Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`Entered: May 28, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-00032
`Patent 8,336,772 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 11
`Entered: May 28, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-00032
`Patent 8,336,772 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`CBM2015-00032
`Patent 8,336,772 B2
`
`A. Background
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Corrected Petition requesting covered
`
`business method patent review of claims 14, 19, and 22 (the “challenged
`
`claims”) of U.S. Patent No. 8,336,772 B2 (Ex. 1301, “the ’772 patent”)
`
`pursuant to § 18 of the Leahy-Smith America Invents Act (“AIA”).1 Paper
`
`5 (“Pet.”). Smartflash LLC (“Patent Owner”) filed a Preliminary Response.
`
`Paper 8 (“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 324, which provides that a
`
`covered business method patent review may not be instituted “unless . . . it is
`
`more likely than not that at least 1 of the claims challenged in the petition is
`
`unpatentable.”
`
`Upon consideration of the Petition and Preliminary Response, we
`
`determine that Petitioner has demonstrated that it is more likely than not that
`
`the challenged claims are unpatentable. Accordingly, we institute a covered
`
`business method review of claims 14, 19, and 22 of the ’772 patent.
`
`B. Asserted Grounds
`
`Petitioner argues that the challenged claims are unpatentable based on
`
`the following grounds (Pet. 19):
`
`Basis Claims Challenged
`§ 101 14, 19, and 22
`§ 103 14, 19, and 22
`
`References
`Not Applicable
`Stefik2, Poggio3, and Subler4
`
`1 Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011).
`2 U.S. Patent No. 5,530,235 (Ex. 1312) (“Stefik ’235”), and U.S. Patent No.
`5,629,980 (Ex. 1313) (“Stefik ’980”) (collectively, “Stefik”).
`3 European Patent Application, Publication No. EP0809221A2 (translation)
`(Ex. 1315) (“Poggio”).
`4 U.S. Patent No. 5,646,992 (Ex. 1336) (“Subler”).
`
`2
`
`
`
`CBM2015-00032
`Patent 8,336,772 B2
`
`Basis Claims Challenged
`References
`Stefik, Poggio, Subler, and Sato5 § 103 14, 19, and 22
`
`Petitioner also provides a declaration from Anthony J. Wechselberger.
`
`Ex. 1319.
`
`C. Related Matters
`
`The parties indicate that the ’772 patent is the subject of the following
`
`district court cases: Smartflash LLC v. Apple Inc., Case No. 6:13-cv-447
`
`(E.D. Tex.); Smartflash LLC v. Samsung Electronics Co., Case No. 6:13-cv-
`
`448 (E.D. Tex.). Pet. 18; Paper 6, 3. Patent Owner also indicates that the
`
`’772 patent is the subject of two other district court cases: Smartflash LLC
`
`v. Google, Inc., Case No. 6:14-cv-435 (E.D. Tex.); Smartflash LLC, et al. v.
`
`Apple Inc., Case No. 6:15-cv-145 (E.D. Tex.), all pending in the U.S.
`
`District Court for the Eastern District of Texas (E.D. Tex.). Paper 10, 4–5.
`
`Petitioner previously filed two Petitions for covered business method
`
`patent review of the ’772 Patent: CBM2014-00110 and CBM2014-00111.
`
`A covered business method patent review was denied in both cases. Apple
`
`Inc. v. Smartflash LLC, Case CBM2014-00110, slip op. at 19 (PTAB Sept.
`
`30, 2014) (Paper 7); Apple Inc. v. Smartflash LLC, Case CBM2014-00111,
`
`slip op. at 22 (PTAB Sept. 30, 2014) (Paper 7). Several related patents,
`
`which claim priority back to a common series of applications, are currently
`
`the subject of CBM2014-00102, CBM2014-00106, CBM2014-00108,
`
`CBM2014-00112, CBM2015-00015, CBM2015-00016, CBM2015-00017,
`
`and CBM2015-00018, filed by Apple.
`
`
`5 JP Patent Application Publication No. H11-164058 (including translation)
`(Ex. 1317) (“Sato”).
