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` CBM2015-00031
`United States Patent No. 8,336,772 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`
`____________
`
`Case CBM2015-00031
`Patent 8,336,772 B2
`
`____________
`
`
`CORRECTED PETITION FOR COVERED BUSINESS METHOD PA-
`TENT REVIEW OF UNITED STATES PATENT NO. 8,336,772 PURSU-
`ANT 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.
`
`

`

`INTRODUCTION ....................................................................................................... 1
`I.
`II. OVERVIEW OF FIELD OF THE CLAIMED INVENTION ......................... 6
`III. PETITIONER HAS STANDING ............................................................................ 8
`A.
`The ’772 Patent Is a Covered Business Method (“CBM”) Patent ............. 8
`1.
`Exemplary Claim 8 Is Financial In Nature ........................................ 9
`2.
`Claim 8 Does Not Cover A Technological Invention ................... 11
`(a)
`Claim 8 Does Not Recite A Technological Feature
`That Is Novel and Unobvious ............................................. 12
`Claim 8 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 ..................... 15
`IV. DETAILED EXPLANATION OF REASONS FOR RELIEF
`REQUESTED, SHOWING IT IS MORE LIKELY THAN NOT
`THAT AT LEAST ONE CHALLENGED CLAIM IS
`UNPATENTABLE .................................................................................................... 16
`A.
`Claim Construction .......................................................................................... 19
`B.
`The Challenged Claims Are Unpatentable Under 35 U.S.C. § 101 .......... 22
`1.
`Claims Are Directed To Abstract Ideas ........................................... 24
`2.
`Claims Do Not Disclose An “Inventive Concept” That Is
`“Significantly More” Than An Abstract Idea .................................. 27
`Field Of Use Limitations Cannot Create Patent Eligibility ........... 27
`Generic Computer Implementation Cannot Transform
`Abstract Ideas Into Patent Eligible Inventions ............................... 28
`Functional Nature Confirms Preemption and Ineligibility ............ 33
`5.
`6. Machine-or-Transformation Test Also Confirms Patent
`Ineligibility ............................................................................................. 34
`The Challenged Claims Are Invalid Under § 103 ....................................... 35
`1.
`Overview of Ginter .............................................................................. 35
`2. Motivation to Combine Ginter with Poggio.................................... 37
`3. Motivation to Combine Ginter with Poggio and Subler ............... 39
`4. Motivation to Combine Ginter with Poggio, Subler, and Sato ..... 40
`
`(b)
`
`3.
`4.
`
` CBM2015-00031
`United States Patent No. 8,336,772 B2
`
`
`
`TABLE OF CONTENTS
`
`i
`
`B.
`
`C.
`
`

`

` CBM2015-00031
`United States Patent No. 8,336,772 B2
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`
`
`5.
`
`Claims 1, 5, 8, and 10 are Obvious in Light of Ginter in View
`of Subler and Poggio (Ground 2), Obvious in Light of
`Ginter in View of Subler, Poggio, and Sato (Ground 3)................ 41
`(a)
`Cl. 1: A handheld multimedia terminal, comprising: ....... 42
`(b)
`Cl. 1: a wireless interface configured to interface
`with a wireless network for accessing a remote
`computer system; ................................................................... 42
`Cl. 1: non-volatile memory configured to store
`multimedia content, wherein said multimedia
`content comprises one or more of music data,
`video data and computer game data; .................................. 44
`Cl. 1: a program store storing processor control
`code; ........................................................................................ 45
`Cl. 1: a processor coupled to said non-volatile
`memory, said program store, said wireless interface
`and a user interface to allow a user to select and
`play said multimedia content; .............................................. 45
`Cl. 1: a display for displaying one or both of said
`played multimedia content and data relating to said
`played multimedia content; wherein the processor
`control code comprises: ....................................................... 46
`Cl. 1: code to receive said identifier data; .......................... 51
`Cl. 1: code to present to a user on said display said
`identified one or more items of multimedia content
`available from the non-volatile memory; ........................... 53
`Cl. 1: code to receive a user selection to select at
`least one of said one or more of said stored items
`of multimedia content; ......................................................... 55
`Cl. 1: code responsive to said user selection of said
`at least one selected item of multimedia content to
`transmit payment data relating to payment for said
`at least one selected item of multimedia content via
`said wireless interface for validation by a payment
`validation system; .................................................................. 55
`Cl. 1: code to receive payment validation data via
`said wireless interface defining if said payment
`validation system has validated payment for said at
`least one selected item of multimedia content; and ......... 59
`
`(g)
`(h)
`
`(c)
`
`(d)
`
`(e)
`
`(f)
`
`(i)
`
`(j)
`
`(k)
`
`ii
`
`

