IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
` Covered Business Method Patent Review
`United States Patent No. 8,336,772
`
`Attorney Docket No.:
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` 104677-5008-820
`Customer No. 28120
`
`Petitioner: Apple Inc.
`
`§
`Inventor: Racz et al.
`United States Patent No.: 8,336,772 §
`Formerly Application No.: 13/212,047 §
`Issue Date: December 25, 2012
`§
`Filing Date: August 17, 2011
`§
`Former Group Art Unit: 2887
`§
`Former Examiner: Thien M. Le
`§
`
`For: Data Storage and Access Systems
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 8,336,772 PURSUANT TO 35 U.S.C. § 321,
`37 C.F.R. § 42.304
`
`
`
`
`
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`

`

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` Covered Business Method Patent Review
`United States Patent No. 8,336,772
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`
`TABLE OF CONTENTS
`
`INTRODUCTION ....................................................................................................... 1
`I.
`II. OVERVIEW OF FIELD OF THE CLAIMED INVENTION ......................... 6
`III. PETITIONER HAS STANDING .......................................................................... 11
`A.
`The ’772 Patent Is a Covered Business Method (“CBM”) Patent ........... 11
`1.
`Exemplary Claim 19 Is Financial In Nature .................................... 11
`2.
`Claim 19 Does Not Cover A Technological Invention ................. 13
`Related Matters and Mandatory Notice Information; Petitioner Is a Real
`Party In Interest Sued for and Charged With Infringement ..................... 18
`IV. DETAILED EXPLANATION OF REASONS FOR RELIEF REQUESTED,
`SHOWING IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE
`CHALLENGED CLAIM IS UNPATENTABLE ............................................... 19
`A.
`Claim Construction .......................................................................................... 21
`B.
`The Challenged Claims Are Unpatentable Under § 101 ............................ 24
`1.
`Claims Are Directed To Abstract Ideas ........................................... 25
`2.
`Claims Do Not Disclose An “Inventive Concept” That Is
`“Significantly More” Than An Abstract Idea .................................. 28
`Field Of Use Limitations Cannot Create Patent Eligibility ........... 28
`Generic Computer Implementation Cannot Transform
`Abstract Ideas Into Patent Eligible Inventions ............................... 29
`Functional Nature Confirms Preemption and Ineligibility ............ 34
`5.
`6. Machine-or-Transformation Test Also Confirms Patent
`Ineligibility ............................................................................................. 36
`The Challenged Claims Are Invalid Under § 103 ....................................... 36
`1.
`Overview of Stefik ............................................................................... 36
`2. Motivation to Combine Stefik with Poggio ..................................... 40
`3. Motivation to Combine Stefik with Poggio and Subler ................. 41
`4. Motivation to Combine Stefik with Poggio, Subler, and
`Sato ......................................................................................................... 42
`Claims 14, 19, and 22 are Obvious in Light of Stefik in
`view of Poggio and Subler (Ground 2); Claims 14, 19, and
`
`B.
`
`C.
`
`3.
`4.
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`5.
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`ii
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` Covered Business Method Patent Review
`United States Patent No. 8,336,772
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`22 are Obvious in Light of Stefik in view of Poggio, Subler,
`and Sato (Ground 3). .......................................................................... 43
`CONCLUSION........................................................................................................... 80
`
`V.
`
`
`
`iii
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`

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`
`EXHIBIT LIST
`1301
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`1302
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`1303
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`1304
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`1305
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`1306
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`1307
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`1308
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`1309
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`1310
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`1311
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`1312
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`1313
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`1314
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`1315
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`1316
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`1317
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`1318
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`1319
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` Covered Business Method Patent Review
`United States Patent No. 8,336,772
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`U.S. Patent No. 8,336,772
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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 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)
`Declaration of Anthony J. Wechselberger In Support of Apple
`
`iv
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`

`

`1320
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`1321
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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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` Covered Business Method Patent Review
`United States Patent No. 8,336,772
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`
`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
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`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
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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. 7,334,720
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`File History for U.S. Patent No. 7,334,720
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`U.S. Patent No. 5,646,992
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`v
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` Covered Business Method Patent Review
`United States Patent No. 8,336,772
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`I.
