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.:
`
` 104677-5008-819
`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 ......................... 5
`III. PETITIONER HAS STANDING ............................................................................ 9
`A.
`The ’720 Patent Is a Covered Business Method Patent ............................... 9
`1.
`Exemplary Claim 14 Is Financial In Nature ...................................... 9
`2.
`Claim 14 Does Not Cover A Technological Invention ................. 12
`(a)
`Claim 14 Does Not Recite A Technological
`Feature That Is Novel and Unobvious .............................. 12
`Claim 14 Does Not Solve A Technical Problem
`Using A Technical Solution ................................................. 14
`Related Matters and Mandatory Notice Information; Petitioner Is a Real
`Party In Interest Sued for and Charged With Infringement ..................... 16
`IV. DETAILED EXPLANATION OF REASONS FOR RELIEF REQUESTED,
`SHOWING IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE
`CHALLENGED CLAIM IS UNPATENTABLE ............................................... 17
`A.
`Claim Construction .......................................................................................... 19
`B.
`The Challenged Claims Are Unpatentable Under 35 U.S.C. § 101 .......... 22
`1.
`Claims Are Directed To Abstract Ideas ........................................... 23
`2.
`Claims Do Not Disclose An “Inventive Concept” That Is
`“Significantly More” Than an Abstract Idea ................................... 26
`Field Of Use Limitations Cannot Create Patent Eligibility ........... 27
`Generic Computer Implementation Cannot Transform
`Abstract Ideas Into Patent Eligible Inventions ............................... 27
`Functional Nature Confirms Preemption and Ineligibility ............ 32
`5.
`6. Machine-or-Transformation Test Confirms Ineligibility ............... 33
`The Challenged Claims Are Unpatentable Under 35 U.S.C. § 103 .......... 34
`C.
`CONCLUSION........................................................................................................... 79
`
`V.
`
`ii
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`
`
`(b)
`
`B.
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`3.
`4.
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`

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` Covered Business Method Patent Review
`United States Patent No. 7,334,720
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`
`
`EXHIBIT LIST
`1301
`U.S. Patent No. 7,334,720
`
`1302
`
`1303
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`1304
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`1305
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`1306
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`1307
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`1308
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`1309
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`1310
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`1311
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`1312
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`1313
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`1314
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`1315
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`1316
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`1317
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`1318
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`1319
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`1320
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`Plaintiffs’ First Amended Complaint
`
`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 Publication No. WO 99/43136
`
`JP Patent Application Publication No. H11-164058 (translation)
`
`Eberhard von Faber, Robert Hammelrath, and Frank-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
`U.S. Patent No. 8,033,458
`
`iii
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`

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` Covered Business Method Patent Review
`United States Patent No. 7,334,720
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`
`EXHIBIT LIST
`Declaration of Michael P. Duffey In Support of Apple Inc.’s Petition
`1321
`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. 6:13cv447 (Dkt. 229)
`File History for U.S. Patent No. 8,061,598
`
`1322
`
`1323
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`1324
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`1325
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`1326
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`1327
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`1328
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`1329
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`1330
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`1331
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`1332
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`1333
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`1334
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`1335
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`1336
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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
`
`JP Patent Application Publication No. H10-269289 (translation)
`
`File History for U.S. Patent No. 7,942,317
`
`File History for U.S. Patent No. 8,033,458
`
`U.S. Patent No. 8,061,598
`
`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
`
`U.S. Patent No. 5,646,992
`
`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.
`
`INTRODUCTION
`
`Pursuant to § 321 and Rule 42.304, 1 the undersigned, on behalf of and in a rep-
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`resentative capacity for Apple Inc. (“Petitioner”), petitions for covered business
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`method review of claims 3 and 13-15 (“challenged claims”) of U.S. Pat. No. 7,334,720
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`(“the ’720 Patent” or “’720”), issued to Smartflash Limited and currently assigned to
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`Smartflash LLC (“Patentee”). Petitioner asserts it is more likely than not that the chal-
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`lenged claims are unpatentable for the reasons herein and requests review of, and
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`judgment against, claims 3 and 13-15 as unpatentable under § 101 and § 103.