`

` CBM2015-00031
`United States Patent No. 8,336,772 B2
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`
`
`(l)
`
`
`(m)
`
`(n)
`
`(o)
`
`(p)
`
`Cl. 1: code to control access to said at least one
`selected item of multimedia content on said
`terminal responsive to said payment validation
`data, ........................................................................................ 62
`Cl. 1: wherein said user interface is operable to
`enable a user to select said at least one item of
`multimedia content available from said non-volatile
`memory; and........................................................................... 66
`Cl. 1: wherein said user interface is operable to
`enable a user to access said at least one selected
`item of multimedia content responsive to said code
`to control access permitting access to said at least
`one selected item of multimedia content. .......................... 68
`Cl. 5: A handheld multimedia terminal as claimed
`in claim 1, further comprising code to retrieve
`supplementary data via said wireless interface and
`output said supplementary data to said user using
`said display. ............................................................................. 69
`Cl. 8: A data access terminal for controlling access
`to one or more content data items stored on a data
`carrier, the data access terminal comprising: ..................... 70
`Cl. 8: a user interface; ............................................................ 73
`Cl. 8: a data carrier interface; ............................................... 74
`Cl. 8: a program store storing code implementable
`by a processor; and ................................................................ 75
`Cl. 8: a processor coupled to the user interface, to
`the data carrier interface and to the program store
`for implementing the stored code, the code
`comprising: ............................................................................. 76
`Cl. 8: Code Terms .................................................................. 77
`Cl. 10: A data access terminal as claimed in claim 8,
`wherein said data access terminal is integrated with
`a mobile communications device and audio/video
`player. ...................................................................................... 77
`CONCLUSION........................................................................................................... 79
`
`(q)
`(r)
`(s)
`
`(t)
`
`(u)
`(v)
`
`V.
`
`
`iii
`
`

`

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`
`
`EXHIBIT LIST
`1201
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`1202
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`1203
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`1204
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`1205
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`1206
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`1207
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`1208
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`1209
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`1210
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`1211
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`1212
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`1213
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`1214
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`1215
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`1216
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`1217
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`1218
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` CBM2015-00031
`United States Patent No. 8,336,772 B2
`
`
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`U.S. Patent No. 8,336,772
`
`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 Data-
`bases 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. 8,336,772
`
`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 (transla-
`tion)
`Eberhard von Faber, Robert Hammelrath, and Frank-Peter
`Heider, “The Secure Distribution of Digital Contents,” IEEE
`(1997)
`
`iv
`
`

`

` CBM2015-00031
`United States Patent No. 8,336,772 B2
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`
`
`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
`
`Declaration of Michael P. Duffey In Support of Apple Inc.’s
`Petition for Covered Business Method Patent Review
`Declaration of Megan F. Raymond In Support of Apple Inc.’s
`Petition 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
`
`U.S. Patent No. 4,337,483
`
`U.S. Patent No. 7,725,375
`
`International Publication No. WO 95/34857
`
`JP Patent Application Publication No. H10-269289 (transla-
`tion)
`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
`
`File History for U.S. Patent No. 8,118,221
`
`U.S. Patent No. 7,334,720
`
`File History for U.S. Patent No. 7,334,720
`
`U.S. Patent No. 5,646,992
`
`EXHIBIT LIST
`1219
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`1220
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`1221
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`1222
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`1223
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`1224
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`1225
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`1226
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`1227
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`1228
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`1229
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`1230
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`1231
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`1232
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`1233
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`1234
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`1235
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`1236
`
`v
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`

