CBM2015-00029
`United States Patent No. 7,334,720 B2
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`
`____________
`
`Case CBM2015-00029
`Patent 7,334,720 B2
`
`____________
`
`
`CORRECTED PETITION FOR COVERED BUSINESS METHOD PA-
`TENT REVIEW OF UNITED STATES PATENT NO. 7,334,720 PUR-
`SUANT TO 35 U.S.C. § 321, 37 C.F.R. § 42.3041
`
`
`
`
`
`
`
`
`
`
`1 As directed by the Board in Paper 4, Petitioner hereby resubmits this Petition to ad-
`
`dress formality issues identified therein.
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`
`
`

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`
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` CBM2015-00029
`United States Patent No. 7,334,720 B2
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`
`TABLE OF CONTENTS
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`B.
`
`C.
`
`3.
`4.
`
`INTRODUCTION ....................................................................................................... 1
`I.
`II. OVERVIEW OF FIELD OF THE CLAIMED INVENTION ......................... 4
`III. PETITIONER HAS STANDING ............................................................................ 7
`A.
`The ’720 Patent Is a Covered Business Method Patent ............................... 7
`1.
`Exemplary Claim 14 Is Financial In Nature ...................................... 7
`2.
`Claim 14 Does Not Cover A Technological Invention ................... 9
`Related Matters and Mandatory Notice Information; Petitioner Is a Real
`Party In Interest Sued for and Charged With Infringement ..................... 13
`IV. DETAILED EXPLANATION OF REASONS FOR RELIEF REQUESTED,
`SHOWING IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE
`CHALLENGED CLAIM IS UNPATENTABLE ............................................... 14
`A.
`Claim Construction .......................................................................................... 16
`B.
`The Challenged Claims Are Unpatentable Under 35 U.S.C. § 101 .......... 19
`1.
`Claims Are Directed To Abstract Ideas ........................................... 20
`2.
`Claims Do Not Disclose An “Inventive Concept” That Is
`“Significantly More” Than an Abstract Idea ................................... 23
`Field Of Use Limitations Cannot Create Patent Eligibility ........... 23
`Generic Computer Implementation Cannot Transform
`Abstract Ideas Into Patent Eligible Inventions ............................... 24
`Functional Nature Confirms Preemption and Ineligibility ............ 28
`5.
`6. Machine-or-Transformation Test Confirms Ineligibility ............... 30
`The Challenged Claims Are Unpatentable Under 35 U.S.C. § 103 .......... 30
`1.
`Overview of Stefik ............................................................................... 30
`2. Motivation to Combine Stefik with Poggio ..................................... 33
`3. Motivation to Combine Stefik and Poggio with Kopp .................. 37
`4. Motivation to Combine Stefik with Poggio, Kopp, and
`Smith ...................................................................................................... 40
`Claims 3 and 13-15 are Obvious ........................................................ 42
`5.
`CONCLUSION........................................................................................................... 79
`
`V.
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`ii
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` CBM2015-00029
`United States Patent No. 7,334,720 B2
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`
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`EXHIBIT LIST
`1301
`U.S. Patent No. 7,334,720
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`1302
`
`1303
`
`1304
`
`1305
`
`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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` CBM2015-00029
`United States Patent No. 7,334,720 B2
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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
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`1322
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`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
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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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`U.S. Patent No. 5,646,992
`
`iv
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`

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` CBM2015-00029
`United States Patent No. 7,334,720 B2
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`I.
`
`INTRODUCTION
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`Pursuant to § 321 and Rule 42.304, 2 the undersigned, on behalf of Apple Inc.
