Covered Business Method Patent Review
`United States Patent No. 7,334,720
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Petitioner: Apple Inc.
`
`Attorney Docket No.:
`
` 104677-5008-817
`Customer No. 28120
`
`§
`Inventor: Hulst et al.
`United States Patent No.: 7,334,720 §
`Formerly Application No.: 11/336,758 §
`Issue Date: February 26, 2008
`§
`Filing Date: January 19, 2006
`§
`Former Group Art Unit: 2876
`§
`Former Examiner: Steven S. Paik
`§
`
`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. 7,334,720 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. 7,334,720
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`TABLE OF CONTENTS
`
`INTRODUCTION ....................................................................................................... 1
`I.
`II. OVERVIEW OF FIELD OF THE CLAIMED INVENTION ......................... 6
`III. PETITIONER HAS STANDING ............................................................................ 9
`A.
`The ’720 Patent Is a Covered Business Method Patent ............................... 9
`1.
`Exemplary Claim 2 Is Financial In Nature ...................................... 11
`2.
`Claim 2 Does Not Cover A Technological Invention ................... 13
`(a)
`Claim 2 Does Not Recite A Technological Feature
`That Is Novel and Unobvious ............................................. 13
`Claim 2 Does Not Solve A Technical Problem
`Using A Technical Solution ................................................. 16
`Related Matters and Mandatory Notice Information; Petitioner Is a Real
`Party In Interest Sued for and Charged With Infringement ..................... 18
`IV. DETAILED EXPLANATION OF REASONS FOR RELIEF REQUESTED,
`SHOWING IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE
`CHALLENGED CLAIM IS UNPATENTABLE ............................................... 19
`A.
`Claim Construction .......................................................................................... 21
`B.
`The Challenged Claims Are Unpatentable Under 35 U.S.C. § 101 .......... 25
`1.
`Claims Are Directed To Abstract Ideas ........................................... 26
`2.
`Claims Do Not Disclose An “Inventive Concept” That Is
`“Significantly More” Than An Abstract Idea .................................. 29
`Field Of Use Limitations Cannot Create Patent Eligibility ........... 30
`Generic Computer Implementation Cannot Transform
`Abstract Ideas Into Patent Eligible Inventions ............................... 31
`Functional Nature Confirms Preemption and Ineligibility ............ 35
`5.
`6. Machine-or-Transformation Test Also Confirms Patent
`Ineligibility ............................................................................................. 37
`Challenged Claim 1 Is Unpatentable Under 35 U.S.C. § 103 .................... 38
`C.
`CONCLUSION........................................................................................................... 71
`
`V.
`
`ii
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`
`
`(b)
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`B.
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`3.
`4.
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` Covered Business Method Patent Review
`United States Patent No. 7,334,720
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`EXHIBIT LIST
`1201
`U.S. Patent No. 7,334,720
`
`1202
`
`1203
`
`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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`Plaintiffs’ First Amended Complaint
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`U.S. Patent No. 5,925,127
`
`U.S. Patent No. 5,940,805
`Russell Housley and Jan Dolphin, “Metering: A Pre-pay Technique,”
`Storage and Retrieval for Image and Video Databases V, Conference
`Volume 3022, 527 (January 15, 1997)
`U.S. Patent No. 4,999,806
`
`U.S. Patent No. 5,675,734
`
`U.S. Patent No. 4,878,245
`
`File History for U.S. Patent No. 7,334,720
`
`U.S. Patent No. 7,942,317
`
`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 Application Publication No. WO 99/43136
`
`JP Patent Application Publication No. H11-164058 (translation)
`
`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
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`iii
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`United States Patent No. 7,334,720
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`1221
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`1222
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`EXHIBIT LIST
`1220
`U.S. Patent No. 8,033,458
`Declaration of Michael P. Duffey In Support of Apple Inc.’s Petition
`for Covered Business Method Patent Review
`Declaration of Megan F. Raymond In Support of Apple Inc.’s Peti-
`tion for Covered Business Method Patent Review
`Claim Construction Memorandum Opinion from Smartflash LLC v.