`

` CBM2015-00031
`United States Patent No. 8,336,772 B2
`
`I.
`
`INTRODUCTION
`
`Pursuant to § 321 and Rule § 42.304,2 the undersigned, on behalf of and acting
`
`in a representative capacity for Apple Inc. (“Petitioner”), petitions for review under
`
`the transitional program for covered business method patents of claims 1, 5, 8, and 10
`
`(challenged claims) of U.S. Pat. No. 8,336,772, issued to Smartflash Technologies
`
`Limited and assigned to Smartflash LLC (“Patentee”). Petitioner asserts it is more
`
`likely than not that the challenged claims are unpatentable for the reasons herein and
`
`requests review of, and judgment against, the challenged claims under §§ 101 and 103.
`
`As discussed in Sec. III.B., infra, Petitioner has concurrently filed two other
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`CBM Petitions, requesting judgment against different ’772 claims based on different
`
`prior art. The Director, pursuant to Rule 325(c), may determine that merger or at min-
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`imum coordination of these proceedings is appropriate.
`
`Petitioner previously filed CBM2014-00110/111 seeking review of the ’772 pa-
`
`tent under §§102 and 103. In its Decisions Denying Institution, the Board deter-
`
`mined that Petitioner had not shown that it was more likely than not that it would
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`prevail in demonstrating that Stefik and/or Ginter, or Stefik or Ginter combined with
`
`Poggio and/or Sato rendered obvious limitations related to “code to request identifier
`
`
`2 Petitioner is demonstrating, in pending litigation, that these claims are invalid for
`
`numerous additional reasons. All section cites herein are to 35 U.S.C. or 37 C.F.R., as
`
`the context indicates, and all emphasis herein added unless otherwise noted.
`
`
`
`

`

` CBM2015-00031
`United States Patent No. 8,336,772 B2
`
`
`data...” CBM2014-00110, Pap. 7, at 15-18; -00111, Pap. 7, at 15-21. In light of the
`
`Board’s decision, Petitioner now identifies additional prior art—Subler (Ex. 1236)—
`
`with explicit disclosures of the limitations related to “code to request identifier da-
`
`ta…” For example, Subler discloses an end user device that provides a powerful,
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`easy-to-use interface to browse through and analyze products available from a storage
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`database. Ex. 1236 3:46-52. The end user device software includes code that retrieves
`
`product information from the database and presents the information to the user in a
`
`windowed graphical user interface. Ex. 1236 4:49-54; 5:26-30. Petitioner has also iden-
`
`tified additional disclosures in Ginter and Poggio concerning these limitations, further
`
`confirming a POSA3 would have found it obvious and routine to implement the sys-
`
`tem disclosed by Ginter and Poggio using the expressly advantageous teachings of
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`Subler and/or Sato, detailed in §IV.C, infra. See, e.g., Ex. 1219 ¶¶ 58-66.
`
`The challenged claims merely recite basic computer systems well-known in the
`
`field of data storage and access, including a “handheld multimedia terminal for retriev-
`
`
`3 References to a “POSA” refer to the knowledge or understanding of a person of or-
`
`dinary skill in the art as of October 25, 1999. A POSA would have at least a B.S.
`
`degree in E.E., C.S., or a telecommunications related field, and at least three years of
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`industry experience that included client-server data/information distribution and
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`management architectures. See Ex. 1219 ¶¶ 25, 28 n.3.
`
`2
`
`

`

` CBM2015-00031
`United States Patent No. 8,336,772 B2
`
`
`ing and accessing protected multimedia content” and a “data access terminal for con-
`
`trolling access to one or more content data items stored on a data carrier.” Ex. 1201
`
`1:24-26. Claim 8, for example, recites four rudimentary components of a data access
`
`terminal “for controlling access to one or more content data items”—(A) a user interface, (B) a
`
`data carrier interface, (C) a program store storing code implementable by a processor, and
`
`(D) a processor . . . for implementing the stored code. The recited code is similarly ele-
`
`mentary, requesting and receiving user identifier data (D1-D2), presenting available content data
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`items (D3), receiving a selection and transmitting payment for the data item (D4-D5), receiving
`
`payment validation data (D6), and controlling access to the data item in response (D7):
`
`8. A data access terminal for controlling access to one or more content
`data items stored on a data carrier, the data access terminal comprising:
`[A] a user interface;
`[B] a data carrier interface;
`[C] a program store storing code implementable by a processor; and
`[D] a processor coupled to the user interface, to the data carrier inter-
`face and to the program store for implementing the stored code, the
`code comprising:
`[D1] code to request identifier data identifying one or more content
`data items stored on the data carrier;
`[D2] code to receive said identifier data;
`[D3] code to present to a user via said user interface said identified
`one or more content data items available from the data carrier;
`[D4] code to receive a user selection selecting at least one of said one
`
`3
`
`