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`As discussed in Sec. III.B, infra, Petitioner has concurrently filed a second CBM
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`Petition requesting judgment against different ’720 claims under § 101 and § 103. The
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`Director, pursuant to Rule 325(c), may determine that merger, or at minimum coordi-
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`nation, of these proceedings, is appropriate. Petitioner previously filed CBM2014-
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`00104/105 seeking review of the ’720 under §§ 102 and 103. In its Decision Denying
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`Institution, the Board construed “access rule” as “a rule specifying a condition under
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`which access to content is permitted,” id., Pap. 9, at 8, and determined Petitioner had
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`not shown it was more likely than not that it would prevail in demonstrating that Stef-
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`ik and Poggio, Maari, and/or Sato rendered obvious limitations related to “access
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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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`rule[s].” Id. Pap. 9, at 13-20. In light of the Board’s decision, Petitioner now identifies
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`additional prior art—Kopp and Smith (Exs. 1304, 1227)—with explicit disclosures of
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`the limitations related to “access rules,” as construed by the Board. Kopp, e.g., de-
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`scribes a vending system allowing a user to specify a desired extent of usage, pay for
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`only that amount of usage, and then receive data limited to the purchased usage
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`amount (e.g., Ex. 1304 2:50-65), while Smith provides express disclosure of a software
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`vending system allowing a user to pre-pay license fees proportional to the value re-
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`ceived from using software, rather than paying all or nothing (e.g., Ex. 1327 6:1-5;
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`18:4-33). Petitioner has also identified additional disclosures in Stefik and Poggio con-
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`cerning these limitations as construed, further confirming a POSA2 would have found
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`it obvious and routine to implement the system disclosed by Stefik and Poggio using
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`the expressly advantageous teachings of Kopp and/or Smith, detailed in §IV.C, infra.
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`See, e.g., Ex. 1319 ¶¶ 66-81.
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`The challenged claims merely recite steps and corresponding systems well-
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`known in the field of data storage and access, including use of a “portable data carrier
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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.
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`in 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. 1319 ¶¶ 27, 30 n.3.
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`2
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`United States Patent No. 7,334,720
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`for storing and paying for data and to computer systems for providing access to data
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`to be stored.” E.g., Ex. 1301 1:5-8. Independent Claim 14, for example, recites six ru-
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`dimentary steps relating to data storage and access—(A) reading payment data from a
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`data carrier, (B) forwarding that data, (C) retrieving data, (D) writing the retrieved
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`data, (E) receiving f at least one access rule; and (F) writing that rule:
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`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 de-
`pendent upon the amount of payment associated with the payment data
`forwarded to the payment validation system.
`Ex. 1301. But at the ’720’s earliest claimed priority date, these simple elements and
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`their combination were all known to any POSA. The patent itself acknowledges that the
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`idea of providing access to data in exchange for a payment (e.g., purchase of music on
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`a CD) was well known at the time, e.g., id. 5:4-7 (“where the data carrier stores . . . mu-
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`sic, the purchase outright option may be equivalent to the purchase of a compact disc (CD)”),
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`and the prior art was teeming with disclosures of this basic concept.
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` Covered Business Method Patent Review
`United States Patent No. 7,334,720
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`Moreover, as its language makes clear, Claim 14 involves no “technology” at all
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`other than “a payment validation system” and “a data carrier”—both of which the pa-
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`tent concedes were well known and entirely commonplace at the time. E.g., id. 3:29,
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`8:64-66, 11:36-53, 13:46-58, 14:1-2, 17:23-18:23, 18:38, Figs. 2, 9. Thus, as the intrinsic
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`record reflects, Claim 14 recites nothing more than a method for retrieving and stor-
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`ing data from a data supplier while reading and forwarding payment data for valida-
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`tion and receiving and writing an access rule for the stored data. The other challenged
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`claims are nothing but variations on this same simple and well-known theme, with the
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`addition, in the challenged “system” claims, of equally generic components (e.g., data
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`terminals with interfaces, processors, program stores and code).3 E.g., id. 12:38-41
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`(“The physical embodiment of the system is not critical and a skilled person will understand that the
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`terminals, data processing systems and the like can all take a variety of forms.”); Fig. 4b.