`
`3
`
`
`
`CBM2015-00032
`Patent 8,336,772 B2
`
`Petitioner filed concurrently another two Petitions for covered
`
`business method patent review of the ’772 patent: CBM2015-00031 and
`
`CBM2015-00033. In addition, Petitioner concurrently filed two other
`
`Petitions for covered business method patent review challenging claims of
`
`other patents owned by Patent Owner, which disclose similar subject matter:
`
`CBM2015-00028 and CBM2015-00029.
`
`D. The ’772 Patent
`
`The ’772 patent relates to “a portable data carrier for storing and
`
`paying for data and to computer systems for providing access to data to be
`
`stored” and the “corresponding methods and computer programs.”
`
`Ex. 1301, 1:24–28. Owners of proprietary data, especially audio recordings,
`
`have an urgent need to address the prevalence of “data pirates,” who make
`
`proprietary data available over the internet without authorization.
`
`Id. at 1:32–58. The ’772 patent describes providing portable data storage
`
`together with a means for conditioning access to that data upon validated
`
`payment. Id. at 1:62–2:3. According to the ’772 patent, this combination of
`
`the payment validation means with the data storage means allows data
`
`owners to make their data available over the internet without fear of data
`
`pirates. Id. at 2:10–18.
`
`As described, the portable data storage device is connected to a
`
`terminal for internet access. Id. at 1:62–2:3. The terminal reads payment
`
`information, validates that information, and downloads data into the portable
`
`storage device from a data supplier. Id. The data on the portable storage
`
`device can be retrieved and output from a mobile device. Id. at 2:4–7. The
`
`’772 patent makes clear that the actual implementation of these components
`
`is not critical and the alleged invention may be implemented in many ways.
`
`4
`
`
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`CBM2015-00032
`Patent 8,336,772 B2
`
`See, e.g., id. at 25:59–62 (“The skilled person will understand that many
`
`variants to the system are possible and the invention is not limited to the
`
`described embodiments.”).
`
`E. Illustrative Claims
`
`As noted above, Petitioner challenges claims 14, 19, and 22. Claims
`
`14 and 19 are independent and claim 22 depends from claim 19. Claim 19 is
`
`illustrative of the claimed subject matter and is reproduced below:
`
`19. A data access terminal for retrieving a content data item
`from a data supplier and providing the retrieved data item to a
`data carrier, the data access terminal comprising:
`
`a first interface for communicating with the data supplier;
`a user interface;
`
`a data carrier interface;
`
`a program store storing code implementable by a
`processor; and
`
`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:
`
`code to request identifier data identifying one or more
`content data items available for retrieving;
`
`code to receive said identifier data identifying said one or
`more content data items available for retrieving;
`
`code to request content information pertaining to at least
`one of said one or more content data items identified by said
`identified data;
`
`code to receive said content information;
`
`code to present said content information to a user via said
`user interface pertaining to said identified one or more content
`data items available for retrieving;
`
`code to receive a user selection selecting at least one of
`said one or more of said content data items available for
`retrieving;
`
`5
`
`
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`CBM2015-00032
`Patent 8,336,772 B2
`
`code responsive to said user selection of said selected at
`least one content data item to transmit payment data relating to
`payment for said selected at least one content item for
`validation by a payment validation system;
`
`code to receive payment validation data defining if said
`payment validation system has validated payment for said
`selected at least one content data item; and
`
`code responsive to the payment validation data to retrieve
`said selected at least one content data item from a data supplier
`and to write said retrieved at least one content data item into
`said data carrier.
`
`Id. at 28:55–29:25.
`
`A. Claim Construction
`
`ANALYSIS
`
`While Petitioner presents constructions for several claim terms, no
`
`terms require express construction for purposes of this Decision.
`
`B. Covered Business Method Patent
`
`Section 18 of the AIA provides for the creation of a transitional
`
`program for reviewing covered business method patents. A “covered
`
`business method patent” is a patent that “claims a method or corresponding
`
`apparatus for performing data processing or other operations used in the
`
`practice, administration, or management of a financial product or service,
`
`except that the term does not include patents for technological inventions.”
`
`AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have only one
`
`claim directed to a covered business method to be eligible for review. See
`
`Transitional Program for Covered Business Method Patents—Definitions of
`
`Covered Business Method Patent and Technological Invention; Final Rule,
`
`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”) (Comment 8).