`

` CBM2015-00031
`United States Patent No. 8,336,772 B2
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`
`
`or more of said stored content data items;
`[D5] code responsive to said user selection of said selected content
`data item to transmit payment data relating to payment for said se-
`lected content item for validation by a payment validation system;
`[D6] code to receive payment validation data defining if said payment
`validation system has validated payment for said content data item;
`and [D7] code to control access to said selected content data item re-
`sponsive to the payment validation data.
`Ex. 1201. But at the patent’s earliest claimed priority date, these simple elements and
`
`their combination were well known to any POSA. The patent acknowledges that the
`
`idea of providing access to data in exchange for a payment (e.g., purchase of music on
`
`a CD) was already well known. E.g., Ex. 1201 5:13-16 (“the purchase outright option
`
`may be equivalent to the purchase of a compact disc (CD)”). And, as demonstrated herein,
`
`the prior art was teeming with disclosures of this basic concept and its straightforward
`
`implementation in physical systems.
`
`Moreover, claim 8 clearly involves no “technology” at all other than “a data access
`
`terminal,” with user and data carrier interfaces, a program store storing code, and a
`
`processor that implements the well-known steps disclosed in the specification—all of
`
`which the patent concedes were well known and commonplace, stating that this “ter-
`
`minal comprises a general purpose computer.” E.g., id. 4:7, 16:47-52. Claim 8 recites no
`
`more than a system for requesting and retrieving data from a data carrier while receiv-
`
`ing and responding to payment data for validation and controlling access to the data
`
`4
`
`

`

` CBM2015-00031
`United States Patent No. 8,336,772 B2
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`
`based on payment. And the other challenged claims are nothing but variations on this
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`simple theme, with the addition, in the challenged “handheld multimedia terminal”
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`claims, of equally generic components (e.g., known wireless interface, non-volatile
`
`memory, and a display).4 See, e.g., id. 12:37-40 (“physical embodiment of the system is not criti-
`
`cal and a skilled person will understand that the terminals, data processing systems and the like can
`
`all take a variety of forms.”).
`
`Indeed, as confirmed recently in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct.
`
`2347 (2014)—decided after Petitioner’s original challenges to the ’772 were filed—the
`
`challenged claims are also directed to patent ineligible subject matter under § 101. As
`
`the Board has noted, “the ’772 patent makes clear that the asserted novelty of the in-
`
`vention is not in any specific improvement of software or hardware, but in the meth-
`
`od of controlling access to data,” CBM2014-00110, Pap. 7, at 13, and the challenged
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`claims are directed to not more than the unpatentable abstract idea of paying for and
`
`controlling access to data, with at most the addition of well-known, routine and con-
`
`
`4 Claim 1, e.g., recites a “handheld multimedia terminal,” but simply adds to the fea-
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`tures of claim 8 the requirements of a wireless interface, non-volatile memory, and a
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`display, while specifying the user interface enables a user to perform certain functions.
`
`And Claim 10, which depends from claim 8, simply specifies integration with a mobile
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`communications device. Ex. 1201.
`
`5
`
`