`Apple Inc., No. 6:13-cv-447 (Dkt. 229)
`File History for U.S. Patent No. 8,061,598
`
`1223
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`1224
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`1225
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`1226
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`1227
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`1228
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`1229
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`1230
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`1231
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`1232
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`1233
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`1234
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`1235
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`U.S. Patent No. 4,337,483
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`U.S. Patent No. 7,725,375
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`International Publication No. WO 95/34857
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`JP Patent Application Publication No. H10-269289 (translation)
`
`File History for U.S. Patent No. 7,942,317
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`File History for U.S. Patent No. 8,033,458
`
`U.S. Patent No. 8,061,598
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`U.S. Patent No. 8,118,221
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`File History for U.S. Patent No. 8,118,221
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`U.S. Patent No. 8,336,772
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`File History for U.S. Patent No. 8,336,772
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`1236
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`U.S. Patent No. 5,646,992
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`iv
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`

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` Covered Business Method Patent Review
`United States Patent No. 7,334,720
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`I.
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`INTRODUCTION
`
`Pursuant to § 321 and Rule 42.304, 1 the undersigned, on behalf of and in a
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`representative capacity for, Apple Inc. (“Petitioner”), petitions for review under the
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`transitional program for covered business method patents of claims 1 and 2 (“chal-
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`lenged claims”) of U.S. Pat No. 7,334,720 (“the ’720 Patent” or “720”), issued to
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`Smartflash Limited and currently assigned to Smartflash LLC (“Patentee”). Petitioner
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`asserts it is more likely than not that the challenged claims are unpatentable for the
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`reasons herein and requests review of, and judgment against, claims 1 and 2 as un-
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`patentable under § 101 as claiming unpatentable subject matter, and claim 1 under §
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`103 as obvious.
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`As discussed in Section III.B, infra, Petitioner has concurrently filed a Petition
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`seeking covered business method review, requesting judgment against these same ’720
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`claims based on different art. Petitioner notes that the Director, pursuant to Rule
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`325(c), may determine at the proper time that merger of these proceedings, or at min-
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`imum coordination of proceedings involving the same patent, is appropriate. As also
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`discussed in Section III.B, infra, Petitioner previously filed CBM2014-00104/105 seek-
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`ing review of the ’720 under §§ 102 and 103. Those petitions were not instituted. In
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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 section cites herein are to 35 U.S.C. or 37 C.F.R.,
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`as the context indicates, and all emphasis herein is added unless otherwise noted.
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`United States Patent No. 7,334,720
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`its Decision Denying Institution, the Board construed “use rule,” as “a rule specifying
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`a condition under which access to content is permitted,” id., Pap. 9, at 8, and deter-
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`mined Petitioner had not shown it was more likely than not that it would prevail in
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`demonstrating that Stefik and Poggio, Maari, and/or Sato rendered obvious limita-
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`tions related to “use rules” or “use status data.” Id. Pap. 9, at 13-20. In light of the
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`Board’s decision, Petitioner now identifies additional prior art—Ahmad and Kopp
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`(Exs. 1203, 1204)—with explicit disclosures of the limitations related to “use rules,”
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`as construed by the Board, and “use status data.” Ahmad, for example, which was not
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`known to Petitioner at the time of the original petitions, describes a software rental
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`system that monitors an elapsed time of use recorded by a timer or a number of uses
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`recorded by a counter and does not permit access to the rented software if a software
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`rental license has been exhausted. See, e.g., Ex. 1203 2:62-3:18. Rented software is
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`monitored by a Software Monitor that specifies the time or number of use limits for
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`the rental and monitors usage when programs are launched and continuously as pro-
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`grams are used to determine whether the specified limits allow further use of the pro-
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`gram. See, e.g., id. 13:65-14:8; 14:28-48. The rental usage status is tracked by monitor-
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`ing timers or counters when a user executes the rented program. See, e.g., id. 14:20-23.
