`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE, INC.
`
`Petitioner
`
`v.
`
`SMARTFLASH LLC
`
`Patent Owner
`
`____________
`
`Case CBM2014-00105
`
`Patent 7,334,720
`
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Smartflash - Exhibit 2043
`Apple v. Smartflash
`CBM2015-00029
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`PATENT OWNER’S LIST OF EXHIBITS ............................................................ iii
`
`I.
`
`II.
`
` OVERVIEW OF U.S. PATENT NO. 7,334,720 ............................................ 1
`
` THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`FINANCIAL PRODUCT OR SERVICE ........................................................ 3
`
`
`III. THE CHALLENGED CLAIMS OF THE ‘720 PATENT ARE
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW ...... 8
`
`
`IV. THE MULTIPLE PETITIONS AGAINST THE ‘720 PATENT SHOULD
`BE TREATED AS A SINGLE PETITION HAVING A LENGTH IN
`VIOLATION OF 37 CFR 42.24(a)(iii) ......................................................... 11
`
`
`V.
`
` GINTER DOES NOT ANTICIPATE CLAM 1 AND NEITHER GINTER
`ALONE NOR GINTER IN COMBINATION WITH ANY OF THE CITED
`REFERENCES RENDERS OBVIOUS THE CHALLENGED CLAIMS OF
`THE PETITION ............................................................................................. 13
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`
`Anticipation of Claim 1 by Ginter ..................................................... 13
`
`Obviousness of Claims 1, 3, 11, and 13-15 in Light of Ginter .......... 14
`
`Obviousness of Claim 1 in Light of Ginter and Maari ...................... 15
`
`Obviousness in Light of Ginter and Stefik ........................................ 15
`
`Obviousness in light of Ginter and Sato ............................................ 18
`
`
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`- i -
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`
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`F.
`
`G.
`
`Obviousness in light of Ginter and Poggio ........................................ 18
`
`Obviousness in light of Ginter, Poggio and Stefik ............................ 20
`
`
`VI. WECHSELBERGER’S DECLARATION SHOULD NOT BE
`CONSIDERED .............................................................................................. 20
`
`
`VII. CONCLUSION .............................................................................................. 23
`
`
`
`
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`- ii -
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`PATENT OWNER’S LIST OF EXHIBITS
`
`
`
`Exhibit Number
`
`Exhibit Description
`
`Congressional Record - House, June 23, 2011, H4480-4505
`
`Congressional Record - Senate, Sep. 8, 2011, H5402-5443
`
`2001
`
`2002
`
`
`
`
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`- iii -
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`
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`Patent Owner sets forth below, in its Preliminary Response, why no Covered
`
`Business Method (CBM) review should be instituted for the patent-at-issue.
`
`Arguments presented herein are presented without prejudice to presenting
`
`additional arguments in a later response should the PTAB institute a CBM review.
`
`
`
`I.
`
`OVERVIEW OF U.S. PATENT NO. 7,334,720
`
`Although the claims define the actual scope of coverage of the patent, as
`
`described in the first paragraph of the BACKGROUND OF THE INVENTION,
`
`the patent-at-issue, U.S. Patent No. 7,334,720 (hereinafter “the ‘720 patent”)
`
`generally describes “data storage and access systems ... [and] is particularly useful
`
`for managing stored audio and video data, but may also be applied to storage and
`
`access of text and software, including games, as well as other types of data.” Col.
`
`1, lines 6-14.
`
`Preferred embodiments described in the first paragraph of col. 16 illustrate
`
`this further: “FIG. 7 ... shows a variety of content access terminals for accessing
`
`data supply computer system 120 over internet 142. The terminals are provided
`
`with an interface to a portable data carrier or ‘smart Flash card’ (SFC) as generally
`
`described with reference to FIG. 2 and as described in more detail below. In most
`
`embodiments of the terminal the SFC interface allows the smart Flash card data
`
`carrier to be inserted into and removed from the terminal, but in some
`
`
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`- 1 -
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`
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`embodiments the data carrier may be integral with the terminal.” Exemplary
`
`terminals include, but are not limited to, set-top boxes 154, CD/DVD Players 170
`
`and mobile communications devices 152. Col. 16, lines 19-33.