`

` CBM2015-00031
`United States Patent No. 8,336,772 B2
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`ventional features—in particular, generic computer implementation that cannot con-
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`fer patentability on these patent-ineligible abstractions. E.g., Alice, 134 S. Ct. at 2359-
`
`
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`60. Each challenged claim recites ineligible subject matter and is also obvious; thus,
`
`each is unpatentable.
`
`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 was well-known to a POSA, and their combination as claimed would
`
`have been at minimum obvious. See, e.g., Ex. 1219 § V. In March 1991, for example,
`
`U.S. Pat. No. 4,999,806 issued, disclosing a system and method for sale and distribu-
`
`tion of digital products (e.g., software) by phone, and for content protection. See, e.g.,
`
`Ex. 1206 Abstract 1:67-2:9. Ex. 1206 also discloses (1) different types of access, e.g.,
`
`purchase vs. rental and (2) a Control Transfer Program and a Primary Protection Pro-
`
`gram to prevent unauthorized copies. See Ex. 1206 Abstract; 2:65-3:23; Ex. 1219 ¶ 30.
`
`In April 1992, U.S. Patent No. 5,103,392 issued, disclosing use-based charging
`
`for digital products. See, e.g., id. Ex. 1211 1:64-2:17. Ex. 1211’s emphasis on assuring
`
`permission to access a program and compensating providers underscores this existing
`
`focus in the art on digital rights management (“DRM”), over eight years before the
`
`claimed priority date. See, e,g., Ex. 1219 ¶ 33.
`
`Also in 1997, Exhibit 1218 (“von Faber”) observed that “[e]lectronic commerce sys-
`
`tems dealing with the distribution of digital contents . . . have to couple the use of the provid-
`
`6
`
`

`

` CBM2015-00031
`United States Patent No. 8,336,772 B2
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`ed digital goods with a prior payment for the goods in a way which cannot be bypassed,” pro-
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`
`
`posing a system where customers purchase keys required to utilize encrypted content.
`
`See, e.g., id. at 7; see also id. Fig. 1. Von Faber notes its system could be used for a varie-
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`ty of known distribution and payment methods. See, e.g., id. 13. Von Faber further ad-
`
`dressed the known issue of payment distribution to providers. Ex. 1219 ¶¶ 36-38.
`
`Also in 1996 and 1997, two Stefik patents issued, U.S. Patent No. 5,530,235
`
`(“Stefik ’235,” filed Feb. 16, 1995 and issued June 25, 1996), and U.S. Patent No.
`
`5,629,980 (“Stefik ’980,” filed Nov. 23, 1994 and issued May 13, 1997). Exs. 1212 and
`
`1213. Stefik ’235 discloses “[a] Document Card (DocuCard) for storing documents
`
`and which is content revealing. The DocuCard is a transportable unit having a non-
`
`volatile storage means for storing information in a digital form, a control processor
`
`for processing user initiated functions; an I/O port for interfacing to external devices
`
`for reading and writing digital information, and a user interface for allowing a user to
`
`directly interact with the DocuCard.” Ex. 1212 Abstract. Stefik also discloses a broad-
`
`er framework within which the DocuCard is used, including the protection of content
`
`with “usage rights.” Ex. 1213 Abstract (“A system for controlling use and distribution of digi-
`
`tal works… Usage rights are granted by the ‘owner’ of a digital work to ‘buyers’ of the digital
`
`work . . . [and] define how a digital work may be used and further distributed by the buyer. Each
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`right has associated with it certain optional specifications which outline the conditions and fees upon
`
`which the right may be exercised.”). Stefik’s digital works are stored in a “repository” that
`
`7
`
`

`

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`United States Patent No. 8,336,772 B2
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`processes requests for access—including for utilizing content (viewing, executing, or
`
`printing) or transporting content (copying, borrowing, or transferring)—and evaluates
`
`the relevant usage rights to determine whether such access is permitted. See, e.g., id.
`
`Abstract (“Digital works are stored in a repository[, which] will process each request to access a dig-
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`ital work by examining the corresponding usage rights . . . Access to digital works for the purposes of
`
`transporting between repositories (e.g. copying, borrowing or transfer) is carried out using a digital
`
`work transport protocol. Access to digital works for the purposes of replay by a digital work playback
`
`device (e.g. printing, displaying or executing) is carried out using a digital work playback protocol.”).
`
`Content storage and utilization on portable devices, including mobile commu-
`
`nication devices such as cellular phones, was also well-known. As one example, Ex.
`
`1216 (pub’d Aug. 26, 1999), discloses a cell phone for storing digital content in non-
`
`volatile memory and accessing that content. See, e.g., Ex. 1216 5; Ex. 1219 ¶ 41. Thus,
`
`as these background examples and the additional prior art detailed below in IV.C (in-
`
`cluding the primary prior art Ginter patent) illustrate, the prior art was rife with
`
`awareness and discussion of the same supposed “invention” now memorialized in the
`
`challenged claims. Long before the purported priority date, disclosures abounded of
`
`the very features that Smartflash now seeks to claim as its exclusive property. As out-
`
`lined below, the challenged claims are obvious.
`
`III. PETITIONER HAS STANDING
`A.
`
`The ’772 Patent Is a Covered Business Method (“CBM”) Patent
`
`8
`
`