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`Kopp, e.g., describes a vending system allowing a user to specify a desired extent of
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`usage, pay for only that amount of usage, and then receive data limited to the pur-
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`chased usage amount. See, e.g., Ex. 1204 2:50-65. The data records provided through
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`2
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`United States Patent No. 7,334,720
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`the vending system are associated with limitations, for example on length of time or
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`number of uses, tied to a purchased data record. See, e.g., id. 5:16-23. After purchase,
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`the user’s device checks recorded data regarding the extent of utilization to determine
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`if the user has purchased use remaining and does not permit the data record to be
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`read if the purchased use has been exhausted. See, e.g., id. 6:41-47. Petitioner has also
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`identified additional disclosures in Stefik concerning these limitations as construed,
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`further confirming a POSA2 would have found it obvious and routine to implement
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`the system disclosed by Stefik using the expressly advantageous teachings of Ahmad,
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`Kopp and/or Maari, detailed in §IV.C, infra. See, e.g., Ex. 1219 ¶¶ 68-74.
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`The challenged claims merely recite steps well-known in the field of data stor-
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`age and access, including use of a “portable data carrier for storing and paying for data
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`and to computer systems for providing access to data to be stored.” E.g., Ex. 1201
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`1:5-8. Independent Claim 1, for example, recites four rudimentary steps relating to da-
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`ta access—(A) receiving a data access request from a user, (B) reading use status da-
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`ta and use rules from memory (C) evaluating data to determine whether access to
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`2 References to a POSA refer to the knowledge or understanding of a person of ordi-
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`nary skill in the art POSA as of October 25, 1999, who would have at least a B.S. in
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`E.E., C.S., or a telecommunications related field, and at least 3 years of industry
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`experience that included client-server data/information distribution and management
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`architectures. See Ex. 1219 ¶¶ 27, 30 n.3.
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`3
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`content is permitted, (D) displaying to a user whether access to the content is per-
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`mitted:
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`1. A method of controlling access to content data on a data carrier, the
`data carrier comprising non-volatile data memory storing content
`memory and non-volatile parameter memory storing use status data and
`use rules, the method comprising:
`receiving a data access request from a user for at least one con-
`tent item of the content data stored in the non-volatile data
`memory;
`reading the use status data and use rules from the parameter
`memory that pertain to use of the at least one requested content
`data item;
`evaluating the use status data using the use rules to determine
`whether access to the at least one requested content item stored in
`the content memory is permitted; and
`displaying to the user whether access is permitted for each of the
`at least one requested content item stored in the non-volatile data
`memory.
`Claim 2 merely adds the concept of storing of payment data, and the step of
`selecting a use rule depending on payment:
`2. A method as claimed in claim 1 wherein said parameter memory
`further stores payment data and further comprising selecting one of
`said use rules dependent upon said payment data.
`Ex. 1201. But at the ‘720’s earliest claimed priority date, these simple elements and
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`their combination were all known to any POSAPOSA. The patent itself acknowledges
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`4
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`United States Patent No. 7,334,720
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`that the idea of providing access to data in exchange for a payment (e.g., purchase of
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`music on a CD) was well known at the time, e.g., id. 5:4-7 (“where the data carrier
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`stores . . . music, the purchase outright option may be equivalent to the purchase of a
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`compact disc (CD)”) and the prior art was teeming with disclosures of this basic concept.
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`Moreover, as its language makes clear, Claim 2 involves no “technology” at all oth-
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`er than “a data carrier” (with memories)— which the patent concedes was well known
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`and entirely commonplace at the time. E.g., id. 3:29, 8:64-66, 11:36-53, 13:46-58, 14:1-
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`2, 17:23-18:23, 18:38, Figs. 2, 9. Thus, as the intrinsic record reflects, Claims 1 and 2
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`recite nothing more than a method for restricting access to data based on rules, in-
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`cluding rules dependent upon payment data. E.g., id. 12:38-41 (“The physical embod-
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`iment of the system is not critical and a skilled person will understand that the termi-
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`nals, data processing systems and the like can all take a variety of forms.”); Fig. 4b.