`
`Referring to preferred embodiments, the ‘720 patent discloses that a data
`
`supply system may provide users with a seamless purchase and content delivery
`
`experience. Col. 24, lines 25-30. Users are able to purchase content from a variety
`
`of different content providers even if they do not know where the content providers
`
`are located or how the content is delivered. See id. The exemplary system is
`
`operated by a “content data supply ‘system owner,’” who may act as an
`
`intermediary between a user seeking to purchase content and content providers,
`
`such as record labels, movie studios, and software providers. See col. 14, lines 5-
`
`13. When a user accesses the system, he or she is able to select content to purchase
`
`or rent from a variety of different content providers. See col. 4, line 59 - col. 5, line
`
`3. If the user finds a content item to buy, his or her device will transmit stored
`
`“payment data” to a “payment validation system” to validate the payment data. See
`
`col. 8, lines 4-7. The payment validation system returns proof that the payment
`
`data has been validated, in the form of “payment validation data,” and the user is
`
`able to retrieve the purchased content from the content provider. See col. 8, lines
`
`7-9.
`
`
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`- 2 -
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`II.
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`
`FINANCIAL PRODUCT OR SERVICE
`
`Petitioner has cited claim 14 as being the “exemplary” basis for requesting
`
`that a covered business method review be instituted. Corrected Petition
`
`(hereinafter “Petition”) at 13. While Petitioner cites claim 14 as being
`
`“exemplary,” and states on page 3 that “the other challenged claims are nothing but
`
`variations on this same simple and well-known theme,” the Petition does not set
`
`forth any analysis to show why, if claim 14 is not a basis for review, any of the
`
`other challenged claims (i.e., claims 1, 3, 11, 13 and 15) would instead meet the
`
`statutory requirements for instituting a review. Furthermore, since claim 14 does
`
`not, in fact, meet the requirements for instituting a review, the Petition should be
`
`denied.
`
`As set forth in 37 CFR 42.301(a), to be eligible for CBM review, claim 14
`
`must be found to be claiming “a method or corresponding apparatus for performing
`
`data processing or other operations used in the practice, administration, or
`
`management of a financial product or service.” In the publication of the Final
`
`Rules for “Transitional Program for Covered Business Method Patents -
`
`Definitions of Covered Business Method Patent and Technological Invention,” the
`
`PTO stated:
`
`
`
`- 3 -
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`
`
`The definition set forth in § 42.301(a) for covered business
`method patent adopts the definition for covered business method
`patent provided in section 18(d)(1) of the AIA. In administering the
`program, the Office will consider the legislative intent and history
`behind the public law definition and the transitional program itself.
`For example, the legislative history explains that the definition of
`covered business method patent was drafted to encompass patents
`“claiming activities that are financial in nature, incidental to a
`financial activity or complementary to a financial activity.” 157
`CONG. REC. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
`Schumer). This remark tends to support the notion that “financial
`product or service” should be interpreted broadly.
`
`
`Regardless of this explanation, it is improper for this tribunal to rely on the
`
`legislative history of the AIA to determine the specific issue before it, i.e., whether
`
`trial should be instituted on the present petition. The Supreme Court has “stated
`
`time and again that courts must presume that a legislature says in a statute what it
`
`means and means in a statute what it says. When the words of a statute are
`
`unambiguous, then, this first canon of construction is also the last: judicial inquiry
`
`is complete.” Connecticut Nat’l Bank v. Germain, 503 U.S. 249, 253–54 (1992).
`
`“[W]hen the language of the statute is plain, legislative history is irrelevant.”
`
`Zedner v. United States, 547 U.S. 489, 510–11 (2006) (Scalia, J., concurring-in-
`
`part). This long standing rule is based on the constitutional limitation that
`
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`- 4 -
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`legislators cannot achieve through floor statements what “they were unable to
`
`achieve through the statutory text.” Exxon Mobil Corp. v. Allapattah Servs., Inc.,
`
`545 U.S. 546, 568 (2005). Because Section 18 is unambiguously limited to
`
`“financial product[s] and service[s],” there is no reason to look to the statements of
`
`a single Senator to re-tool text that was approved by both houses of Congress and
`
`signed by the President.
`
`Moreover, the PTO’s synopsis of the legislative history is an improper
`
`oversimplification and does not address that “financial product or service” was
`
`intended to be interpreted narrowly. In fact, when the House of Representatives
`
`debated Congressman Schock’s Amendment to remove Section 18 in its entirety
`
`from the America Invents Act, several members of Congress discussed their
`
`understanding of that narrower interpretation. For example, Mr. Schock himself
`
`discussed at the beginning of his remarks that “Section 18 carves out a niche of
`
`business method patents covering technology used specifically in the financial
`
`industry and would create a special class of patents in the financial services field
`
`subject to their own distinctive post-grant administrative review.” (Exhibit 2001,
`
`Congressional Record - House, June 23, 2011, H4496.) (Emphasis added.)