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`(“Petitioner”), petitions for covered business method review of claims 3 and 13-15 of
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`U.S. Pat. No. 7,334,720 (“the ’720 Patent” or “’720”), issued to Smartflash Limited
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`and currently assigned to Smartflash LLC (“Patentee”). Petitioner asserts it is more
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`likely than not that the challenged claims are unpatentable 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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`Petitioner has concurrently filed a second CBM Petition against different ’720
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`claims under § 101 and § 103. The Director, pursuant to Rule 325(c), may determine
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`that merger, or at minimum coordination, of these proceedings, is appropriate. Peti-
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`tioner previously filed CBM2014-00104/105 on the ’720 under §§ 102 and 103. In its
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`Decision Denying Institution, the Board construed “access 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 “access rule[s].” Id. Pap. 9, at 13-20. In light of the Board’s decision,
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`Petitioner now identifies additional prior art—Kopp and Smith (Exs. 1304, 1327)—
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`2 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., as
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`the context indicates, and all emphasis herein is added unless otherwise noted.
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`Covered Business Method Patent Review
`United States Patent No. 7,334,720
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`with explicit disclosures of the limitations related to “access rules,” as construed.
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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 usage, and receive data limited to the purchased usage amount
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`(e.g., Ex. 1304 2:50-65), while Smith expressly discloses a software vending system al-
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`lowing a user to pre-pay license fees proportional to the value received from using
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`software, rather than paying all or nothing (e.g., Ex. 1327 6:1-5; 18:4-33). Petitioner has
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`also identified additional disclosures in Stefik and Poggio concerning these limitations,
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`further confirming a POSA3 would have found it obvious and routine to implement
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`the system disclosed by Stefik and Poggio using the expressly advantageous teachings
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`of Kopp and/or Smith, detailed in §IV.C, infra. 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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`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—reading payment data from a da-
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`ta carrier, forwarding that data, retrieving data, writing the retrieved data, receiving
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`3 “POSA” refers to knowledge/understanding of a person of ordinary skill in the art
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`as of Oct. 25, 1999 who would have at least a B.S. in E.E., C.S., or a telecommunic-
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`ations related field, and at least 3 years industry experience that included client-server
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`data/information distribution and management architectures. Ex. 1319 ¶¶ 27, 30 n.3.
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`2
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`at least one access rule; and writing that rule. But at the ’720’s earliest claimed priori-
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`ty date, these simple elements and their combination were all known to any POSA.
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`The patent itself acknowledges that the idea of providing access to data in exchange for
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`a payment (e.g., purchase of music on a CD) was well known, e.g., id. 5:4-7, and the
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`prior art was teeming with this basic concept.
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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. E.g., id. 3:29, 8:64-66,
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`11:36-53, 13:46-58, 14:1-2, 17:23-18:23, 18:38, Figs. 2, 9. Thus, Claim 14 recites noth-
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`ing more than a method for retrieving and storing data from a data supplier while
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`reading and forwarding payment data for validation and receiving and writing an ac-
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`cess rule for the stored data. The other challenged claims are variations on this same
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`simple and well-known theme, with the addition, in the challenged “system” claims, of
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`equally generic components.4 E.g., id. 12:38-41 (“The physical embodiment of the system is
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`4 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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`3
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`not critical and a skilled person will understand that the terminals, data processing systems and the
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`like can all take a variety of forms.”); Fig. 4b. Indeed, as confirmed by the recent decision
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`in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)—decided after Peti-
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`tioner’s original challenges to the ’720 were filed—the challenged claims are also di-
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`rected to patent-ineligible subject matter under § 101. As the Board noted previously,
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`“the ’720 patent makes clear that the asserted novelty of the invention is not in any
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`specific improvement of software or hardware, but in the method of controlling access to
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`data,” CBM2014-00104, Pap. 9, at 12, and the challenged claims are directed to noth-
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`ing more than the unpatentable abstract idea of paying for and controlling access to
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`data, with at most the addition of well-known, routine and conventional features—in
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`particular, generic computer implementation that cannot confer patentability on these
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`patent-ineligible abstractions. E.g., Alice, 134 S. Ct. at 2359-60. Each challenged claim
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`recites ineligible subject matter and is 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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`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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`4
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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; 1:67-2:9. Ex. 1306 thus discloses making different types of ac-
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`cess available, e.g., purchase vs. rental, with a Control Transfer Program and Primary
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`Protection Program that ensure the computer receiving a downloaded program does
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`not have another program present that could create unauthorized copies. See id. Ab-
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`stract; 2:65-3:23. See also Ex. 1319 ¶ 32.
