelrath, and Franz-Peter
`Heider, “The Secure Distribution of Digital Contents,” IEEE
`(1997)
`Declaration of Anthony J. Wechselberger In Support of Apple
`Inc.’s Petition for Covered Business Method Patent Review
`Declaration of Michael P. Duffey In Support of Apple Inc.’s
`Petition for Covered Business Method Patent Review
`U.S. Patent No. 4,878,245
`
`iii
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` Covered Business Method Patent Review
`United States Patent No. 7,942,317
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`EXHIBIT LIST
`1220
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`1221
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`Claim Construction Memorandum Opinion from Smartflash
`LLC v. Apple Inc., No. 6:13cv447 (Dkt. 229)
`U.S. Patent No. 5,925,127
`
`iv
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` Covered Business Method Patent Review
`United States Patent No. 7,942,317
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`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 321 and 37 C.F.R. § 42.304, the undersigned, on behalf
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`of and acting in a representative capacity for Apple Inc. (“Petitioner” and the real par-
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`ty in interest), petitions for review under the transitional program for covered busi-
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`ness method (“CBM”) patents of claim 18 (the challenged claim) of U.S. Pat.
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`No. 7,942,317 (“the ’317 patent”), issued to Smartflash Technologies Limited and as-
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`signed to Smartflash LLC (“Patentee”). Petitioner hereby asserts that it is more likely
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`than not that claim 18 is unpatentable for the reasons herein and requests review of,
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`and judgment against, the challenged claim as unpatentable under 35 U.S.C. § 101.1
`
`Ad discussed in Section III.B, infra, Petitioner previously filed CBM2014-00112
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`and CBM-00113 seeking review of claims 1, 6-8, 12, 13, 16, and 18 of the ’317 patent
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`on §§102 and 103 grounds. Those petitions were instituted for trial (and consolidated
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`as CBM2014-001122) with respect to those claims on the basis of §103.
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`1 Petitioner is demonstrating, in pending litigation, that these claims are invalid for
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`numerous additional reasons. All emphasis herein added unless otherwise noted. All
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`section cites herein are to 35 U.S.C. or 37 C.F.R., as the context indicates, and all
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`emphasis herein is added unless otherwise noted.
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`2 Petitioner respectfully notes that the Director, pursuant to Rule 325(c), may
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`determine after institution that consolidation of these proceedings may be appropriate,
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` Covered Business Method Patent Review
`United States Patent No. 7,942,317
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`As detailed herein, claim 18 merely recites steps well-known in the field of data
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`storage and access, including the method of “providing data to a data requester.” See,
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`e.g., Ex. 1201 at claim 18; Abstract “Data storage and access systems are described for
`
`downloading and paying for data . . .”). Moreover, as confirmed by the Supreme
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`Court’s recent decision in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347
`
`(2014)—decided after Petitioner’s original petitions challenging the ’317 patent were
`
`filed—claim 18—a method claim—represents nothing more than an attempt to pa-
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`tent a well-known and unpatentable abstract idea ineligible for patenting under § 101:
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`paying for data.. Claim 18 recites five rudimentary steps relating to data storage and
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`access—(A) receiving a request for data, (B) receiving payment data relating to
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`the data, (C) transmitting requested data, (D) reading payment distribution infor-
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`mation, and (E) outputting payment data for distributing the requested data:
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`18. A method of providing data to a data requester comprising:
`receiving a request for a data item from the requester;
`receiving payment data from the requester relating to payment for
`
`the requested data;
`transmitting the requested data to the requestor;
`reading payment distribution information from a data store; and
`outputting payment data to a payment system for distributing the
`
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`or may at minimum determine to coordinate the schedules of this proceeding and
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`CBM2014-00112.
`
`2
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` Covered Business Method Patent Review
`United States Patent No. 7,942,317
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`payment for the requested data.
`Ex. 1201. But at the patent’s earliest claimed priority date, these simple elements and
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`their combination were well known to any person of ordinary skill (“POSITA”3). In-
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`deed, the patent acknowledges that the idea of providing access to data in exchange
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`for a payment (e.g., purchase of music on a CD) was already well known. See, e.g., Ex.
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`1201 5:4-7 (“the purchase outright option may be equivalent to the purchase of a compact
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`disc (CD)”). And, as demonstrated herein, the prior art was teeming with disclosures
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`of this basic concept and its straightforward implementation in physical systems.