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`3 Dependent claim 15, e.g., simply adds steps involving receiving payment validation
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`data and transmitting at least a portion of the data to the data supplier. Claim 3
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`simply recites a “data access terminal” with interfaces, a processor, a program store
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`and “code” to perform similar steps, along with the processing of data access requests
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`and various data (e.g., payment data and payment validation data) via the application of
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`access and use rules. And claim 13 simply adds to claim 3 that the data access terminal
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`is “integrated with a mobile communication device, a personal computer, an au-
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`dio/video player, and/or a cable or satellite television interface device.” See Ex. 1301.
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`United States Patent No. 7,334,720
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`Indeed, as confirmed by the recent decision in Alice Corp. Pty, Ltd. v. CLS Bank
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`Int’l, 134 S. Ct. 2347 (2014)—decided after Petitioner’s original challenges to the ’720
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`were filed—the challenged claims are also directed to patent-ineligible subject matter
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`under § 101. As the Board noted previously, “the ’720 patent makes clear that the as-
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`serted 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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`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 at minimum obvious. See, e.g., Ex. 1319 § V. In 1991,
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`for example, U.S. Pat. No. 4,999,806, disclosed a system and method for sale and dis-
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`tribution of digital products (e.g., software) by phone, and for content protection. See,
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`e.g., Ex. 1306 Abstract (“central station distributes software by telephone[,]accepts credit card
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`information, transmits an acceptance code … After verifying the credit card information, the station
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`calls the purchaser back and continues with the transaction.”); 1:67-2:9 (describing “means for
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`selling and distributing protected software using standard telephone lines” and “permit[ting] the pur-
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`chaser to rent the protected software for a specific number of runs”). Ex. 1306 thus discloses
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`making different types of access available, e.g., purchase vs. rental, with a Control
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`Transfer Program and Primary Protection Program that ensure the computer receiv-
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`ing a downloaded program does not have another program present that could create
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`unauthorized copies. See id. Abstract; 2:65-3:23. See also Ex. 1319 ¶ 32.
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`In April 1992, U.S. Pat. No. 5,103,392, disclosed use-based charging for digital
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`products, including “user-specific credit data storage means for storing data identifying
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`the user … and indicating credit for payment capacity, use time length, or the like of the user,”
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`as well as “[1] use decision means for determining permission to use the program … on the ba-
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`sis of program-specific data supplied from the program storage means or user-specific credit
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`data supplied from the user-specific credit data storage means, the use decision means de-
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`livering either an affirmative or negative signal corresponding to results of the decision[, and
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`[2]] program use history storage means connected to the use decision means for storing pro-
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`gram use history data . . ..” See, e.g., Ex. 1311 1:64-2:17. Ex. 1311’s emphasis on assuring
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`permission to access a program and compensation to providers for use underscores
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`the art’s focus on digital rights management (“DRM”), over eight years before Smart-
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`flash’s claimed October 25, 1999 priority date. See also Ex. 1319 ¶ 35.