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`In 1992, U.S. Pat. No. 5,103,392, disclosed use-based charging for digital prod-
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`ucts, including “user-specific credit data storage means for storing data identifying the us-
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`er … and indicating credit for payment capacity, use time length, or the like of the user,” as
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`well as “[1] use decision means for determining permission to use the program … on the basis
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`of program-specific data supplied from the program storage means or user-specific credit data
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`supplied from the user-specific credit data storage means, the use decision means delivering
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`either an affirmative or negative signal corresponding to results of the decision[, and [2]]
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`program use history storage means connected to the use decision means for storing program use
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`history data . . ..” See, e.g., Ex. 1311 1:64-2:17. Ex. 1311’s emphasis on assuring permis-
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`sion to access a program and compensation to providers for use underscores the art’s
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`focus on digital rights management (“DRM”), over eight years before Smartflash’s
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`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, 8, Fig. 1. Von Faber states its system could be used for a
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`variety of known distribution and payment methods, and addresses the known issue
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`of payment distribution to content providers. See, e.g., id. 13. 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. 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. 1317 ¶ 9; ¶ 13. See also Ex. 1319 ¶¶ 42-43. The prior art
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`was rife with the same supposed “invention” in the ’720’s challenged claims.
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`III. PETITIONER HAS STANDING
`A.
`The ’720 Patent is 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.
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`1.
`A CBM patent “claims a method or corresponding apparatus for performing
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`Exemplary Claim 14 Is Financial In Nature
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`data processing or other operations used in the practice, administration, or manage-
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`ment of a financial product or service, except that the term does not include patents
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`for technological inventions.” AIA §18(d)(1); 37 C.F.R. §42.301. “[T]he definition of
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`covered business method patent was drafted to encompass patents claiming activities
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`that are financial in nature, incidental to a financial activity or complementary to a financial activi-
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`ty.” 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012). “[F]inancial product or service” is to
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`be interpreted broadly, id., and “financial . . . simply means relating to monetary mat-
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`ters”—it does not require any link to traditional financial industries such as banks. See,
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`e.g., CBM2012-00001, Pap. 36 at 23. The Board has previously found, e.g., that a claim
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`for “transferring money electronically via a telecommunication line to the first par-
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`ty . . . from the second party” met the financial product or service requirement, con-
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`cluding that “the electronic transfer of money is a financial activity, and allowing such
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`a transfer amounts to providing a financial service.” CBM2013-00020, Pap. 14 at 9-
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`10.5 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 . . . pay-
`ment validation means . . . reading payment information from the
`payment validation means using the terminal; validating the payment in-
`formation . . .
`Ex. 1301 1:46-55. See also id. 1:56-57. The specification confirms that the “portable da-
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`ta carrier” of the invention is “for storing and paying for data,” id. 1:6-8, and the
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`“payment data” forwarded to the “payment validation system” “may either be data re-
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`5 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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`lating to an actual payment made to the data supplier, or it may be a record of a payment made to
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`an e-payment system.” Id. 6:59-63. “Payment for the data item or items requested may ei-
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`ther be made directly to the system owner or may be made to an e-payment system.”
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`Id. 21:6-8. “E-payment systems [] are coupled to banks” and may be provided in accord-
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`ance with cash compliant standards such as MONDEX, Proton, and/or Visa. Id.
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`13:46-58. Claim 14 explicitly describes electronically transferring money and allowing
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`such a transfer, as well as restricting access based on payment (e.g., “the at least one
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`condition being dependent upon the amount of payment associated with the payment data forwarded
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`to the payment validation system”), and clearly relates to a financial activity and providing a
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`financial service. See CBM2013-00020, Pap. 14 at 9-10 (“the electronic transfer of
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`money is a financial activity, and allowing such a transfer amounts to providing a fi-
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`nancial service.”); 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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`9
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`were commonplace and could be implemented using well-known industry standards.