`
`6
`
`
`
`CBM2015-00032
`Patent 8,336,772 B2
`
`1. Financial Product or Service
`
`Petitioner asserts that claim 19 “expressly recites software to perform
`
`data processing and other operations in connection with the recited ‘payment
`
`validation system’ [and] thus clearly relates to a financial activity and
`
`providing a financial service.” Pet. 9. Based on this record, we agree with
`
`Petitioner that the subject matter recited by claim 19 is directed to activities
`
`that are financial in nature, namely data access conditioned on payment
`
`validation.
`
`Claim 19 recites “code . . . to transmit payment data relating to
`
`payment for said selected at least one content item for validation by a
`
`payment validation system,” “code to receive payment validation data
`
`defining if said payment validation system has validated payment for said
`
`selected at least one content data item,” and “code responsive to the payment
`
`validation data to retrieve said selected at least one content data item from a
`
`data supplier and to write said retrieved at least one content data item into
`
`said data carrier.” We are persuaded that payment validation is a financial
`
`activity, and conditioning data access based on payment validation amounts
`
`to a financial service. This is consistent with the Specification of the ’772
`
`patent, which confirms claim 19’s connection to financial activities by
`
`stating that the invention “relates to a portable data carrier for storing and
`
`paying for data.” Ex. 1301, 1:24–25. The Specification also states
`
`repeatedly that the disclosed invention involves managing access to data
`
`based on payment validation. See, e.g., Ex. 1301, 1:62–2:3, 6:64–7:1,
`
`20:59–63.
`
`Patent Owner disagrees that claim 19 satisfies the financial in nature
`
`requirement of AIA § 18(d)(1), arguing that that section should be
`
`7
`
`
`
`CBM2015-00032
`Patent 8,336,772 B2
`
`interpreted narrowly to cover only technology used specifically in the
`
`financial or banking industry. Prelim. Resp. 5–11. Patent Owner cites to
`
`various portions of the legislative history as support for its proposed
`
`interpretation. Id.
`
`We do not agree that the phrase “financial product or service” is as
`
`limited as Patent Owner proposes. The AIA does not include as a
`
`prerequisite for covered business method patent review, a “nexus” to a
`
`“financial business,” but rather a “method or corresponding apparatus for
`
`performing data processing or other operations used in the practice,
`
`administration, or management of a financial product or service.” AIA
`
`§ 18(d)(1). Further, contrary to Patent Owner’s view of the legislative
`
`history, the legislative history indicates that the phrase “financial product or
`
`service” is not limited to the products or services of the “financial services
`
`industry” and is to be interpreted broadly. CBM Rules, 77 Fed. Reg. at
`
`48,735–36. For example, the “legislative history explains that the definition
`
`of covered business method patent was drafted to encompass patents
`
`‘claiming activities that are financial in nature, incidental to a financial
`
`activity or complementary to a financial activity.’” Id. (citing 157 Cong.
`
`Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)).
`
`In addition, Patent Owner asserts that claim 19 is not directed to an
`
`apparatus or method that is financial in nature because claim 19 “omits the
`
`specifics of how payment is made.” Prelim. Resp. 10. We are not
`
`persuaded by this argument because § 18(d)(1) of the AIA does not include
`
`such a requirement, nor does Patent Owner point to any other authority that
`
`imposes such a requirement. Id. We determine that because claim 19 recites
`
`payment data and restricting access content based on such payment data, as
`
`8
`
`
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`CBM2015-00032
`Patent 8,336,772 B2
`
`Patent Owner acknowledges (id.), the financial in nature requirement of
`
`§ 18(d)(1) is satisfied.
`
`For the reasons stated above, and based on the particular facts of this
`
`proceeding, we conclude that the ’772 patent includes at least one claim that
`
`meets the financial in nature requirement of § 18(d)(1) of the AIA.
`
`2. Exclusion for Technological Inventions
`
`Petitioner asserts that claim 19 does not fall within § 18(d)(1)’s
`
`exclusion for “technological inventions.” Pet. 10–14. In particular,
`
`Petitioner argues that claim 19 “does not claim ‘subject matter as a whole
`
`[that] recites a technological feature that is novel and unobvious over the
`
`prior art[] and solves a technical problem using a technical solution.’”