`

` CBM2015-00031
`United States Patent No. 8,336,772 B2
`
`
`The ’772 patent is a CBM patent under § 18(d)(1) of the AIA, and Petitioner
`
`certifies it is available for review under § 42.304(a). See also CBM2014-0010, Pap. 7, 9-
`
`14 (finding claim 8 satisfies requirement). Although in fact numerous claims qualify, a
`
`patent with even one claim covering a CBM is considered a CBM patent. See CBM
`
`2012-00001, Doc. 36 at 26; 77 Fed. Reg. 48,709 (Aug. 14, 2012). Petitioner thus ad-
`
`dresses exemplary Claim 8 (quoted above).
`
`1.
`A CBM patent is “a patent that claims a method or corresponding apparatus for per-
`
`Exemplary Claim 8 Is Financial In Nature
`
`forming data processing or other operations used in the practice, administration, or management of a
`
`financial product or service, except that the term does not include patents for technological
`
`inventions.” AIA § 18(d)(1); 37 C.F.R. § 42.301. “[T]he definition of covered busi-
`
`ness method patent was drafted to encompass patents claiming activities that are finan-
`
`cial in nature, incidental to a financial activity or complementary to a financial activity.’” 77 Fed.
`
`Reg. 48,734-35 (Aug. 14, 2012) (citing 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)).
`
`“[F]inancial product or service” is to be interpreted broadly, id., and “financial . . . simp-
`
`ly means relating to monetary matters”—it does not require any link to traditional financial
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`industries such as banks. See, e.g., CBM2012-00001, Pap. 36 at 23. See also CBM2013-
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`00020, Pap. 14 at 11-12; CBM2013-00017, Pap. 8 at 5-6.
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`The ’772 patent includes claims to a “data access terminal” (e.g., a “convention-
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`al computer” or mobile phone (Ex. 1201 4:7-8)), that reads payment data from a data
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`carrier (e.g., standard smart card (id. 11:35)), transmits it to a validation system for au-
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`
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`thorizing payment, and allows access to content in exchange for payment (id. 8:26-28).
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`See AIA § 18(d)(1); 37 C.F.R. § 42.301(a). The patent alleges this terminal is part of a
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`system that allows content owners to make content available without fear of losing
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`revenue, and claim 8 specifies that the terminal is “for controlling access to one or
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`more content data items.” Ex. 1201 2:15-19; Cl. 8. See also id. Fig 12(a)-(e). More gen-
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`erally, the patent is about “[d]ata storage and access systems [that] enable downloading
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`and paying for data.” Id. Abstract. “The combination of payment data and stored
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`content data . . . helps reduce the risk of unauthorized access.” Id. And in asserting
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`the patent, Smartflash conceded the alleged invention relates to a financial activity or
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`transaction, stating “[t]he patents-in-suit generally cover a portable data carrier for
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`storing data and managing access to the data via payment information and/or use status rules.
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`The patents-in-suit also generally cover a computer network . . . that serves data and
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`manages access to data by, for example, validating payment information.” Ex. 1202 ¶ 17.
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`Indeed, the specification confirms that the recited “data access terminal” is “for
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`storing and paying for data,” (Ex. 1201 1:20-22), “can communicate with a bank or other fi-
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`nancial services provider to control payment” (id. 3:53-55), and can “validate payment with an
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`external authority such as a bank” (id. 2:8-10). Further, “[p]ayment for the data item or
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`items requested may either be made directly to the system owner or may be made to an e-payment
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`system” (id. 20:59-61), and such systems may be provided “according to, for example,
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`MONDEX, Proton, and/or Visa cash compliant standards” and “payment authentication . . .
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`may [] be performed by, for example, a data access terminal . . . using payment management
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`code.” Id. 13:43-64. See also id. 7:66-8:61 (esp. 8:26-28); 11:65-12:4; Fig. 12(a)-(e).
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`Claim 8 expressly recites software to perform data processing and other opera-
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`tions in connection with the recited “payment validation system” (e.g., “to transmit
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`payment data . . . for validation by a payment validation system” and “code to receive
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`payment validation data defining if said payment validation system has validated pay-
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`ment”), and further requires software “to control access to said selected content data