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`Moreover, claim 18 clearly involves no “technology” at all other than, at most, a
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`“data requester,” which is merely an entity that may make a data request, and a “pay-
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`ment system” and “data store,” which were commonplace and—to the extent they are
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`deemed to require hardware at all—certainly do not require any particularized hard-
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`ware. See, e.g., Ex. 1201 4:27-42; 6:38-40; 7:52-53; 9:62; 10:16, 25, 36, 44; 12:29-32;
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`13:35-47; 14:25-29; 19:43-44; Figs. 6, 12(d), (e). Thus, as the intrinsic record reflects,
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`Claim 18 recites no more than a method for receiving a request for and transmitting
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`3 All references to a POSITA refer to the knowledge or understanding of a person of
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`ordinary skill in the art as of October 25, 1999, unless specifically noted. A POSITA
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`would have at least a B.S. in E.E., computer science or a telecommunications related
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`field, and at least three years of industry experience that included client-server
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`data/information distribution and management architectures. See Ex. 1217 ¶ 28.
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`3
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`United States Patent No. 7,942,317
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`data while receiving and outputting payment data. Independent claims 1, 8, and 16
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`are nothing but variations on this same simple theme, with the addition, in the chal-
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`lenged “system” claims, of equally generic components (such as a communication in-
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`terface, program store, and processor). See, e.g., Ex. 1201 12:29-32 (“The physical em-
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`bodiment of the system is not critical and a skilled person will understand that the
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`terminals, data processing systems and the like can all take a variety of forms.”).
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`As the Board noted in its previous Institution Decision, “the ’317 patent makes
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`clear that the asserted novelty of the invention is not in any specific improvement of
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`software or hardware, but in the method of controlling access to data,” CBM2014-00112,
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`Paper 8, at 11, and the challenged claim is directed to nothing more than the un-
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`patentable abstract idea of paying for data, with at most the addition of well-known,
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`routine and conventional features that do not render it patentable—in particular, fea-
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`tures that, even if assumed to suggest a generic computer implementation, cannot
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`confer patentability on this patent-ineligible abstraction. See, e.g., Alice, 134 S. Ct. at
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`2359-60.
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`Because claim 18 recites unpatentable subject matter, it should be invalidated.
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`II. OVERVIEW OF FIELD OF THE CLAIMED INVENTION
`By October 25, 1999, electronic sale, distribution, and content protection for
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`digital products all would have been well-known to a POSITA, and (as Petitioner is
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`demonstrative in the instituted trial in CBM2014-00112) their combination as claimed
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`4
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`United States Patent No. 7,942,317
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`also would have been well-known or at minimum obvious. See, e.g., Ex. 1217 § V. On
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`March 12, 1991, for example, U.S. Pat. No. 4,999,806 (“Chernow,” filed Sept. 4, 1987)
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`issued, disclosing a system and method for sale and distribution of digital products by
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`phone, and for content protection. See, e.g., Ex. 1204 Abstract (“central station distrib-
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`utes software by telephone. . . accepts credit card information, transmits an acceptance code . . . After
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`verifying the credit card information, the station calls the purchaser back and continues with the
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`transaction only after receiving the acceptance code.”); 1:67-2:9 (describing “means for selling
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`and distributing protected software using standard telephone lines,” “permit[ting] the purchaser to
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`rent the protected software for a period of time,” and “to rent the protected software for a specific
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`number of runs”). Chernow also discloses (1) different types of access, such as purchase
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`vs. rental and (2) a Control Transfer Program and a Primary Protection Program to
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`prevent unauthorized copies. See Ex. 1204 Abstract; 2:65-3:23; Ex. 1217 ¶ 33.
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`In April 1992, U.S. Patent No. 5,103,392 (“Mori,” filed Dec. 5, 1990) issued,
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`disclosing use-based charging for digital products. See, e.g., id. Ex. 1209 1:64-2:17:
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`The data processing apparatus includes user-specific credit data storage
`means for storing data identifying the user . . . and indicating credit for payment ca-
`pacity, use time length, or the like of the user . . .. Also included is use deci-
`sion means for determining permission to use the program . . . on the basis of pro-
`gram-specific data supplied from the program storage means or user-specific
`credit data supplied from the user-specific credit data storage means, the
`use decision means delivering either an affirmative or negative signal corresponding
`to results of the decision. Also included is program use history storage means
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`United States Patent No. 7,942,317
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`connected to the use decision means for storing program use history data . . ..
