CBM2015-00028
`Patent 7,334,720 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner,
`
`and
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-000281
`Patent 7,334,720 B2
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, GREGG I.
`ANDERSON, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S NOTICE OF
`SUPPLEMENTAL AUTHORITY
`
`
`1 CBM2015-00125 has been consolidated with this proceeding. All emphasis here-
`
`in added unless noted.
`
`
`Patent 7,334,720 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner,
`
`and
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-000281
`Patent 7,334,720 B2
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, GREGG I.
`ANDERSON, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S NOTICE OF
`SUPPLEMENTAL AUTHORITY
`
`
`1 CBM2015-00125 has been consolidated with this proceeding. All emphasis here-
`
`in added unless noted.
`
`
`
`CBM2015-00028
`Patent 7,334,720 B2
`
`
`By distinguishing the claims there from the type of claims here, BASCOM
`
`supports Petitioner, not PO. In BASCOM the Federal Circuit confirmed that it
`
`would have ruled differently if it had confronted claims to “an abstract-idea-based
`
`solution implemented with generic technical components in a conventional way.”
`
`BASCOM Global Internet Servs. v. AT&T Mobility LLC, No. 2015-1763, 2016 WL
`
`3514158, at *6, *7 (Fed. Cir. June 27, 2016). As established both by the unrebut-
`
`ted evidence here and by this Board’s detailed findings, that quoted phrase de-
`
`scribes PO’s claims. The Board’s Final Written Decision (“FWD”) was correct.
`
`PO has not even tried to rebut Petitioner’s Step 2 evidence that all claimed
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`hardware was conventional, all claimed functions performed by that conventional
`
`hardware were conventional, and there is nothing inventive in the claimed combi-
`
`nations. See, e.g., Reply (Pap. 27 (“Rp”)) 4-6, 11-12; Ex.1219 ¶¶ 87-100. PO also
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`ignores the Board’s findings that “the solution provided by the challenged claim is
`
`not rooted in specific computer technology, but is based on conditioning access to
`
`content based on payment or rules,” and the ’720 “treats as well-known and con-
`
`ventional all potentially technical aspects” of the Claims. FWD (Pap. 44) 16, 12.
`
`That set of evidence and findings defeats PO’s conclusory contention that its
`
`claims “improve[] the functioning of the data access terminal.” PO’s Notice (Pap.
`
`46 (“N”)) 2-3. PO’s claims “merely rely on conventional devices and computer
`
`processes operating in their ‘normal, expected manner.’” FWD 17 (citing OIP
`
`
`
`1
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`
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`CBM2015-00028
`Patent 7,334,720 B2
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`Techs., 788 F.3d at 1363; DDR, 773 F.3d at 1258-59). They “perform[] generic
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`computer functions such as storing, receiving, and extracting data” using “physical
`
`components” that “behave exactly as expected according to their ordinary use” and
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`“merely provide a generic environment in which to carry out the abstract idea.” In
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`re TLI Commc’ns LLC, No. 2015-1372, 2016 WL 2865693, at *3, *4, *7 (Fed. Cir.
`
`May 17, 2016) (ineligible claims “directed to the use of conventional or generic
`
`technology”). PO’s claims thus achieve no “result that overrides the routine and
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`conventional use of the recited devices and functions” and “are ‘specified at a high
`
`level of generality,’ which the Federal Circuit has found to be ‘insufficient to sup-
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`ply an “inventive concept.”’” FWD 16-17 (citing Ultramercial, 772 F.3d at 716).
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`For the same reasons, there is no merit to PO’s new, waived argument that it
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`was “inventive” to combine payment data, content data, and rules on the data carri-
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`er. N2-3. PO’s specification admits: “[t]he physical embodiment of the system is
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`not critical and a skilled person will understand that the terminals, data processing
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`systems and the like can all take a variety of forms.” Ex. 1201 12:38-41. Further,
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`as the Board found, the prior art discloses storing different types of content togeth-
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`er, and combining rules and content on a data carrier does not give rise to an in-
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`ventive concept. See, e.g., FWD 19 (“prior art discloses products, such as electron-
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`ic data, that could store both the content and conditions for providing access”).
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`The Board correctly rejected PO’s actual argued combination of two stored ele-
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`
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`2
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`CBM2015-00028
`Patent 7,334,720 B2
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`ments (FWD 19-20), and the unrebutted evidence here confirms that the combina-
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`tion newly argued by PO here also was conventional before the priority date. See
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`Exs. 1212 at 2:53-55, 4:35-37, 6:22-24; 1213 at 17:20-33, 17:39-42, 17:51-55,
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`24:42-47, 29:58-30:35; 1227 at 16:25-33, 17:17-23, 18:21-33; 1219 ¶¶ 58, 64, 65,
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`66, 96. Similarly, the Federal Circuit has repeatedly held that combining different
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`types of data is not inventive. See, e.g., Digitech Image Techs., LLC v. Elecs. For
`
`Imaging, Inc., 758 F.3d at 1351; Intellectual Ventures I LLC v. Capital One Bank,
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`792 F.3d at 1368; Internet Patents Corp. v. Active Network, Inc., 790 F.3d at 1349;
`
`see also, e.g., Rp5-6.2 In short, PO’s new, waived argument fails for the same rea-
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`sons as its briefed arguments.
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`
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`In contrast to BASCOM’s “limited record” with the owner’s allegations tak-
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`en as true, BASCOM, at *4, *6, *7, here the wealth of unrebutted evidence and
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`caselaw confirms ineligibility, and PO offers no evidentiary or caselaw support to
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`supply the inventive concept that is clearly lacking in the Claims.
`
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`2 Despite PO’s contrary suggestion (N2), its own cited cases confirm preemption is
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`still not the test. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., No. 2015-1570, 2016
`
`WL 3606624, at *7 (Fed. Cir. July 5, 2016); BASCOM, at *8 (Ultramercial’s limi-
`
`tations “narrow[ing] the scope of protection through additional ‘conventional’
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`steps . . . did not make [them] any less abstract”). See Rp2, 14-17; FWD 20-22.
`
`
`
`3
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`
`
`CBM2015-00028
`Patent 7,334,720 B2
`
`Respectfully submitted, by /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`
`
`
`
`
`July 26, 2016
`
`
`
`4
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`
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`CBM2015-00028
`Patent 7,334,720 B2
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PETITIONER’S
`
`RESPONSE TO PATENT OWNER’S NOTICE OF SUPPLEMENTAL
`
`AUTHORITY was served on July 26, 2016, to the following Counsel via e-mail,
`
`pursuant to the parties’ agreement concerning service:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Facsimile: (571) 765-7200
`mcasey@dbjg.com
`jsd@dbjg.com
`docket@dbjg.com
`
`Attorneys for Patent Owner Smartflash, LLC
`
`
`
`Raymond Nimrod
`Andrew Holmes
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`raynimrod@quinnemanuel.com
`QE-SF-PTAB-Service@quinnemanuel.com
`
`Attorneys for Petitioner Google, Inc.
`
` /s/ Lauren N. Robinson
` Lauren N. Robinson
`
`ROPES & GRAY LLP
`
`
`
`5
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