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`In 1997, Exhibit 1218 (“von Faber”) observed that “[e]lectronic commerce systems
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`dealing with the distribution of digital contents like software or multimedia data have to couple
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`the use of the provided digital goods with a prior payment for the goods in a way which cannot be
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`bypassed,” proposing a system where customers purchase keys to utilize distributed
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`encrypted content. E.g., id. 7 (a “solution is to distribute the contents in encrypted form, and to
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`have the customer pay for the key which he needs to transform the encrypted content in an usable
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`form.”), 8 (“The Content Provider provides digital contents in encrypted form being distribut-
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`ed by the Content Distributor . . . The Authorisation System permits the distribution of the appro-
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`priate key after settling of the fees payable by the Customer, who will enjoy the decrypted digi-
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`tal contents.”), Fig. 1. Von Faber states its system could be used for a variety of
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`known distribution and payment methods, and further addressed the known issue of
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`payment distribution to content providers. See, e.g., id. 13 (“Different methods can be used
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`to distribute the encrypted contents (standard techniques) . . . Different electronic payment meth-
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`ods can be integrated . . . This flexibility leads to the fact that totally different authorisation methods
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`can be integrated.”; “The system automatically divides the package price (payments) and guarantees
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`that the money is transferred to each Content Provider.”). See also Ex. 1319 ¶¶ 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 protection.” See, e.g.,
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`Ex. 1314 Abstract. Ginter’s system helps “ensure that information is accessed and used
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`only in authorized ways, and maintain the integrity, availability, and/or confidentiality of the in-
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`formation,” and discloses that “[a]ll participants … have the innate ability to partici-
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`pate in any role,” e.g., id. 255:22-43, highlighting the known flexibility in such distribu-
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`tion systems, underscoring that combinations between and among disclosures of such
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`systems would have been obvious to a POSA. See also, e.g., Ex. 1319 ¶¶ 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. 1316 (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 June
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`18, 1999), discloses storing and playing media on mobile devices, e.g., using a remova-
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`ble IC card. See, e.g., Ex. 1317 ¶ 9 (“portable music selection viewing device 70 pro-
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`vides a removable storage device 76 [which] is a memory card similar to, for example…an IC
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`card. [T]he user can store the music software from another audio unit into the storage device 76 and
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`enjoy music by inserting this storage unit 76 into this portable … device 70.”); ¶ 13 (“music
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`storage medium 250 such as a magnetic card, magnetic tape, a CD, a DVD, or a
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`memory card such as an IC card stores the music software”). See also Ex. 1319 ¶¶ 42-43. As
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`these and the examples in § IV.C illustrate, the prior art was rife with discussion of the
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`same supposed “invention” memorialized in the ’720’s challenged claims.
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`III. PETITIONER HAS STANDING
`A.
`The ’720 Patent a “covered business method patent” under § 18(d)(1) of the
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`The ’720 Patent Is a Covered Business Method Patent
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`AIA, and Petitioner certifies it is available for review under § 42.304(a). See also
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`CBM2014-00104, Pap. 8, 8-13 (finding claim 14 satisfies requirement). 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.
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`48,709 (Aug. 14, 2012). Petitioner thus addresses exemplary claim 14 (quoted above).
`
`1.
`A CBM patent is “a patent that claims a method or corresponding apparatus
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`Exemplary Claim 14 Is Financial In Nature
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`for performing data processing or other operations used in the practice, administra-
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`tion, or management of a financial product or service, except that the term does not
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`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 Board has previ-
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`ously found, e.g., that a claim for “transferring money electronically via a telecommu-
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`nication line to the first party . . . from the second party” met the financial product or
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`service requirement, concluding that “the electronic transfer of money is a financial
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`activity, and allowing such a transfer amounts to providing a financial service.”
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`CBM2013-00020, Pap. 14 at 9-10. 4 See also, e.g., CBM2013-00017, Pap. 8 at 5-6.
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`The ’720 Patent relates to the idea of providing electronic data in exchange for
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`payment and restricting access to data based on payment amount. See AIA § 18(d)(1);
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`37 C.F.R. § 42.301(a); Ex. 1301 1:64-2:3. Indeed, in asserting the patent, Smartflash
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`conceded the alleged invention relates to a financial activity or transaction, stating that
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`“[t]he patents-in-suit generally cover a portable data carrier for storing data and man-
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`aging access to the data via payment information and/or use status rules. The patents-
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`in-suit also generally cover a computer network . . . that serves data and manages ac-
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`cess to data by, for example, validating payment information.” Ex. 1302.