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`Indeed, as confirmed by Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347
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`(2014)—decided after Petitioner’s original challenges to the ’720 were filed—the chal-
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`lenged claims are also directed to patent-ineligible subject matter under § 101. As the
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`Board noted in its previous Institution Decision, “the ’720 patent makes clear that the
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`asserted novelty of the invention is not in any specific improvement of software or
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`hardware, but in the method of controlling access to data,” CBM2014-00104, Pap. 9, at 12,
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`and the challenged claims are directed to nothing more than the unpatentable abstract
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`idea of paying for and controlling access to data, with at most the addition of well-
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`5
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`known, routine and conventional features—in particular, generic computer implemen-
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`tation that cannot confer patentability on these patent-ineligible abstractions. E.g., Al-
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`ice, 134 S. Ct. at 2359-60. Each challenged claim recites ineligible subject matter, and is
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`also obvious, thus, each is unpatentable.
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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 POSA, and their combination as
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`claimed also would have been well-known or at minimum obvious POSA. See, e.g., Ex.
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`1219 § V. In March, 1991, for example, U.S. Pat. No. 4,999,806, issued disclosing a
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`system and method for the sale and distribution of digital products (e.g., software) by
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`phone, and for content protection. See, e.g., Ex. 1206 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.”); 1:67-2:9 (describing “means for selling and distributing protected software using
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`standard telephone lines” and “permit[ting] the purchaser to rent the protected software for a specific
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`number of runs”). Ex. 1206 thus discloses making different types of access available, e.g.
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`as purchase vs. rental, a Control Transfer Program and a Primary Protection Program
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`that ensure the computer receiving a downloaded program does not have another
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`program present that could create unauthorized copies. See id. Abstract; 2:65-3:23. See
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`also Ex. 1219 ¶ 32.
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`6
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`In April 1992, U.S. Pat. No. 5,103,392, issued, disclosing use-based charging
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`for digital products, including “_
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`user-specific credit data storage means for storing data identifying the us-
`er … and indicating credit for payment capacity, use time length, or the like of the
`user,” as well as [1] use decision means for determining permission to use the
`program … on the basis of program-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[, and [2]] program
`use history storage means connected to the use decision means for storing pro-
`gram use history data . . ..”
`See, e.g. Ex 1211 1:64-2:17. Ex. 1211 emphasis on assuring permission to access a
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`program and compensation to providers for use underscores the art’s focus on digital
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`rights management (“DRM”), over eight years before Smartflash’s claimed October
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`25, 1999 priority date. See also Ex. 1219 ¶ 35.
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`Also in 1997, Exhibit 1218 (“von Faber”) observed that “[e]lectronic commerce sys-
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`tems dealing with the distribution of digital contents like software or multimedia data
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`have to couple the use of the provided digital goods with a prior payment for the goods in a way
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`which cannot be bypassed,” proposing a system where customers purchase keys to
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`utilize distributed encrypted content. E.g., id. 7 (a “solution is to distribute the contents in
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`encrypted form, and to have the customer pay for the key which he needs to transform the encrypted
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`content in an usable form.”), 8 (“The Content Provider provides digital contents in encrypted
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`7
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`form being distributed by the Content Distributor . . . The Authorisation System permits the dis-
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` Covered Business Method Patent Review
`United States Patent No. 7,334,720
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`tribution of the appropriate key after settling of the fees payable by the Customer, who will enjoy
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`the decrypted digital contents.”), Fig. 1. Von Faber states its system could be used for
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`a variety of known distribution and payment methods, and further addressed the
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`known issue of payment distribution to content providers. See, e.g., id. 13 (“Different
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`methods can be used to distribute the encrypted contents (standard techniques) . . . Different elec-
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`tronic payment methods can be integrated . . . This flexibility leads to the fact that totally different
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`authorisation methods can be integrated.”; “The system automatically divides the package price
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`(payments) and guarantees that the money is transferred to each Content Provider.”). See also Ex.