`
`Pet. 10 (quoting 37 C.F.R. § 42.301(b)) (emphases in original). Patent
`
`Owner disagrees and argues that claim 19, as a whole, recites at least one
`
`technological feature that is novel and unobvious over the prior art. Prelim.
`
`Resp. 12.
`
`We are persuaded that claim 19 as a whole does not recite a
`
`technological feature that is novel and unobvious over the prior art. For
`
`example, claim 19 recites only features such as “first interface for
`
`communicating,” “user interface,” “data carrier interface,” “program store,”
`
`“processor,” and “code.”
`
`In addition, the ’772 patent makes clear that the asserted novelty of
`
`the invention is not in any specific improvement of software or hardware,
`
`but in the method of controlling access to data. For example, the ’772 patent
`
`states that “there is an urgent need to find a way to address the problem of
`
`data piracy,” (id. at 1:56–58) while acknowledging that the “physical
`
`embodiment of the system is not critical and a skilled person will understand
`
`9
`
`
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`CBM2015-00032
`Patent 8,336,772 B2
`
`that the terminals, data processing systems and the like can all take a variety
`
`of forms” (id. at 12:37–40). Thus, on this record, we determine that claim
`
`19 is merely the recitation of a combination of known technologies, which
`
`indicates that it is not a patent for a technological invention. See Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012).
`
`Patent Owner also argues that claim 19 falls within § 18(d)(1)’s
`
`exclusion for “technological invention” because it is directed to solving the
`
`technological problem of “responsive to payment validation data, retrieving
`
`a selected content data item from a data supplier and writing it into said data
`
`carrier, e.g., as part of a convenient, legitimate acquisition of data from a
`
`data supplier.” Prelim. Resp. 12. We are not persuaded by this argument
`
`because, as Petitioner argues, the problem being solved by claim 19 is a
`
`business problem—data piracy. Pet. 13. For example, the Specification
`
`states that “[b]inding the data access and payment together allows the
`
`legitimate owners of the data to make the data available themselves over the
`
`internet without fear of loss of revenue, thus undermining the position of
`
`data pirates.” Ex. 1301, 2:14–19. Therefore, based on the particular facts of
`
`this proceeding, we conclude that claim 19 does not recite a technological
`
`invention and is eligible for a covered business method patent review.
`
`3. Conclusion
`
`In view of the foregoing, we conclude that the ’772 patent is a covered
`
`business method patent under AIA § 18(d)(1) and is eligible for review
`
`using the transitional covered business method patent review program.
`
`C. Statutory Subject Matter
`
`Petitioner challenges claims 14, 19, and 22 as being directed to patent-
`
`ineligible subject matter under 35 U.S.C. § 101. Pet. 20–33. Patent Owner
`
`10
`
`
`
`CBM2015-00032
`Patent 8,336,772 B2
`
`does not address the merits of this challenge. See Prelim. Resp. 19.
`
`Analyzing the challenged claims using the two-step process applied recently
`
`in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), Petitioner
`
`asserts that all the challenged claims are directed to an abstract idea without
`
`additional elements that transform the claims into a patent-eligible
`
`application of that idea. Pet. 20–33. Specifically, Petitioner argues that the
`
`challenged claims are directed to the abstract idea of “paying for and
`
`controlling access to content.” Id. at 21.
`
`We agree with Petitioner that, on this record, the challenged claims of
`
`the ’772 patent are more likely than not directed to patent-ineligible subject
`
`matter. Under 35 U.S.C. § 101, we must first identify whether an invention
`
`fits within one of the four statutorily provided categories of patent-
`
`eligibility: “processes, machines, manufactures, and compositions of
`
`matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713–14 (Fed. Cir.
`
`2014). Here, each of the challenged claims recites a “machine,” i.e., a
`
`“handheld multimedia terminal” (claim 14) or a “data access terminal”
`
`(claim 19), under § 101. Section 101, however, “contains an important
`
`implicit exception [to subject matter eligibility]: Laws of nature, natural
`
`phenomena, and abstract ideas are not patentable.” Alice, 134 S. Ct. at 2354
`
`(quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct.
`
`2107, 2116 (2013) (internal quotation marks omitted)).
`
`We are persuaded that the challenged claims are more likely than not
`
`drawn to a patent-ineligible abstract idea. In Alice, the Supreme Court
`
`reiterated the framework set forth previously in Mayo Collaborative Servs.