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`First, claim 14 does not recite a “technological feature” that is novel and un-
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`obvious. “Mere recitation of known technologies, such as computer hardware, communication or
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`computer networks, software, memory, computer-readable storage medium, scanners, display de-
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`vices or databases, or specialized machines, such as an ATM or point of sale device,”
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`or “[r]eciting the use of known prior art technology to accomplish a process or method, even if that
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`process or method is novel and non-obvious” will “not typically render a patent a technologi-
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`cal invention.” E.g., 77 Fed. Reg. 48,756 48,764 (Aug. 14, 2012). Claim 14’s language
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`makes clear it requires no particularized hardware, but instead simply relates to the
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`idea of providing electronic data in exchange for payment and restricting access based
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`on the amount of payment. The claim involves no “technology” at all other than, at most,
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`use of a data carrier, a payment validation system, and a data supplier. Ex. 1301. The
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`patent confirms this data carrier is in no way novel or unobvious, explaining it may
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`be¸ inter alia, based on a “standard smart card” (id. 11:37-38), an “electronic memory
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`card” (id. 3:29), or a so-called “smart Flash card,” (id. 17:25), all commonplace at the time,
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`see id. 11:37-38; 14:1-2. Indeed, the ’720 explains a smart Flash card is “an IC card . . .
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`incorporating a processor and Flash data memory, preferably of large capacity” (id.
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`17:25-28), and incorporates by reference, for additional details, the ISO series of standards.
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`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. See also, e.g., Ex. 1307; Ex. 1306 Abstract, 1:67-2:9; Ex. 1308 Abstract,
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`4:27-35. The ’720’s alleged invention merely combines a known payment validation
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`system with the known ability to download data and restrict access to the data based
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`on that payment. But “combining prior art structures to achieve a normal, expected,
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`or predictable result of that combination” does not “render a patent a technological
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`invention.” 77 Fed. Reg. 48755 (Aug. 14, 2012) at 48764. Access rules, and restricting
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`access to downloaded data based on the amount of payment was also known. E.g., Ex.
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`1314 186:15-24; 172:32-35; 264:62-265:16; 128:23-36; Ex. 1315 7:14-16; 10:25-28.
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`11
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`The state of the art at the time, and the detailed prior art analysis provided below, fur-
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`Covered Business Method Patent Review
`United States Patent No. 7,334,720
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`ther reflects claim 14 does not recite a technological feature that is novel and nonob-
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`vious. See, e.g., Section II, supra; Section IV.C, infra. Claim 14 concerns nothing more
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`than a non-technical idea of selling data in exchange for payment and restricting ac-
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`cess 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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`Second, claim 14 does not solve a technical problem using a technical solution
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`because 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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`12
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`Covered Business Method Patent Review
`United States Patent No. 7,334,720
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`notion of coupling of data access to payment,6 as claimed in the ’720, is not a tech-
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`nical solution. Even if the solution were somehow deemed “technical” (it is not), this
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`would not alter that there was no technical problem presented and addressed by
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`the ’720—“[d]ifficulty implementing an automated or technical solution to a problem
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`that is not technical does not transform that non-technical problem into a technical one.”
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`CBM2012-00007, Pap. 16 at 17.
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`In sum, the “invention” of claim 14 concerns no more than the non-technical
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`idea of restricting access to content for payment to solve the business problem of data
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`piracy. For this reason, too, claim 14 does not claim a technological invention.
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`B. Related Matters and Mandatory Notice Information; Petitioner Is
`a Real Party In Interest Sued for and Charged With Infringement
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`Petitioner Apple is the real party-in-interest. Smartflash’s complaint in 6:13-cv-
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`447, Smartflash LLC. et al. v. Apple Inc. et al, pending in E.D. Tex., asserts the ’720 Pa-
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`tent against Petitioner. Pursuant to Rule 42.8(b)(2), the ’720 is also the subject of
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`Smartflash LLC et al. v. Samsung et al., No.6:13-cv-448 (E.D. Tex), to which Apple is not
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`a party. Petitioner further identifies the following administrative matters: App’n No.