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`1219 ¶¶ 37-39.
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`And U.S. Pat. No. 5,915,019 (“Ginter,”), issued in June, 1999, disclosing “sys-
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`tems and methods for secure transaction management and electronic rights protec-
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`tion.” See, e.g., Ex. 1214 Abstract. Ginter’s system helps ensure that information is ac-
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`cessed and used only in authorized ways, and maintain the integrity, availability, and/or confiden-
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`tiality of the information,” and discloses that “[a]ll participants … have the innate abil-
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`ity to participate in any role,” e.g., id. 255:22-43 highlighting the known flexibility in
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`such distribution systems, underscoring that combinations between and among dis-
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`closures of such systems would have been obvious to a POSA. See also, e.g., Ex. 1219
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`¶¶ 40-41.
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`Content storage and utilization on portable devices, including mobile commu-
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`nication devices such as cellular phones, was also well-known Ex. 1216 (pub’d Aug.
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`26, 1999) describes a cell phone for storing and accessing digital content. See, e.g., id.
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`3:7-13 (“Because of its integration into the cellular phone, the digital entertainment module can
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`share components already present in the cellular phone. [T]he use of solid state RAM or ROM, as
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`opposed to disc storage, eliminates the need for bounce control circuitry. This enables
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`the disclosed invention to provide cellular communications and entertainment during leisure activi-
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`ties.”). And Exhibit 1217, “Portable Music Selection and Viewing System,” (pub’d
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`June 18, 1999), discloses storing and playing media on mobile devices, e.g., using a re-
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`movable IC card. See, e.g., Ex. 1217 ¶ 9 (“portable music selection viewing device 70
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`provides a removable storage device 76 [which] is a memory card similar to, for example… an
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`IC card [T]he user can store the music software from another audio unit into the storage device 76
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`and enjoy music by inserting this storage unit 76 into this portable … device 70.”); ¶
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`13 (“music storage medium 250 such as a magnetic card, magnetic tape, a CD, a DVD,
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`or a memory card such as an IC card stores the music software”). See also Ex. 1219 ¶¶
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`42-43.
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`As these and the additional examples in § IV.C illustrate, the prior art was rife
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`with awareness and discussion of the same supposed “invention” memorialized in the
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`‘’720’s challenged claims.
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`III. PETITIONER HAS STANDING
`A.
`
`The ’720 Patent Is a Covered Business Method Patent
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`The ’720 Patent a “covered business method patent” under § 18(d)(1) of the
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`AIA, and Petitioner certifies it is available for review under § 42.304(a). Although nu-
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`merous claims qualify, a patent with even one claim covering a covered business
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`method is considered a CBM patent. See CBM 2012-00001, Doc. 36 at 26; 77 Fed. Reg.
`
`48,709 (Aug. 14, 2012). The Board previously found claim 14 of the ’720 patent satis-
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`fied the CBM standing requirement. CBM2014-00104, Pap. 8, 8-13. Petitioner addi-
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`tionally addresses exemplary claim 2:
`
`1. A method of controlling access to content data on a data carrier, the
`data carrier comprising non-volatile data memory storing content
`memory and non-volatile parameter memory storing use status data and
`use rules, the method comprising:
`receiving a data access request from a user for at least one content
`item of the content data stored in the non-volatile data memory;
`reading the use status data and use rules from the parameter
`memory that pertain to use of the at least one requested content
`data item;
`evaluating the use status data using the use rules to determine
`whether access to the at least one requested content item stored in
`the content memory is permitted; and
`displaying to the user whether access is permitted for each of the
`at least one requested content item stored in the non-volatile data
`memory.