`
`v. Prometheus Labs., 132 S. Ct. 1289 (2012) “for distinguishing patents that
`
`claim laws of nature, natural phenomena, and abstract ideas from those that
`
`11
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`CBM2015-00032
`Patent 8,336,772 B2
`
`claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at
`
`2355. The first step in the analysis is to “determine whether the claims at
`
`issue are directed to one of those patent-ineligible concepts.” Id. If so, the
`
`second step in the analysis is to consider the elements of the claims
`
`“individually and ‘as an ordered combination’” to determine whether there
`
`are additional elements that “‘transform the nature of the claim’ into a
`
`patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1291, 1298).
`
`In other words, the second step is to “search for an ‘inventive concept’—i.e.,
`
`an element or combination of elements that is ‘sufficient to ensure that the
`
`patent in practice amounts to significantly more than a patent on the
`
`[ineligible concept] itself.’” Id. (alteration in original) (quoting Mayo, 132
`
`S. Ct. at 1294).
`
`Petitioner contends that each challenged claim is drawn to the concept
`
`of controlling access based on payment, a “well-known ‘building block of
`
`the modern economy’ and a longstanding ‘method of organizing human
`
`activity’ long pre-dating the ’772 patent.” Pet. 24 (quoting Alice, 134 S. Ct.
`
`at 2356–57). As discussed above, the ’772 patent discusses addressing
`
`recording industry concerns of data pirates offering unauthorized access to
`
`widely available compressed audio recordings. Ex. 1301, 1:33–58. The
`
`’772 patent proposes to solve this problem by restricting access to data on a
`
`portable data carrier based upon payment validation. Id. at 1:62–2:7. The
`
`’772 patent makes clear that the heart of the claimed subject matter is
`
`restricting access to stored data based on supplier-defined access rules and
`
`validation of payment. Id. at 2:8–19. We are persuaded, on this record, that
`
`the challenged claims are directed to an abstract idea. See Alice, 134 S. Ct.
`
`at 2356 (holding that the concept of intermediated settlement at issue in
`
`12
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`CBM2015-00032
`Patent 8,336,772 B2
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`Alice was an abstract idea); Accenture Global Servs., GmbH v. Guidewire
`
`Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (holding the abstract
`
`idea at the heart of a system claim to be “generating tasks [based on] rules . .
`
`. to be completed upon the occurrence of an event” (citation omitted)).
`
`Turning to the second step of the analysis, we look for additional
`
`elements that can “transform the nature of the claim” into a patent-eligible
`
`application of an abstract idea. Mayo, 132 S. Ct. at 1297. On this record,
`
`we are not persuaded that the challenged claims of the ’772 patent add an
`
`inventive concept sufficient to ensure that the patent in practice amounts to
`
`significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct.
`
`at 2355; see also Accenture Global Servs., 728 F.3d at 1345 (holding claims
`
`directed to the abstract idea of “generating tasks [based on] rules . . . to be
`
`completed upon the occurrence of an event” to be unpatentable even when
`
`applied in a computer environment and within the insurance industry).
`
`Petitioner contends that the “challenged claims simply instruct that the
`
`abstract ideas of payment for controlling access to data should be
`
`implemented in software and refer only to generic computer functions.” Pet.
`
`27. On this record, we are not persuaded that the recited limitations of the
`
`challenged claims, which include, for example, “wireless interface,” “non-
`
`volatile memory,” “program store,” “processor,” “display,” “user interface,”
`
`“data carrier interface,” and “code” perform functions that are anything other
`
`than “purely conventional.” See Alice, 134 S. Ct. at 2359. Thus, on this
`
`record, we are not persuaded that any of the allegedly technical limitations
`
`viewed “both individually and ‘as an ordered combination,’” transform the
`
`nature of the claims into patent-eligible subject matter. See Alice, 134 S. Ct.
`
`at 2355 (quoting Mayo, 132 S. Ct. at 1297, 1298).
`
`13
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`CBM2015-00032
`Patent 8,336,772 B2
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`Having considered the information provided in the Petition and the
`
`Preliminary Response, we are persuaded that Petitioner has demonstrated
`
`that it is more likely than not that challenged claims 14, 19, and 22 are
`
`unpatentable under 35 U.S.C. § 101.