`Mori’s emphasis on assuring permission to access a program and compensating pro-
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`viders underscores this existing focus in the art on digital rights management
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`(“DRM”), over eight years before the claimed priority date. See, e,g., Ex. 1217 ¶ 36.
`
`In 1996 and 1997, related U.S. Patent Nos. 5,530,235, issued June 25, 1996, and
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`5,629,980, issued May 13, 1997, (referred to collectively as “Stefik”) also addressed the
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`need for DRM in the expanding field of content distribution. Stefik disclosed a net-
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`work of “repositories,” including portable cards, which interact to distribute content
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`among users. See, e.g., Ex. 1210 4:21-46. Stefik acknowledged the importance of
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`providing controls over distributed digital content to prevent piracy and ensure that
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`content creators are adequately compensated. See, e.g., Ex. 1211 6:65-7:2 (“[Once a
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`work has been read, computational control over that copy is gone. Metaphorically,
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`‘the content genie is out of the bottle and no more fees can be billed.” Stefik disclos-
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`es combating piracy of the read content by tying “usage rights” specifying use and fee
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`restrictions that remain with the work through the distribution chain. Id. 7:1-5 (“[T]he
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`present invention never separates the fee descriptions from the work. Thus, the digi-
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`tal work genie only moves from one trusted bottle (repository) to another, and all uses
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`of copies are potentially controlled and billable.”); 11:33-34 (“It is fundamental to the
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`present invention that the usage rights are treated as part of the digital work. As the
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`digital work is distributed, the scope of the granted usage rights will remain the same
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`United States Patent No. 7,942,317
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`or may be narrowed.”). Stefik also discloses distribution of payment for purchased
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`content. See, e.g., 1211 43:53-55 (“If the consumer copies the digital work (usually for
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`a third party), a fee is collected and automatically paid to the creator.”); 44:2-4 (“In
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`another scenario, every time a copy of a digital work is sold a fee is paid to the creator
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`and also to the immediate distributor.”); 44:18-19 (“When a consumer buys a copy
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`from the distributor, fees are paid both to the distributor and to the creator.”). See also,
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`e,g., Ex. 1217 ¶¶ 43-49, 82.
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`Exhibit 1213 (“Poggio”, pub’d Nov. 26, 1997) gives another example of secure
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`content distribution with content protection, disclosing a “virtual vending machine”
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`system for sale and distribution of digital products. See, e.g., id. Abstract (“virtual vend-
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`ing machine manages a comprehensive vending service for the distribution of licensed electronic data
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`(i.e., products) over a distributed computer system. . . . [and] distributes licenses for the electronic data
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`for the complete product or for components thereof and for a variety of time frames, including perma-
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`nent licenses and rental period licenses. [It] provides . . . capability to obtain information regard-
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`ing the available products and the associated license fees and rental periods, to receive the product
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`upon receipt of a corresponding electronic payment, and to reload the product during the term of the
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`license.”). Poggio, too, discloses different types of access, including rentals, and re-
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`download capabilities for already-purchased content. See, e.g., id.; Ex. 1217 ¶ 37.
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`Also in 1997, Exhibit 1216 (“von Faber”) published, making the well-known
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`observation that “[e]lectronic commerce systems dealing with the distribution of digital con-
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`United States Patent No. 7,942,317
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`tents . . . have to couple the use of the provided digital goods with a prior payment for the goods in a
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`way which cannot be bypassed.” See id. 7. Von Faber proposed a system where cus-
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`tomers purchase keys required to utilize encrypted content. See, e.g., id. (“The basic
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`idea . . . is to distribute the contents in encrypted form, and to have the customer pay for the key
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`which he needs to transform the encrypted content in an usable form.”); id. 8 (“The Content Pro-
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`vider provides digital contents in encrypted form being distributed by the Content Distribu-
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`tor. . . . The Authorisation System permits the distribution of the appropriate key after settling
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`of the fees payable by the Customer . . .. The role of the Content Distributor is not essential
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`for the subsequent discussion but, of course, for the business to take place.”); see also id. Fig.