`2. A method as claimed in claim 1 wherein said parameter memory fur-
`ther stores payment data and further comprising selecting one of said use
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`rules dependent upon said payment data.
`1.
`Exemplary Claim 2 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-
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`mentary to a financial activity.” 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012) (citing 157
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`Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)). “[F]inancial
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`product or service” is to be interpreted broadly, id., and “financial . . . simply means
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`relating to monetary matters”—it does not require any link to traditional financial in-
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`dustries such as banks. See, e.g., CBM2012-00001, Pap. 36 at 23.
`
`The ’720 Patent relates to the idea of restricting access to data, including re-
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`stricting access based on payment. See AIA § 18(d)(1); 37 C.F.R. § 42.301(a); Ex. 1201
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`1:64-2:3. Indeed, in asserting the patent, Smartflash conceded the alleged invention
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`relates to a financial activity or transaction, stating that “[t]he patents-in-suit generally
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`cover a portable data carrier for storing data and managing access to the data via pay-
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`ment information and/or use status rules. The patents-in-suit also generally cover a
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`computer network . . . that serves data and manages access to data by, for example,
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`validating payment information.” Ex. 1202.
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`The ’720 Patent emphasizes payment in describing the claimed invention:
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`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.
`Ex. 1201 1:46-55. See also id. 1:56-57 (“Another aspect of the invention provides a cor-
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`responding mobile data retrieval device…”). Indeed, the specification confirms that
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`the “data carrier” of the invention is “for storing and paying for data,” id. 1:6-8, and
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`the “payment data” “may either be data relating to an actual payment made to the data sup-
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`plier, or it may be a record of a payment made to an e-payment system.” Id. 6:59-63. “Payment
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`for the data item or items requested may either be made directly to the system owner
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`or may be made to an e-payment system.” Id. 21:6-8. “E-payment systems [] are coupled
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`to banks” and may be provided in accordance with cash compliant standards such as
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`MONDEX, Proton, and/or Visa. Id. 13:46-58. And
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`Claim 2 explicitly describes storing payment data as well as restricting access to
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`content based on payment, and therefore clearly relates to a financial activity and
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`providing a financial service. See CBM2013-00020, Pap. 14 at 9-10 (“the electronic
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`transfer of money is a financial activity, and allowing such a transfer amounts to
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`12
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`United States Patent No. 7,334,720
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`providing a financial service.”). See also AIA § 18(d)(1); 37 C.F.R. § 42.301(a). See also
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`77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012) (“[T]he definition of [CBM] was drafted
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`to encompass patents ‘claiming activities that are financial in nature, incidental to a financial
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`activity or complementary to a financial activity.’”) (citation omitted).3
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`2.
`Further, claim 2 is not a “technological invention” that would trigger the excep-
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`Claim 2 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 patent makes
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`clear that its claimed “data carrier” (including “memory”) was commonplace.
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`(a) Claim 2 Does Not Recite A Technological Feature
`That Is Novel and Unobvious
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`First, no “technological feature” of claim 2 is novel and unobvious. The PTO
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`confirmed that “[m]ere recitation of known technologies, such as computer hardware,
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`communication or computer networks, software, memory, computer-readable storage
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`medium, scanners, display devices or databases, or specialized machines, such as an
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`3 Claim 14, which requires, inter alia, “reading payment data,” “forwarding payment
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`data,” and an “access rule specifying at last one condition . . . being dependent upon
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`the amount of payment associated with the payment data forwarded to the payment
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`validation system,” is similarly financial in nature. See CBM2014-00104, Pap. 8, 8-13.
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`United States Patent No. 7,334,720
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`ATM or point of sale device,” or “[r]eciting the use of known prior art technology to
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`accomplish a process or method, even if that process or method is novel and non-
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`obvious” will “not typically render a patent a technological invention.” E.g., 77 Fed.