`
`Patent Owner argues that Petitioner’s assertion of this ground is
`
`untimely because Petitioner “provides no valid reason why it did not raise
`
`this purely legal issue as grounds for invalidity in its two prior petitions filed
`
`long before [the instant Corrected P]etition.” Prelim. Resp. 16. According
`
`to Patent Owner,
`
`[A]llowing Apple to raise a new ground of invalidity that it
`could have and should have raised in its April 3, 2014 petitions
`encourages Apple’s piecemeal invalidity challenges to Patent
`Owner’s patent claims and runs afoul of the [Board’s] charge to
`‘secure the just, speedy, and inexpensive resolution’ of Apple’s
`covered business method challenges to the ‘772 Patent.
`
`Id. at 16. Patent Owner, however, cites no statutory or regulatory authority
`
`precluding Petitioner from asserting this ground. Moreover, Patent Owner
`
`acknowledges that the Supreme Court’s June 19, 2014 decision in Alice was
`
`decided after Petitioner’s original petitions were filed in March 2014. Id. at
`
`15–16. Thus, on this record, we are not persuaded that Petitioner’s assertion
`
`of a new ground based on 35 U.S.C. § 101 is untimely.
`
`Conclusion
`
`On this record, Petitioner has established that it is more likely than not
`
`that claims 14, 19, and 22 of the ’772 patent are unpatentable under 35
`
`U.S.C. § 101.
`
`14
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`
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`CBM2015-00032
`Patent 8,336,772 B2
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`D. Obviousness Challenges
`
`Petitioner argues that claims 14, 19, and 22 are unpatentable under 35
`
`U.S.C. § 103(a) as obvious over: Stefik, Poggio, and Subler; and Stefik,
`
`Poggio, Subler, and Sato. Pet. 16, 33–79.
`
`A patent claim is unpatentable, under 35 U.S.C. § 103(a), if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations, including: (1) the scope and content of the prior art,
`
`(2) any differences between the claimed subject matter and the prior art, (3)
`
`the level of skill in the art, and (4) where in evidence, so-called secondary
`
`considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`After carefully considering the Petition and Preliminary Response, we
`
`determine that Petitioner has not shown that it is more likely than not that it
`
`would prevail in showing that claims 14, 19, and 22 are unpatentable as
`
`obvious over any of the proposed obviousness combinations identified
`
`above. An obviousness inquiry is based on factual inquiries including the
`
`difference between the claimed invention and the prior art. Graham, 383
`
`U.S. at 17–18. For each of the challenged claims, Petitioner has not
`
`identified sufficiently the differences between the claimed invention and
`
`each reference, or how the teachings of the references are to be combined, if
`
`at all. Pet. 41–79. Petitioner also has not shown that any of the individual
`
`references anticipate the challenged claims. Thus, it is unclear how
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`15
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`CBM2015-00032
`Patent 8,336,772 B2
`
`Petitioner proposes that we do a proper Graham analysis to determine that
`
`the challenged claims are unpatentable.
`
`We cannot ascertain from the Petition, including the claim charts and
`
`the numerous attending footnotes, which disclosure of which prior art
`
`reference Apple is referring to as teaching or suggesting each limitation and
`
`why such disclosure satisfies the limitation. With respect to independent
`
`claim 14, for example, Petitioner cites Stefik for each claim limitation. Id. at
`
`41–64. At the same time, Petitioner cites Poggio and/or Subler for ten of the
`
`fifteen limitations of claim 14. Id. With respect to the recited “code to
`
`request identifier data identifying one or more items of multimedia content
`
`available for retrieving via said wireless interface;” in claim 14, for example,
`
`Petitioner cites a number of portions of Stefik, as well as portions of Poggio
`
`and Subler. See id. at 47–50. Petitioner does not allege directly that Stefik
`
`alone teaches or renders obvious each limitation, yet, as noted above,
`
`Petitioner cites Stefik for each claim limitation. At the same time, Petitioner
`
`proposes combining a number of features from Poggio and/or Subler with
`
`the teachings of Stefik. See, e.g., id. at 37–39, 43–44 n.18, 45–46 n.20, 48–
`
`49 n.24, 49–50 n.25.