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`item responsive to the payment validation data.” Id. Thus, claim 8, which explicitly
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`describes transmitting payment data to a payment validation system, receiving pay-
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`ment validation, and controlling access to data based on payment, clearly concerns a
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`computer system (corresponding to methods discussed in the patent) for performing
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`data processing and other operations used in the practice, administration, or management of
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`a financial activity and service. See, e.g., CBM2013-00020, Pap. 14 at 10-11.
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`2.
`Further, claim 8 does not cover a “technological invention” within the excep-
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`Claim 8 Does Not Cover A Technological Invention
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`tion in AIA § 18(d)(1), because it does not claim “subject matter as a whole [that] re-
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`cites a technological feature that is novel and unobvious over the prior art[] and solves a technical
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`problem using a technical solution.” § 42.301(b). To the contrary, the specification explains
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`that claim 8’s “data access terminal” was commonplace, and is not directed to a tech-
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`nical problem, but rather offers a non-technical solution to the business problem of data piracy.
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`(a)
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`Claim 8 Does Not Recite A Technological Feature That Is Novel
`and Unobvious
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`First, no “technological feature” of claim 8 is novel and unobvious. The PTAB
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`has confirmed that “[m]ere recitation of known technologies, such as computer hard-
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`ware, communication or computer networks, software, memory, computer-readable
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`storage medium, scanners, display devices or databases, or specialized machines, such
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`as an ATM or point of sale device,” or “[r]eciting the use of known prior art technol-
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`ogy to accomplish a process or method, even if that process or method is novel and
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`non-obvious” will “not typically render a patent a technological invention.” See, e.g., 77
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`Fed. Reg. 48,764 (Aug. 14, 2012). As the PTAB further stated, “combining prior art
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`structures to achieve a normal, expected, or predictable result of that combination” is
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`not a technological invention. 77 Fed. Reg. 157 (Aug. 14, 2012) at 48,764.
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`As its language makes clear, claim 8 involves no “technology” at all other than “a
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`data access terminal,” which includes a user interface, data carrier interface, a program
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`store storing code, and a processor that implements the well-known steps disclosed in
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`the specification. Ex. 1201. “The data access terminal may be a conventional computer or,
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`alternatively, it may be a mobile phone,” both of which were known in the art well be-
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`fore the earliest claimed priority date. Id. 4:7; 16:47-52. Indeed, the specification dis-
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`claims the use of particular hardware, relying instead on conventional hardware known
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`to a POSA: “[t]he physical embodiment of the system is not critical and a skilled person will
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`understand that the terminals, data processing systems and the like can all take a variety of
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`forms.” Id. 12:37-40.
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`The use of software (code) for requesting and presenting data, transmitting and
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`validating payment data, and exchanging content for payment, as disclosed in the
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`specification, was also exceedingly well known in the art, and could not transform the
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`claims into a technological invention. See, e.g., 77 Fed. Reg. 48,756 48,764 (Aug. 14,
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`2012) (“[m]ere recitation of known technologies, such as . . . software, memory, com-
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`puter-readable storage medium . . . [will] not typically render a patent a technological
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`invention.”); Ex. 1219 § V, ¶¶ 79-87. The functions performed by the code (D1-
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`D4)—related to the identification, access, and control of data as disclosed in the spec-
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`ification—were commonplace before the earliest claimed priority date. See, e.g., Ex.
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`1206 8:62-9:12; Ex. 1201 1:40-50. Further, t