`
`INTRODUCTION
`Pursuant to § 321 and Rule § 42.304,1 the undersigned, on behalf of and acting
`
`in a representative capacity for Apple Inc. (“Petitioner”), petitions for covered busi-
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`ness method review of claims 14, 19, and 22 (“challenged claims”) of U.S. Pat. No.
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`8,336,772 (“’772 patent” or “’772”), issued to Smartflash Technologies Limited and
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`assigned to Smartflash LLC (“Patentee”). Petitioner asserts it is more likely than not
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`that the challenged claims are unpatentable for the reasons herein and requests review
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`of, and judgment against, the challenged claims under §§ 101 and 103.
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`As discussed in Sec. III.B, infra, Petitioner has concurrently filed two other Pe-
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`titions, requesting judgment against different ’772 claims based on some of the same
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`art. The Director, pursuant to Rule 325(c), may determine that merger, or at mini-
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`mum coordination, of these proceedings, is appropriate. Further, Petitioner previous-
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`ly filed CBM2014-00110/111 seeking review of the ’772 under §§102 and 103. Those
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`petitions were not instituted. In its Decisions Denying Institution, the Board then de-
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`termined that Petitioner had not shown that it was more likely than not that it would
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`prevail in demonstrating that Stefik alone or combined with Poggio and/or Sato ren-
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`dered obvious limitations related to “code to request identifier data…” CBM2014-
`
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`1 Petitioner is demonstrating, in pending litigation, that these claims are invalid for
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`numerous additional reasons. All section cites herein are to 35 U.S.C. or 37 C.F.R., as
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`the context indicates, and all emphasis herein added unless otherwise noted.
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`

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`00110, Pap. 7, at 15-18; -00111, Pap. 7, at 15-21. In light of the Board’s decision, Pe-
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` Covered Business Method Patent Review
`United States Patent No. 8,336,772
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`titioner now identifies additional prior art—Subler (Ex. 1336)—with explicit disclo-
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`sures of the limitations related to “code to request identifier data…” For example,
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`Subler discloses an end user device that provides a powerful, easy-to-use interface to
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`browse through and analyze products available from a storage database. Ex. 1336
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`3:46-52. The end user device software includes code that retrieves product infor-
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`mation from the database and presents the information to the user in a windowed
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`graphical user interface. Ex. 1336 4:49-54; 5:26-30. Petitioner has also identified addi-
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`tional disclosures in Stefik and Poggio concerning these limitations, further confirm-
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`ing a POSA 2 would have found it obvious and routine to implement Stefik and
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`Poggio’s system using the expressly advantageous teachings of Subler and/or Sato,
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`detailed in §IV.C, infra. See, e.g., Ex. 1319 ¶¶ 56-67.
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`The challenged claims merely recite basic computer systems well-known in the
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`field of data storage and access, including a “handheld multimedia terminal for retriev-
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`ing and accessing protected multimedia content” and a “data access terminal for con-
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`2 References to a POSA refer to the knowledge or understanding of a person of ordi-
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`nary skill in the art as of October 25, 1999, who would have at least a B.S. in E.E.,
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`C.S., or a telecommunications related field, and at least 3 years of industry experience
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`that
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`included client-server data/information distribution and management
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`architectures. See Ex. 1319 ¶¶ 27, 30 n.3.