`
`Petitioner’s analysis prevents us from determining what specific
`
`teaching is lacking in Stefik (i.e., the differences between the claimed
`
`subject matter and Stefik). See Graham, 383 U.S. at 17–18. For example,
`
`with respect to “a wireless interface configured to interface with a wireless
`
`network for communicating with a data supplier,” also recited in
`
`independent claim 14, Petitioner identifies the external interface or I/O port
`
`of a repository, such as the PCMCIA interface of a DocuCard (id. at 41–42),
`
`and argues that “[t]o the extent that Stefik does not explicitly disclose
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`16
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`CBM2015-00032
`Patent 8,336,772 B2
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`wireless communications, a POSA would have appreciated and found it
`
`obvious to implement Stefik’s media distribution among repositories using
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`wireless communications, and to do so by employing, for the disclosed
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`repository interfaces, wireless interfaces with this capability.” Id. at 42 n.16.
`
`Petitioner also alleges that Sato discloses a radio transceiver. Id. at 42–43.
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`Petitioner further contends that it would have been obvious to “implement
`
`Stefik’s system of repositories for encouraging the secure distribution of
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`digital media, using Sato’s advantageous explicit teachings of a mobile
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`media device (such as a mobile phone) for accessing such media wirelessly
`
`to increase the spread of the content distribution.” Id. at 43 n.17. Similarly,
`
`Petitioner contends that Poggio discloses “[a] client computer [that] includes
`
`an interface (e.g., interconnectivity means; communications interface) to
`
`communicate over the network and access the remote system (e.g., VVM)”
`
`(id. at 43–44) and argues that “[t]o the extent that Poggio does not explicitly
`
`disclose wireless communications, a POSA would have appreciated and
`
`found it obvious to implement Poggio’s VVM using wireless
`
`communications, and to do so by employing, for the disclosed client
`
`computer interfaces, wireless interfaces with this capability.” Id. at 43 n.18.
`
`Nowhere does Petitioner explain any differences between the claimed
`
`invention and Stefik. As a result, it is not clear whether Petitioner is alleging
`
`that certain claim limitations are taught by Stefik, rendered obvious by
`
`Stefik, taught by Poggio, Subler, and/or Sato, or rendered obvious in view of
`
`Stefik, Poggio, Subler, and/or Sato. Given this ambiguity in the Petition, we
`
`cannot ascertain which reference to rely on for any given limitation or why a
`
`person of ordinary skill in the art would have found it obvious to combine
`
`17
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`CBM2015-00032
`Patent 8,336,772 B2
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`that particular disclosed subject matter with the subject matter disclosed by
`
`the other references.
`
`We are, thus, not persuaded that Petitioner has shown that it is more
`
`likely than not that claim 14 would have been obvious over the combination
`
`of Stefik, Poggio, and Subler, or the combination of Stefik, Poggio, Subler,
`
`and Sato. For the same reasons, we are not persuaded that Petitioner has
`
`shown more likely than not that claims 19 and 22 would have been obvious
`
`over the combination of Stefik, Poggio, and Subler, or the combination of
`
`Stefik, Poggio, Subler, and Sato.
`
`Conclusion
`
`On this record, Petitioner has not established that it is more likely than
`
`not that claims 14, 19, and 22 are unpatentable as obvious over: Stefik,
`
`Poggio, and Subler; or Stefik, Poggio, Subler, and Sato.
`
`CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in the Petition establishes that it is more likely than not that
`
`Petitioner would prevail in establishing the unpatentability of claims 14, 19,
`
`and 22 of the ’772 patent.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claims.
`
`For the reasons given, it is:
`
`ORDER
`
`ORDERED that a covered business method patent review is instituted
`
`as to claims 14, 19, and 22 under 35 U.S.C. § 101 as being directed to
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`patent-ineligible subject matter under;
`
`18
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`CBM2015-00032
`Patent 8,336,772 B2
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`FURTHER ORDERED that no other ground raised in the Petition is
`
`authorized for covered business method patent review; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 324(d) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial on the
`
`grounds of unpatentability authorized above, the trial commencing on the
`
`entry date of this Decision.
`
`
`
`19
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`CBM2015-00032
`Patent 8,336,772 B2
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`PETITIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`
`
`PATENT OWNER:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey@dbjg.com
`jsd@dbjg.com
`
`20
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