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`10/111,716 (filed as No. PCT/GB00/4110). Petitioner previously filed two CBM pe-
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`titions on this patent, CBM2014-00104/105, on §§102 and 103 grounds, which were
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`6 Moreover, the idea of providing access to data in exchange for a payment was itself
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`known. See, e.g., Exs. 1307; 1306 Abstract, 1:67-2:9; 1308 Abstract, 4:27-35.
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`13
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`Covered Business Method Patent Review
`United States Patent No. 7,334,720
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`not instituted. Petitioner has concurrently filed another CBM Petition on the ’720 Pa-
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`tent. Petitioner previously filed CBM petitions on the following related patents:
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`8,118,221, 8,033,458, 8,061,598, 8,336,772, and 7,942,317 (CBM2014-00102/103/
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`106/107/108/109/110/111/112/113). The following were instituted: CBM2014-
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`00102/103/106-109/112/113. More recently, Petitioner filed the related petitions:
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`CBM2015-00015/16/17/18 (’221, ’458, ’598, ’317 patents). 7 Lead/backup counsel
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`and service information are designated in the signature block.
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`IV. DETAILED EXPLANATION OF REASONS FOR RELIEF
`REQUESTED, SHOWING IT IS MORE LIKELY THAN NOT THAT
`AT LEAST ONE CHALLENGED CLAIM IS UNPATENTABLE
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`Pursuant to §§ 42.22, 42.208, and 42.304(b), a full statement of reasons for the
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`relief requested, including a detailed explanation of the evidence, and the governing
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`law, rules and precedent is provided below. § IV.A lists and explains the bases for Pe-
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`titioner’s relevant claim constructions for the challenged claims. §§ IV.B and IV.C
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`provide a detailed explanation for why it is more likely than not that each challenged
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`claim is unpatentable under §§101 and 103, respectively. In particular: Ground 1:
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`Claims 3 and 13-15 recite unpatentable subject matter under §101; Ground 2: claims
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`3 and 13-15 are obvious in light of Stefik in view of Poggio and Kopp; Ground 3:
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`7 Samsung Electronics America filed CBM petitions on this (CBM2014-00190/196)
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`and related Patents Nos. 8,033,458 (CBM2014-00192/197); 8,061,598 (CBM2014-
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`00193/198); 8,118,221 (CBM2014-00194/199); 8,336,772 (CBM2014-00200/204).
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`14
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`

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`claims 3 and 13-15 are obvious in light of Stefik in view of Poggio, Kopp, and Smith.
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`Covered Business Method Patent Review
`United States Patent No. 7,334,720
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`Lest Patent Owner argue, as suggested in a recent call with the Board regarding
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`related CBM challenges (e.g., CBM2014-00015), that the Board should deny review
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`under § 325(d) without regard to this petition’s merits in light of several recent deci-
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`sions of the Board concerning IPRs–which are limited by statute in ways that CBMs
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`are not, see, e.g., § 315(b) (barring IPRs after 1 year from service of infringement com-
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`plaint except in the case of joinder of another petition); compare §315(e)(2) (IPR litiga-
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`tion estoppel for arguments “petitioner raised or reasonably could have raised”), with AIA §
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`18(a)(1)(D)(CBM litigation estoppel only for arguments “petitioner raised”)–Petitioner
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`notes that this Petition does not raise substantially the same arguments or prior art as
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`the original petitions. This petition, e.g., raises § 101 arguments relying on the Alice
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`decision post-dating the original petitions,8 which raised no § 101 arguments, and pre-
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`sents new prior art with explicit disclosure of limitations the Board construed and found absent
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`from the previously-cited art. See, e.g., CBM2013-00009, Pap. 10 at 20-21 (rejecting argu-
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`ment under § 325(d) that cited art was “substantially the same” as art previously be-
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`fore PTO where “recognition” of principle in newly-cited reference was “not ex-
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`pressed so clearly in [earlier considered] references”). Further, as such IPR-related
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`8 See, e.g., Ultramercial, Inc. v. Hulu, LLC, -- F.3d --, No. 2010-1544, 2014 WL 5904902,
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`at *2 (Fed. Cir