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`2
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`United States Patent No. 8,336,772
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`trolling access to one or more content data items stored on a data carrier.” Ex. 1301
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`1:24-26. Claim 19, for example, recites four rudimentary components of a data access
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`terminal “for retrieving a content data item from a data supplier and providing the retrieved data
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`item to a data carrier”—(A) an interface for communicating (B) a user interface, (C) a data
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`carrier interface, (D) a program store storing code implementable by a processor, and (D)
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`a processor . . . for implementing the stored code. The recited code is similarly elemen-
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`tary, requesting and receiving user identifier data (E1-E2), requesting, receiving, and presenting con-
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`tent data (E3-E5), receiving and responding to a user selection (E6-E7), and receiving and re-
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`sponding to payment validation data (E8-E9):
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`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] a first interface for communicating with the data supplier;
`[B] a user interface;
`[C] a data carrier interface;
`[D] a program store storing code implementable by a processor; and
`[E] 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:
`[E1] code to request identifier data identifying one or more content da-
`ta items available for retrieving;
`[E2] code to receive said identifier data identifying said one or more
`content data items available for retrieving;
`[E3] code to request content information pertaining to at least one of
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`3
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`said one or more content data items identified by said identified data;
`[E4] code to receive said content information;
`[E5] code to present said content information to a user via said user in-
`terface pertaining to said identified one or more content data items
`available for retrieving;
`[E6] code to receive a user selection selecting at least one of said one
`or more of said content data items available for retrieving;
`[E7] 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 valida-
`tion system;
`[E8] 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
`[E9] code responsive to the payment validation data to retrieve said se-
`lected 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
`Ex. 1301. But at the patent’s earliest claimed priority date, these simple elements and
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`their combination were well known to any POSA. The patent acknowledges that the
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`idea of providing access to data in exchange for payment (e.g., purchase of music on a
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`CD) was already well known. E.g., Ex. 1301 5:13-16 (“the purchase outright option
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`may be equivalent to the purchase of a compact disc (CD)”). And, as demonstrated herein,
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`the prior art was teeming with disclosures of this basic concept and its straightforward
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`implementation in physical systems.
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`4
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`United States Patent No. 8,336,772
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`Moreover, claim 19 clearly involves no “technology” at all other than “a data ac-
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`cess terminal,” with an interface for communicating with a data supplier, and user
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`and data carrier interfaces, a program store storing code, and a processor that im-
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`plements the well-known steps disclosed in the specification—all of which the patent
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`concedes were well known and commonplace, stating that this “terminal comprises a
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`general purpose computer.” E.g., id. 4:7, 16:47-52. Claim 19 recites no more than a system
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`for requesting and retrieving data from a data carrier while receiving and responding
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`to payment data for validation and controlling access to the data based on payment.
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`And the other challenged claims are nothing but variations on this simple theme, with
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`the addition, in the challenged “handheld multimedia terminal” claims, of equally ge-
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`neric components (e.g., known wireless interface, non-volatile memory, and a display).3
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`See, e.g., id. 12:37-40 (“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 forms.”).
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`Indeed, as confirmed by the Supreme Court’s recent decision in Alice Corp.
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`Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)—decided after Petitioner’s original
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`challenges to the ’772 were filed—the challenged claims are also directed to patent in-
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`3 Claim 14, e.g., recites a “handheld multimedia terminal,” but simply adds to the fea-
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`tures of claim 19 the requirements of a wireless interface, non-volatile memory, and a
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`display. And Claim 22, which depends from claim 19, simply specifies integration
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`with a mobile communications device. Ex. 1301.