`
`Similarly, Congressman Shuster expressly discussed his understanding of
`
`the narrow interpretation of the legislation. He stated:
`
`
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`- 5 -
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`
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`Mr. Chair, I would like to place in the record my understanding
`that the definition of ‘‘covered business method patent,’’ Section
`18(d)(1) of H.R. 1249, the America Invents Act, is intended to be
`narrowly construed to target only those business method patents that
`are unique to the financial services industry in the sense that they are
`patents which only a financial services provider would use to
`furnish a financial product or service. The example that I have been
`given is a patent relating to electronic check scanning, which is the
`type of invention that only the financial services industry would
`utilize as a means of providing improved or more efficient banking
`services. In contrast, Section 18 would not encompass a patent that
`can be used in other industries, but which a financial services
`provider might also use. Lastly, it is also my understanding from
`discussions with the Committee that Section 18 is targeted only
`towards patents for non-technological inventions.
`
`
`
`Id. at H4497. (Emphasis added.) It was based on that understanding that
`
`Congressman Shuster then voted to keep Section 18 in the bill. (See Id. at H4503.)
`
`
`
`Likewise, Congresswoman Waters discussed that Section 18 was directed to
`
`cost savings measures in the banking industry when she stated “too-big-to-fail
`
`banks ... are now coming to Congress in hopes that [Congress] will help them steal
`
`a specific type of innovation and legislatively take other financial services-related
`
`business method patents referenced in H.R. 1249, section 18. ... Financial
`
`services-related business method patents have saved financial services companies
`
`
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`- 6 -
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`
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`billions of dollars.” Id. at H4496. See also Exhibit 2002, 157 Cong. Rec. S5428
`
`(Rep. Pryor) (“It is of crucial importance to me that we clarify the intent of the
`
`[AIA § 18] process and implement it as narrowly as possible.”)
`
`In contrast to the banking or other financial products or services patents,
`
`claim 14 recites:
`
`14. A method of providing data from a data supplier to a data
`
`carrier, the method comprising:
`
`reading payment data from the data carrier;
`
`forwarding the payment data to a payment validation system;
`
`retrieving data from the data supplier;
`
`writing the retrieved data into the data carrier;
`
`receiving at least one access rule from the data supplier; and
`
`writing the at least one access rule into the data carrier,
`
`the at least one access rule specifying at least one condition for
`
`accessing the retrieved data written into the data carrier,
`
`the at least one condition being dependent upon the amount of
`
`payment associated with the payment data forwarded to the payment
`
`validation system.
`
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`- 7 -
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`Thus, the main thrust of claim 14 is providing data and at least one access
`
`rule retrieved from a data supplier to a data carrier, as one would do, for example,
`
`when loading software, music or a video onto a data carrier for later use and/or
`
`playback according to the stored access rule. Further, rather than recite the
`
`“practice, administration, or management of a financial product or service,” claim
`
`14 actually omits the specifics of how payment is made and focuses on technical
`
`steps that take place with respect to the data and the at least one access rule on the
`
`data carrier. Claim 14, therefore, does not recite a “financial product or service”
`
`when that phrase is properly construed, both under its plain meaning and in light of
`
`the legislative history showing Congress’ intent of the narrow meaning of that
`
`phrase.
`
`
`
`III. THE CHALLENGED CLAIMS OF THE ‘720 PATENT ARE
`
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW
`
`As set forth in 37 CFR 42.301(a), even if claim 14 were considered to be
`
`claiming “a method or corresponding apparatus for performing data processing or
`
`other operations used in the practice, administration, or management of a financial
`
`product or service,” Petitioner must show that claim 14 does not meet the
`
`exception of being directed to a technological invention. Section 42.301(b) sets
`
`forth that a claim is directed to a technological invention (and therefore not the
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`- 8 -
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`basis for instituting a CBM review) if “the claimed subject matter as a whole
`
`recites a technological feature that is novel and unobvious over the prior art; and
`
`solves a technical problem using a technical solution.”