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`The ’720 Patent emphasizes payment in describing the claimed invention:
`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-
`
`
`4 Indeed, these aspects of claim 14 are generally similar to those of the claim found to
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`convey CBM standing in CBM2013-00020, Pap. 8, at 9-13.
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`ing the payment information; and downloading data into the portable
`storage device from a data supplier.
`Ex. 1301 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 “portable data carrier” of the invention is “for storing and paying for data,” id.
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`1:6-8, and the “payment data” forwarded to the “payment validation system” “may ei-
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`ther be data relating to an actual payment made to the data supplier, or it may be a record of a
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`payment made to an e-payment system.” Id. 6:59-63. “Payment for the data item or items re-
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`quested may either be made directly to the system owner or may be made to an e-
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`payment system.” Id. 21:6-8. “E-payment systems [] are coupled to banks” and may be
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`provided in accordance with cash compliant standards such as MONDEX, Proton,
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`and/or Visa. Id. 13:46-58. And Claim 14 explicitly describes electronically transferring
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`money and allowing such a transfer, as well as restricting access based on payment (e.g.,
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`“the at least one condition being dependent upon the amount of payment associated with the
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`payment data forwarded to the payment validation system”), and clearly relates to a financial
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`activity and providing a financial service. See CBM2013-00020, Pap. 14 at 9-10 (“the
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`electronic transfer of money is a financial activity, and allowing such a transfer
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`amounts to providing a financial service.”). See also AIA § 18(d)(1); 37 C.F.R.
`
`§ 42.301(a). See also 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012) (“[T]he definition of
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`[CBM] was drafted to encompass patents ‘claiming activities that are financial in nature, in-
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`cidental to a financial activity or complementary to a financial activity.’”) (citation omitted).
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`2.
`Further, claim 14 is not a “technological invention” that would trigger the ex-
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`Claim 14 Does Not Cover A Technological Invention
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`ception in AIA § 18(d)(1), because it does not claim “subject matter as a whole [that]
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`recites 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,” “payment validation system,” and “data supplier,”
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`were commonplace and could be implemented using well-known industry standards.
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`(a) Claim 14 Does Not Recite A Technological Feature
`That Is Novel and Unobvious
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`First, no “technological feature” of claim 14 is novel and unobvious. The PTO
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`confirmed that “[m]ere recitation of known technologies, such as computer hardware, communica-
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`tion or computer networks, software, memory, computer-readable storage medium, scanners, display
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`devices or databases, or specialized machines, such as an ATM or point of sale de-
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`vice,” or “[r]eciting the use of known prior art technology to accomplish a process or method,
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`even if that process or method is novel and non-obvious” will “not typically render a patent a
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`technological invention.” E.g., 77 Fed. Reg. 48,756 48,764 (Aug. 14, 2012). Claim 14’s
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`language makes clear it requires no particularized hardware, but instead simply relates
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`to the idea of providing electronic data in exchange for payment and restricting access
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`based on the amount of payment. The claim involves no “technology” at all other than, at
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`most, use of a data carrier, a payment validation system, and a data supplier. Ex. 1301.
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`The patent confirms this data carrier is in no way novel or unobvious, explaining it
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`may be¸ inter alia, based on a “standard smart card” (id. 11:37-38), an “electronic
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`memory card” (id. 3:29), or a so-called “smart Flash card,” (id. 17:25), all commonplace at
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`the time, see id. 11:37-38; 14:1-2. Indeed, the ’720 explains a smart Flash card is “an IC
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`card . . . incorporating a processor and Flash data memory, preferably of large capaci-
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`ty” (id. 17:25-28), and incorporates by reference, for additional details, the ISO series of
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`standards. Id. 17:28-33; see also Figs. 2, 9; 11:36-53; 17:34-18:23.