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`Reg. 48,756 48,764 (Aug. 14, 2012). As its language makes clear, claim 2 requires no
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`particularized hardware, but instead simply relates to the idea of providing electronic
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`data in exchange for payment and restricting access based on the amount of payment.
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`The claim involves no “technology” at all other than, at most, use of a data carrier, a
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`payment validation system, and a data supplier. Ex. 1201. The patent confirms this
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`data carrier is in no way novel or unobvious, explaining it may be¸ inter alia, based on a
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`“standard smart card” (id. 11:37-38), an “electronic memory card” (id. 3:29), or a so-
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`called “smart Flash card,” (id. 17:25), all commonplace at the time, see id. 11:37-38;
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`14:1-2. Indeed, the ‘720 explains a smart Flash card is “an IC card . . . incorporating a
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`processor and Flash data memory, preferably of large capacity” (id. 17:25-28), and in-
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`corporates by reference, for additional details, the ISO series of standards. Id. 17:28-
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`33; see also Figs. 2, 9; 11:36-53; 17:34-18:23.4
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`4 Claim 14 similarly requires no technology at all other than, at most, a data carrier,
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`payment validation system, and data supplier. Payment validation systems were also
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`well-known. See Ex. 1201 13:57-61. The patent explains that “[t]he payment validation
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`system may be part of the data supplier’s computer systems or it may be a separate e-
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`payment system.” Id. 8:64-66. “E-payment systems are coupled to banks . . . These provide
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`14
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`United States Patent No. 7,334,720
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`Further, the idea of providing access to data in exchange for a payment, as
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`claimed, was known. See, e.g., id. 5:4-7 (“Thus where the data carrier stores, for exam-
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`ple, music, the purchase outright option may be equivalent to the purchase of a compact disc
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`(CD)”). See also, e.g., Ex. 1207; Ex. 1206 Abstract, 1:67-2:9; Ex. 1208 Abstract, 4:27-35.
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`The 720’s alleged invention merely combines a known payment validation system with
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`the known ability to download data and restrict access to the data based on that pay-
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`ment. But “combining prior art structures to achieve a normal, expected, or predicta-
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`ble result of that combination” does not “render a patent a technological invention.”
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`77 Fed. Reg. 48755 (Aug. 14, 2012) at 48764. Access rules, and restricting access to
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`downloaded data based on the amount of payment was also known. E.g., Ex. 1214
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`an e-payment system according to, for example, MONDEX, Proton, and/or Visa cash
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`compliant standards . . .” Id. 13:46-58. The “data supplier” of the claims is not a techno-
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`logical component, and does not require any specific hardware. See Ex. 1201 6:14-16;
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`6:56-58. Rather, it is simply a supplier of online data. Id. 5:64-65. See also id. 6:56-58
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`(“The computer system is operated by a data supplier or a data supplier ‘system owner’ for
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`providing content data to the data carrier.”); 8:13-15. The patent states that the physi-
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`cal embodiment of the system, including data providers/suppliers, is not critical. Ex.
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`1201 12:11-13, 38-41; Fig. 4(b). Data suppliers were well known long before the
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`claimed priority date. See id. 1:26-41. See CBM2014-00104, Pap. 8, 8-13 (finding claim
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`14 to satisfy CBM standing requirement).
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`15
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`186:15-24; 172:32-35; 264:62-265:16; 128:23-36; Ex. 1215 7:14-16; 10:25-28.5
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` Covered Business Method Patent Review
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`The state of the art at the time, and the detailed prior art analysis provided be-
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`low, further reflects claim 2 does not recite a technological feature that is novel and
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`nonobvious. See, e.g., Section II, supra; Section IV.C, infra. Claim 2 concerns nothing
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`more than a non-technical idea of selling data in exchange for payment and restricting
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`access to that data depending on payment. Even apart from its other failures to trigger
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`the statutory exception, for these reasons alone claim 2 would not be techn