`
`Claim 14, as a whole, recites at least one technological feature that is novel
`
`and unobvious over the prior art and solves a technical problem using a technical
`
`solution. Among others, a technological problem solved by the method of claim
`
`14 is controlling access, according to access rules, to data (retrieved from a data
`
`supplier) stored on the data carrier. As described in the second paragraph of the
`
`Background of the Invention in col. 1, “One problem associated with the
`
`increasingly wide use of the internet is the growing prevalence of so-called data
`
`pirates. Such pirates obtain data either by unauthorized or legitimate means and
`
`then make this data available essentially world-wide over the internet without
`
`authorization. Data can be a very valuable commodity, but once it has been
`
`published on the internet it is difficult to police access to and use of it by internet
`
`users who may not even realize that it is pirated.”
`
`Moreover, claim 14 utilizes technical solutions to address the technical
`
`problem of data piracy. The solutions include at least (1) a data carrier from which
`
`payment data is read and to which retrieved data from a data supplier is written and
`
`(2) at least one access rule, also stored on the data carrier, specifying at least one
`
`condition for accessing the retrieved data written into the data carrier. As
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`- 9 -
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`
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`described in the Abstract, a portable data carrier may include “content use rules for
`
`controlling access to the stored content.” Id. Petitioner, in fact, admits the
`
`technological nature of the data carrier when it states on page 3 “Claim 14 involves
`
`no ‘technology at all’ other than ‘a payment validation system’ and ‘a data
`
`carrier.’” Petition at 3. (Emphasis added.) Thus, the technical solutions of claim
`
`14 exempt the ‘720 patent from CBM review.
`
`Section III.A. of the Petition also does not allege, much less prove, that
`
`reading payment data from the data carrier, writing the retrieved data from the
`
`data supplier into the data carrier, and writing the at least one access rule into the
`
`data carrier were known at the time of the invention of the patent-at-issue. Thus,
`
`as previously held in Epsilon Data Management, LLC et al. v. RPOST Comm. Ltd.,
`
`CBM2014-00017, paper 21, page 8, any analysis in any other portion of the
`
`Petition (other than the portion relating to whether CBM review is proper) need not
`
`be considered in determining that the Petitioner has not met its burden of proving
`
`that the claim at issue is a covered business method patent. Id. (“In addition,
`
`although Patent Owner addresses the analysis in the Declaration of [Petitioner’s
`
`Declarant] (id. at 19), which Petitioner submitted with the Petition, this analysis
`
`was not included in the relevant portion of the Petition (Pet. 2-6), and need not be
`
`considered in determining that the ... Patent[-at-issue] is a covered business method
`
`
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`- 10 -
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`
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`patent.”) Thus, Petitioner has not proven that the claims of the ‘720 patent are not
`
`directed to technological inventions exempt from CBM review.
`
`
`
`IV. THE MULTIPLE PETITIONS AGAINST THE ‘720 PATENT SHOULD
`
`BE TREATED AS A SINGLE PETITION HAVING A LENGTH IN
`
`VIOLATION OF 37 CFR 42.24(a)(iii)
`
`The Petition under consideration (in CBM2014-00105) is one of two 80-
`
`page Petitions filed by Petitioner on the same day against the same patent (i.e., the
`
`‘720 patent). (The second Petition was filed in CBM2014-00104.) Both Petitions
`
`include a substantial amount of overlap and are at least directed to the issues of
`
`rejections in light of alleged prior art including the obviousness of claims in the
`
`‘720 patent. However, instead of filing a single Petition addressing all the prior art
`
`issues within the page limits set by the PTAB, Petitioner seeks to circumvent the
`
`page limits of 37 CFR 42.24(a)(1)(iii) by filing two separate but overlapping
`
`Petitions.
`
`The PTAB has previously allowed the same Petitioner to file multiple CBMs
`
`against a single patent (see CBM2013-00019 and CBM2013-00020 for U.S. Patent
`
`No. 5,191,573, and CBM2013-00021 and CBM2013-00023 for U.S. Patent No.
`
`5,966,440). However, those cases are distinguishable at least in that one Petition
`
`for each patent (CBM2013-0020 and CBM2013-00023) raised prior art issues and
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`- 11 -
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`the other Petition for each patent (CBM2013-0019 and CBM2013-00021) raised
`
`non-prior art issues.