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`1. Von Faber notes its system could be used for a variety of known distribution and
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`payment methods. See, e.g., id. 13 (“Different methods can be used to distribute the encrypted
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`contents (standard techniques). . . . Different electronic payment methods can be integrated . . . .
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`This flexibility leads to the fact that totally different authorisation methods can be integrated.”).
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`Von Faber further addressed the known issue of payment distribution to providers.
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`See, e.g., id. (“The system automatically divides the package price (payments) and guarantees that
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`the money is transferred to each Content Provider.”); Ex. 1217 ¶¶ 38-40, 81.
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`Moreover, on June 22, 1999, U.S. Pat. No. 5,915,019 (“Ginter,” filed Jan. 8,
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`1997) issued, disclosing “systems and methods for secure transaction management
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`and electronic rights protection.” See, e.g., Ex. 1212 Abstract. Ginter describes a “vir-
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`tual distribution environment” (“VDE”) to “control and/or meter or otherwise moni-
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`United States Patent No. 7,942,317
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`tor use of electronically stored or disseminated information.” Id. Ginter’s system
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`“help[s] to ensure that information is accessed and used only in authorized ways, and
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`maintain the integrity, availability, and/or confidentiality of the information.” See, e.g.,
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`id. Further, Ginter’s “techniques may be used to support an all-electronic information dis-
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`tribution, for example, utilizing the ‘electronic highway.’” Id. Ginter discloses that the vari-
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`ous entities of the VDE can flexibly take on any VDE roles. See, e.g., id. 255:22-23
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`(“All participants of VDE 100 have the innate ability to participate in any role.”); 255:23-43.
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`Ginter thus highlights the known flexibility in such distribution systems. And Ginter
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`also discloses distribution of payment for purchased content. See id. 255:40-43 (“Roy-
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`alty payments for the new works may be accessed by the publisher, distributors, or
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`end-users, and may be tracked and electronically collected at any stage of the chain.”).
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`See, e.g., Ex. 1217 ¶¶ 41-42, 81.
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`Storage and utilization of content stored on portable devices, including mobile
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`communication devices such as cellular phones, was also well-known before Smart-
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`flash’s claimed October 25, 1999 priority date. As one example, PCT Application
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`Publication No. WO 99/43136 (“Rydbeck”) published on August 26, 1999. See Ex.
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`1214. Rydbeck discloses a cellular phone as a user device for storing digital content in
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`non-volatile memory and accessing that content. See, e.g., id. 5 (“Because of its integra-
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`tion into the cellular phone, the digital entertainment module can share components
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`already present in the cellular phone. Such savings would not be available if a CD
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`player were simply aggregated with the phone. Further, the use of solid state RAM or
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`ROM, as opposed to disc storage, eliminates the need for bounce control circuitry.
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`This enables the disclosed invention to provide cellular communications and enter-
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`tainment during leisure activities.”). In addition, JP Patent Application Publication
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`No. H11-164058 (“Sato”), entitled “Portable Music Selection and Viewing System”
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`and published June 18, 1999, discloses storing media content onto mobile user devic-
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`es and playing the media content from these mobile devices. Sato further discloses
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`storing that media content on a removable IC card. See, e.g., Ex. 1215 ¶ 9 (“The port-
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`able music selection and viewing device 70 provides a removable storage device 76 on a
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`main body 71. This storage device 76 is a memory card similar to, for example, a mag-
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`netic card, a magnetic tape, a CD, a DVD, or an IC card. The user, after downloading
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`the music software to the storage device (medium) 76 of the portable music selection
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`and viewing device 70 by operating the push buttons or the like on the main body 71,
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`can enjoy this music software on a display 72 or a receiver 74 of the portable music
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`selection and viewing device 70, and can also enjoy higher quality music playback by
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`removing this storage device (medium) and inserting it into another audio unit. Further, the user
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`can store the music software from another audio unit into the storage device 76 and
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`enjoy music by inserting this storage unit 76 into this portable music selection and
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`viewing device 70.”); ¶ 13 (“A music storage device 240 connected to the music con-
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`trol unit 200 stores the music software. A music storage medium 250 such as . . . a
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`memory card such as an IC card stores the music software, and this storage medium 250
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`can be removed and used on other audio units.”). See, e.g., Ex. 1217 ¶¶ 50-51.