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`Payment validation systems were also well-known. See Ex. 1301 13:57-61.
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`The ’720 explains “[t]he payment validation system may be part of the data supplier’s
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`computer systems or it may be a separate e-payment system.” Id. 8:64-66. “E-payment
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`systems are coupled to banks . . . These provide an e-payment system according to, for example,
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`MONDEX, Proton, and/or Visa cash compliant standards . . .” Id. 13:46-58. The “data
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`supplier” of the claims is also not a technological component, and requires no specific
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`hardware, see Ex. 1301 6:14-16; 6:56-58, but is, instead, simply a supplier of online da-
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`ta. Id. 5:64-65. See also id. 6:56-58 (“The computer system is operated by a data supplier
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`or a data supplier ‘system owner’ for providing content data to the data carrier.”); 8:13-15.
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`The ’720 explains the system’s physical embodiment, including data provid-
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`ers/suppliers, is not critical, Ex. 1301 12:11-13, 38-41; Fig. 4(b), and data suppliers
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`were well known long before the claimed priority date. See id. 1:26-41. Further, the
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`idea of providing access to data in exchange for payment, as claimed, was known. See,
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`e.g., id. 5:4-7 (“Thus where the data carrier stores, for example, music, the purchase
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`outright option may be equivalent to the purchase of a compact disc (CD).”). See also, e.g., Ex.
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`1307; Ex. 1306 Abstract, 1:67-2:9; Ex. 1308 Abstract, 4:27-35. The ’720’s alleged in-
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`vention merely combines a known payment validation system with the known ability
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`to download data and restrict access to the data based on that payment. But “combin-
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`ing prior art structures to achieve a normal, expected, or predictable result of that
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`combination” does not “render a patent a technological invention.” 77 Fed. Reg.
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`48755 (Aug. 14, 2012) at 48764. Access rules, and restricting access to downloaded
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`data based on the amount of payment was also known. E.g., Ex. 1314 186:15-24;
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`172:32-35; 264:62-265:16; 128:23-36; Ex. 1315 7:14-16; 10:25-28.
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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 14 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 14 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 14 would not be technological.
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`(b) Claim 14 Does Not Solve A Technical Problem Using
`A Technical Solution
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`Claim 14 also does not solve a technical problem using a technical solution be-
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`cause there was no technical problem to begin with. While a POSA already would have
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`known how to sell data over the Internet, see, e.g., Ex. 1315 Fig. 7; 1:50-55, 10:41-53,
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`the patent nonetheless describes the “problem” the invention is intended to solve as
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`the business problem of data piracy: users were downloading content, such as MP3s, with-
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`out paying, and providers were losing money. Id. 1:15-17, 26-41. However, a POSA
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`would have known well before October 1999 how to sell electronic data, use payment
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`authorization mechanisms, and provide electronic data based on payment. See, e.g., Ex.
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`1315 Fig. 7; 1:56-59, 2:32-36; 9:56-10:25; see also, e.g., Ex. 1319 § V. The solution de-
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`scribed in claim 14—using previously-known data access and previously-known data
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`payment abilities—was also not “technical.” As the patent states, “[b]inding the data
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`access and payment together allows the legitimate owners of the data to make the data
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`available themselves over the internet without fear or loss of revenue, thus undermin-
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`ing the position of data pirates.” Ex. 1301 1:66-2:3; see also id. 4:27-29. But the basic
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`notion of coupling of data access to payment5, as claimed in the ’720, is not a tech-
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`nical solution. Further, even if the solution were somehow deemed “technical” (it is
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`not), this would not alter that there was no technical problem presented and ad-
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`dressed by the ’720. As the Board stated in CBM 2012-00007, “[d]ifficulty implement-
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`ing an automated or technical solution to a problem that is not technical does not trans-
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`form that non-technical problem into a technical one.” P