`
`If the Petitioner was unable to file its Petition within the page limits set forth
`
`by 37 CFR 42.24(a)(1), then the Petitioner was free to file a motion to waive the
`
`page limits. Section 42.24(a)(2) specifically sets forth that “Petitions to institute a
`
`trial must comply with the stated page limits but may be accompanied by a motion
`
`to waive the page limits. The Petitioner must show in the motion how a waiver of
`
`the page limits is in the interests of justice and must append a copy of the proposed
`
`petition exceeding the page limit to the motion. If the motion is not granted, the
`
`proposed petition exceeding the page limit may be expunged or returned.”
`
`However, the Petitioner here instead effectively sought to grant its own motion by
`
`filing two allegedly separate petitions, each within the 80-page limit and without
`
`showing “how a waiver of the page limits is in the interests of justice.” Clearly, if
`
`there is no requirement for the Petitioner to file its allegations of invalidity over
`
`alleged prior art in a single Petition meeting the page limits set forth by the PTAB,
`
`the requirements of Section 42.24(a)(2) are meaningless. Moreover, allowing
`
`more than one CBM request on the same issue for the same patent would invite an
`
`unending stream of Petitions filed by Petitioners in an effort to drown the Patent
`
`Owner’s patents in administrative proceedings before the PTAB. Thus,
`
`Petitioner’s two Petitions in CBM2014-00104 and -00105 should be treated as a
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`- 12 -
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`single Petition beyond the page limits set forth by 37 CFR 42.24(a)(1) and each
`
`should be denied on that basis alone.
`
`
`
`V. GINTER DOES NOT ANTICIPATE CLAM 1 AND NEITHER GINTER
`
`ALONE NOR GINTER IN COMBINATION WITH ANY OF THE CITED
`
`REFERENCES RENDERS OBVIOUS THE CHALLENGED CLAIMS OF
`
`THE PETITION
`
`Without prejudice to Patent Owner’s right to argue additional reasons that
`
`the applied references do not anticipate and/or render obvious the claims of the
`
`Petition, and in light of the fact that no CBM review should be instituted for the
`
`‘720 patent, Patent Owner briefly addresses the alleged grounds set forth in the
`
`Petition.
`
`
`
`A. Anticipation of Claim 1 by Ginter
`
`The Petition alleges that Ginter (i.e., U.S. Patent No. 5,915,019) anticipates
`
`claim 1 of the ‘720 patent. Petition at 45. However, the Petition does not show
`
`that Ginter discloses “use status data and use rules” or that the “use status data and
`
`use rules” are stored in the non-volatile parameter memory such that Ginter
`
`discloses “a data carrier ... comprising ... non-volatile parameter memory storing
`
`use status data and use rules” such that “the use status data and use rules [are read]
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`- 13 -
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`from the parameter memory that pertain to use of the at least one requested content
`
`item” and “the use status data [are evaluated] using the use rules to determine
`
`whether access to the at least one requested content item stored in the content
`
`memory is permitted.” In fact, as seen on pages 51-52, the Petition cites to billing
`
`information for metering rather than determining whether access is permitted.
`
`Thus, for at least this reason claim 1 is not anticipated.
`
`
`
`
`
`B. Obviousness of Claims 1, 3, 11, and 13-15 in Light of Ginter
`
`Petitioner further alleges that Ginter renders obvious claims 1, 3, 11, and 13-
`
`15 without providing evidence that one of ordinary skill in the art would have
`
`modified Ginter in a way that would have rendered obvious the claims. In fact, the
`
`Petition fails to show why one of ordinary skill in the art, looking at Ginter alone
`
`(including its 146 sheets of drawings and 319 columns of specification), would
`
`have believed that there was a problem in Ginter to be solved such that Ginter
`
`needed to be modified. ‘‘‘[R]ejections on obviousness cannot be sustained by
`
`mere conclusory statements; instead, there must be some articulated reasoning with
`
`some rational underpinning to support the legal conclusion of obviousness.’” KSR
`
`Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
`
`977, 988 (Fed. Cir. 2006)). Thus, the Petition fails to establish that any of the
`
`challenged claims of the patent-at-issue are obvious in light of Ginter alone.
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`- 14 -
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`C. Obviousness of Claim 1 in Light of Ginter and Maari
`
`The Petition only cites to Maari for support for the “displaying” step of
`
`claim 1. Since the Petition does not allege that Maari overcomes the deficiencies
`
`of Ginter identified in Section V.A. above, the combination of Ginter and Maari
`
`fails to render obvious claim 1 for at least the same reasons claim 1 is not
`
`anticipated by Ginter.