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`Thus, as these background examples illustrate, the prior art was rife with
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`awareness and discussion of the same supposed “invention” now memorialized in the
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`challenged claims. Long before the purported priority date, disclosures abounded of
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`the very features that Smartflash now seeks to claim as its exclusive property.
`
`III. PETITIONER HAS STANDING
`A.
`Petitioner certifies that the ’317 patent is available for review under 37 C.F.R. §
`
`The ’317 Patent Is a Covered Business Method (“CBM”) Patent
`
`42.304(a). The ’317 patent is a CBM patent under § 18(d)(1) of the Leahy-Smith
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`America Invents Act, Pub. L. 112-29 (“AIA”) and § 42.301. See also CBM2014-00111,
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`Paper 8, at 7-12 (finding claim 18 of ’317 Patent satisfies CBM requirement). Alt-
`
`hough in fact numerous claims qualify, a patent with even one claim covering a CBM
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`is considered a CBM patent. See CBM 2012-00001, Doc. 36 at 26; 77 Fed. Reg. 48,709
`
`(Aug. 14, 2012). Accordingly, Petitioner addresses here exemplary claim 18:
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`18. A method of providing data to a data requester comprising:
`receiving a request for a data item from the requester;
`receiving payment data from the requester relating to payment for
`
`the requested data;
`transmitting the requested data to the requestor;
`reading payment distribution information from a data store; and
`outputting payment data to a payment system for distributing the
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`payment for the requested data.
`1.
`Exemplary Claim 18 Is Financial In Nature
`A CBM patent is “a patent that claims a method or corresponding apparatus
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`for performing data processing or other operations used in the practice, administra-
`
`tion, or management of a financial product or service, except that the term does not
`
`include patents for technological inventions.” AIA § 18(d)(1); 37 C.F.R. § 42.301.
`
`“[T]he definition of covered business method patent was drafted to encompass pa-
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`tents claiming activities that are financial in nature, incidental to a financial activity or comple-
`
`mentary to a financial activity.’” 77 Fed. Reg. 48,734-35 (Aug. 13, 2012) (citing 157 Cong.
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`Rec. S5432 (daily ed. Sept. 8, 2011) (stm’t Sen. Schumer)). “[F]inancial product or ser-
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`vice” is to be interpreted broadly, id., and “financial . . . simply means relating to monetary
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`matters”—it does not require any link to traditional financial industries such as banks.
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`See, e.g., CBM2012-00001, Paper 36, at 23.
`
`This Board has previously found, e.g., that a claim for “transferring money elec-
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`tronically via a telecommunication line to the first party . . . from the second party”
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`met the financial product or service requirement, concluding that “the electronic transfer
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`of money is a financial activity, and allowing such a transfer amounts to providing a financial ser-
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`vice.” CBM2013-00020, Paper 14, at 11-12. See also, e.g., CBM2013-00017, Paper 8, at
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`5-6 (qualification as CBM patent based on specification’s reference to e-commerce
`
`and fact that a POSITA “would have understood that [one of the claim limitations] may be asso-
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`ciated with financial services”).
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`12
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` Covered Business Method Patent Review
`United States Patent No. 7,942,317
`
`As discussed above, the ’317 patent relates, at most, to the idea of providing
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`electronic data in exchange for payment. See AIA § 18(d)(1); 37 C.F.R. § 42.301(a); Ex.
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`1201 2:12-15. Indeed, in seeking to enforce the ’317 patent in litigation, Smartflash
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`itself conceded that the alleged invention relates to a financial activity or transaction,
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`stating that “[t]he patents-in-suit generally cover a portable data carrier for storing da-
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`ta and managing access to the data via payment information and/or use status rules. The
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`patents-in-suit also generally cover a computer network . . . that serves data and man-
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`ages access to data by, for example, validating payment information.” Ex. 1202 ¶ 17.
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`The ‘317 patent generally describes the invention as follows (Ex. 1201 1:55-63):
`
`According to the present invention there is therefore provided a method
`of providing portable data comprising providing a portable data storage
`device comprising downloaded data storage means and payment vali-
`dation means; providing a terminal for internet access; coupling the
`portable data storage device to the terminal; reading payment infor-
`mation from the payment validation means using the terminal; validat-
`ing the payment information; and downloading data into the portable
`storage device from a data supplier.”