`
`
`
`D. Obviousness in Light of Ginter and Stefik
`
`1.
`
`U.S. Patent Nos. 5,530,235 and 5,629,980 Are Not a Single
`
`Reference
`
`The Petition alleges in footnote 5 on page 9 that “Because Stefik ’235
`
`incorporates Stefik ’980 [i.e., U.S. Patent No. 5,629,980 (hereinafter “the ‘980
`
`patent”)] by reference, they should be considered a single reference.” However,
`
`Petitioner has not proven that the alleged incorporation by reference in the ‘235
`
`patent is sufficient to support a finding that the ‘235 and ‘980 patents “should be
`
`considered a single reference.” The ‘235 patent states, at col. 2, lines 48-53, that
`
`“The currently preferred embodiment of a DocuCard is an instance of a repository,
`
`as defined in co-pending application entitled ‘System for Controlling the
`
`Distribution and Use of Digital Works,’ serial number not yet assigned, which is
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`- 15 -
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`assigned to the assignee of the present invention and which is herein incorporated
`
`by reference.” However, such a reference does not meet the MPEP’s standard for
`
`incorporation by reference. MPEP 608.01(p) (Sixth Ed., Jan. 1995) set forth the
`
`procedure for incorporation by reference at the time the ‘235 patent was filed. As
`
`specified in the MPEP on page 600-55, left column, lines 11-13, “In addition to
`
`other requirements for an application, the referencing application should include an
`
`identification of the referenced patent, application, or publication.” The Petitioner
`
`has not established that a reference to “co-pending application entitled ‘System for
`
`Controlling the Distribution and Use of Digital Works,’ serial number not yet
`
`assigned, which is assigned to the assignee of the present invention,” actually
`
`identifies the referenced application. For example, the application is not
`
`referenced by application serial number, filing date, inventors or attorney docket
`
`number.
`
`As set forth in In re Fouche, 169 USPQ 429 (CCPA 1971), when the issue
`
`arises as to whether an incorporation by reference is proper, the test is “whether the
`
`original referring language was adequate to effect an incorporation by reference” --
`
`a test which is resolved by determining whether the application allegedly
`
`incorporated by reference is distinguished “from all others.” Id. at 431. Petitioner,
`
`which bears the burden of proof on the issue, has not proven that the application is
`
`distinguished from all others (e.g., by a declaration from Stefik describing that the
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`- 16 -
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`‘980 patent is the only such application). Thus, the alleged incorporation by
`
`reference is not proper, and the ‘235 and ‘980 patents should not be considered a
`
`single reference.
`
`
`
`2.
`
`No Motivation to Combine Ginter and Stefik
`
`
`
`As set forth above, the “Stefik” patent has not been shown to be a single
`
`reference; therefore, the alleged combination of Ginter and Stefik is improper as
`
`the Petition must show there was a motivation to combine all the references.
`
`
`
`Even if the Stefik references were considered to be a single reference or
`
`there was a motivation to combine the Stefik patents, one of ordinary skill in the
`
`art still would not have combined Ginter and the Stefik patents. The Petition
`
`alleges that a “POSITA would have considered it obvious to apply Stefik’s
`
`teachings of a removable card in the VDE environment discussed in Ginter, since
`
`every additional device in the VDE environment advantageously increases its user-
`
`base.” Petition at 39. However, the Petition has not identified any evidence that
`
`indicates that combining Stefik and Ginter would increase the user base or even
`
`that doing so would be considered to be an advantage to one of ordinary skill in
`
`that art. Similarly, the Petition cites to no evidence that having a display “would
`
`encourage users to make additional purchases.” Id. Thus, one of ordinary skill in
`
`the art would not have been motivated to combine Ginter and Stefik as alleged.
`
`
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`- 17 -
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`E.
`
`Obviousness in light of Ginter and Sato
`
`The Petition argues at pages 41-42 that “a POSITA would have known that
`
`Sato’s cellular phone could readily be programmed to function as an embodiment
`
`of the VDE environment taught by Ginter.” However, the Petition does not cite
`
`any evidence that shows that either Ginter envisioned utilizing its teachings part of
`
`a cellular phone or that Sato envisioned utilizing an environment such as is
`
`disclosed in Ginter to store music which is not disclosed as being secure. In fact,
`
`although the Petition alleges that a “POSITA would have considered it desirable to
`
`protect the content on Sato’s device using the VDE environment of Ginter,” using
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`the VDE environment of Ginter would have restricted the playback of any music
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`stored in Sato to VDE-compatible devices and potentially reduced the availability
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`of the music of Sato. Therefore, Sato would have taught against the combination
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`with Ginter, and one of ordinary skill in the art would not have combined the
`
`references as alleged in the Petition.
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`
`
`F.
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`Obviousness in light of Ginter and Poggio
`
`The Petition also fails to show that one of ordinary skill in the art would
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`have been motivated to combine Ginter with Poggio (EP0809221) in the manner
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`alleged in the Petition. The Petition alleges at page 34 that a “POSITA would have
`
`
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`- 18 -
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`
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`been motivated and found it obvious to employ the transactional method taught by
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`Poggio in implementing the secure storage system of Ginter” and cites as support
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`that “By securely storing a consumer’s credit card number, as taught in Poggio, in
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`the secure database of Ginter’s SPU and/or secondary storage location, a user
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`could protect his or her payment information from unauthorized access in a system
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`that does not require re-entering the information every time content is purchased.”
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`Id. at 34. However, the Petition does not cite to any evidence that one of ordinary
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`skill would even have recognized that this was possible without the teachings of
`
`the patent-at-issue. As shown in Figure 2 of Poggio, the electronic invoices 222
`
`are stored in the virtual vending machine 100, and there is no mechanism disclosed
`
`in Ginter to receive such invoices 222. Moreover, there is no disclosure in Poggio
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`to have any credit card information pre-stored. Thus, the proposed combination is
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`based on impermissible hindsight.
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`The Petition further alleges that a “POSITA would also have known that this
`
`configuration [of securely storing a consumer’s credit card number in the secure
`
`database of Ginter’s SPU and/or secondary location] advantageously encourages
`
`users to engage in impulse purchase of content.” Id. at 34. This allegation is
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`without any evidentiary support to show why one of ordinary skill would have
`
`known that the configuration would encourage impulse purchases or indeed even
`
`
`
`- 19 -
`
`
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`that impulse purchases were a desirable characteristic to have. Thus, one of
`
`ordinary skill in the art would not have combined Ginter with Poggio at all.
`
`
`
`
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`G. Obviousness in light of Ginter, Poggio and Stefik
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`As set forth above in Section V.F., Petitioner has not shown that one of
`
`ordinary skill in the art would have been motivated to combine Ginter and Poggio.
`
`As a result, one of ordinary skill in the art would not have combined Ginter,
`
`Poggio and Stefik for at least the same reasons.
`
`
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`VI. WECHSELBERGER’S DECLARATION SHOULD NOT BE
`
`CONSIDERED
`
`
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`Petitioner has filed and cited to the Declaration of Anthony Wechselberger
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`in Support of Apple Inc.’s Petition For Covered Business Method Patent Review of
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`United States Patent No. 7,334,720 Pursuant to 35 U.S.C. § 321, 37 C.F.R. §
`
`42.304 (Exhibit 1021) (hereinafter “the Wechselberger Declaration”). However,
`
`the Wechselberger Declaration is improper as it does not disclose the underlying
`
`facts on which the opinion is based. For example, the Wechselberger Declaration
`
`does not state the relative evidentiary weight (e.g., substantial evidence versus
`
`preponderance of the evidence) that Mr. Wechselberger used in arriving at his
`
`conclusions. As specified in 37 CFR 42.65, “Expert testimony that does not
`
`
`
`- 20 -
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`
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`disclose the underlying facts or data on which the opinion is based is entitled to
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`little or no weight.” Similarly, the Wechselberger Declaration does not state the
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`criteria that he used to assess whether one of ordinary skill in the art at the time of
`
`the invention would have been motivated to modify a reference or combine two
`
`references. For example, the Wechselberger Declaration does not state whether he
`
`considered evidence tending to show that one of ordinary skill in the art would not
`
`have made his proposed combination. Thus, the Wechselberger Declaration is
`
`entitled to little or no weight and, as a result, cannot support a finding that it is
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`more likely than not that at least one of the challenged claims is unpatentable.
`
`
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`In addition, the Wechselberger Declaration does not prove that Mr.
`
`Wechselberger is an expert whose testimony is relevant to the issue of what is
`
`taught and/or suggested by the cited references. While Mr
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