`More specifically, the ’317 patent and claim 18 are directed to a method of
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`
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`providing data to a data requester in response to receiving payment data. Figures 12d and
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`12e describe various steps in this process, including: (a) receiving a request for a data
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`item (S63), (b) receiving payment data from the requestor (S66), (c) reading content
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`from the content provider (S73), (d) transmitting the content to the terminal (S73). Ex.
`
`13
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`

`

` Covered Business Method Patent Review
`United States Patent No. 7,942,317
`
`1201. In addition, Figs. 12d and 12e show that providing data to a data requester may
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`involve (e) transmitting access rules to the requester (S71), (f) reading payment distribution
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`data (S68), and (g) distributing payments according to distribution data (S69). Id. The
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`specification describes that “[p]ayment for the data item or items requested may either be made
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`directly to the system owner or may be made to an e-payment system.” Id. 20:50-54. “E-payment
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`systems [] are coupled to banks” and may be provided in accordance with cash compliant
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`standards such as MONDEX, Proton, and/or Visa. Id. 13:35-46. Thus because claim
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`18 explicitly describes receiving and responding to payment data, as well as outputting payment
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`data, it clearly relates to a financial activity and providing a financial service. See
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`CBM2013-00020, Institution Decision at 9-10 (“the electronic transfer of money is a
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`financial activity, and allowing such a transfer amounts to providing a financial ser-
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`vice.”); CBM2014-00112, Paper 7, at 10 (finding claim 18 of the ’317 Patent satisfies
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`the “financial-in-nature” requirement). See also AIA § 18(d)(1); 37 C.F.R. § 42.301(a).
`
`See also 77 Fed. Reg. at 48,735.
`
`2.
`Further, claim 18 does not cover a “technological invention” within the excep-
`
`Claim 18 Does Not Cover A Technological Invention
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`tion in AIA § 18(d)(1), because it does not claim “subject matter as a whole [that] re-
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`cites a technological feature that is novel and unobvious over the prior art[] and solves a
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`technical problem using a technical solution.” § 42.301(b). To the contrary, the specifica-
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`tion makes clear that, to the extent any hardware is argued to be required to begin
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`14
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`

`

` Covered Business Method Patent Review
`United States Patent No. 7,942,317
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`with, claim 18 does not require any specific hardware at all. The “data requester” is not any
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`particular hardware according to the patent, and may even be an individual who re-
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`quests data. The claimed “data store” and “payment systems” were commonplace
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`and could be implemented using, e.g., well-known industry standards.
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`(a) Claim 18 Does Not Recite A Technological Feature
`That Is Novel and Unobvious
`
`First, no “technological feature” of claim 18 is novel and unobvious. The
`
`PTAB has confirmed that “[m]ere recitation of known technologies, such as comput-
`
`er hardware, communication or computer networks, software, memory, computer-
`
`readable storage medium, scanners, display devices or databases, or specialized ma-
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`chines, such as an ATM or point of sale device,” or “[r]eciting the use of known prior
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`art technology to accomplish a process or method, even if that process or method is
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`novel and non-obvious” will “not typically render a patent a technological invention.”
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`See, e.g., 77 Fed. Reg. 48,764 (Aug. 14, 2012).
`
`As its language makes clear, claim 18 requires no particularized hardware: in-
`
`stead, it simply describes, at most, the idea of providing electronic data in exchange
`
`for payment. The claim involves no “technology” at all other than, at most, the use of a
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`data store and payment system. Ex. 1201. The “data requestor” of claim 8 is not de-
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`scribed as hardware, let alone any particular type of hardware. The data requester is
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`simply described as an entity that may make a data request and to which data is pro-
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`vided. Ex. 1201 6:38-40; 7:52-53; 9:62; 10:16, 25, 36, 44; 12:29-32. The patent also
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`15
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`

` Covered Business Method Patent Review
`United States Patent No. 7,942,317
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`confirms that the “data store” is not any particularized hardware, but rather can be
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`generic memory. See id. 14:25-29; Fig 6 (136 (payment record data store)); 14:43-44.
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`See also, e.g., Ex. 1201 12:29-32 (“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.”). Further, receiving, reading, and outputting
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`payment data was known because e-payment systems were known, as were payment
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`systems. See Ex. 1201 3:35-47. The patent explains that “[e