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`5
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`United States Patent No. 8,336,772
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`eligible subject matter under § 101. As the Board noted in its previous Institution De-
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`cision, “the ’772 patent makes clear that the asserted novelty of the invention is not in
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`any specific improvement of software or hardware, but in the method of controlling ac-
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`cess to data,” CBM2014-00110, Pap. 7, at 13, and the challenged claims are directed to
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`nothing more than the unpatentable abstract idea of paying for and controlling access
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`to data, with at most the addition of well-known, routine and conventional features—
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`in particular, generic computer implementation that cannot confer patentability on
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`these patent-ineligible abstractions. E.g., Alice, 134 S. Ct. at 2359-60. Each challenged
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`claim 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 was well-known to a POSA, and their combination as claimed would
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`also have been well-known or at minimum obvious. See, e.g., Ex. 1319 § V. In March
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`1991, for example, U.S. Pat. No. 4,999,806 issued, disclosing a system and method for
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`sale and distribution of digital products (e.g., software) by phone, and for content pro-
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`tection. See, e.g., Ex. 1306 Abstract (“central station distributes software by telephone. . . ac-
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`cepts credit card information, transmits an acceptance code . . . After verifying the credit card infor-
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`mation, the station calls the purchaser back and continues with the transaction only after receiving
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`the acceptance code.”); 1:67-2:9 (describing “means for selling and distributing protected software
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`using standard telephone lines,” “permit[ting] the purchaser to rent the protected software for a period
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`of time,” and “to rent the protected software for a specific number of runs”). Ex. 1306 also dis-
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`6
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`closes (1) different types of access, e.g., purchase vs. rental and (2) a Control Transfer
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`Program and a Primary Protection Program to prevent unauthorized copies. See Ex.
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`1306 Abstract; 2:65-3:23; Ex. 1319 ¶ 30.
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`In April 1992, U.S. Pat. No. 5,103,392 issued, disclosing use-based charging for
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`digital products. See, e.g., id. Ex. 1311 1:64-2:17:
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`The data processing apparatus includes user-specific credit data storage
`means for storing data identifying the user . . . and indicating credit for payment ca-
`pacity, use time length, or the like of the user . . . . Also included is use deci-
`sion means for determining permission to use the program . . . on the basis of pro-
`gram-specific data supplied from the program storage means or user-specific
`credit data supplied from the user-specific credit data storage means, the
`use decision means delivering either an affirmative or negative signal corresponding
`to results of the decision. Also included is program use history storage means
`connected to the use decision means for storing program use history data . . . .
`Ex. 1311’s emphasis on assuring permission to access a program and compensating
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`providers underscores this existing focus in the art on digital rights management
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`(“DRM”), over eight years before the claimed priority date. See, e,g., Ex. 1319 ¶ 33.
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`Exhibit 1315 (“Poggio”, pub’d Nov. 26, 1997) gives another example of secure
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`content distribution with content protection, disclosing a “virtual vending machine”
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`system for sale and distribution of digital products. See, e.g., id. Abstract (“virtual vending
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`machine manages a comprehensive vending service for the distribution of licensed electronic data (i.e.,
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`products) over a distributed computer system. . . . [and] distributes licenses for the electronic data for
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`7
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`the complete product or for components thereof and for a variety of time frames, including permanent
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`licenses and rental period licenses. [It] provides . . . capability to obtain information regarding the
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`available products and the associated license fees and rental periods, to receive the product upon re-
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`ceipt of a corresponding electronic payment, and to reload the product during the term of the license.”).
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`Poggio, too, discloses different types of access, including rentals, and re-download ca-
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`pabilities for already-purchased content. See, e.g., id. Ex. 1319 ¶¶ 35, 50.
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`Also in 1997, Ex. 1318 (“von Faber”) observed that “[e]lectronic commerce systems
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`dealing with the distribution of digital contents . . . have to couple the use of the provided dig-
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`ital goods with a prior payment for the goods in a way which cannot be bypassed,” proposing
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`a system where customers purchase keys required to utilize encrypted content. See, e.g.,
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`id. at 7(“basic idea . . . is to distribute the contents in encrypted form, and to have the customer pay
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`for the key which he needs to transform the encrypted content in an usable form.”); id. 8 (“The
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`Content Provider provides digital contents in encrypted form being distributed by the Con-
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`tent Distributor. . . . The Authorisation System permits the distribution of the appropriate key
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`after settling of the fees payable by the Customer . . .. The role of the Content Distributor is
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`not essential for the subsequent discussion but, of course, for the business to take place.”);
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`see also id. Fig. 1. Von Faber notes its system could be used for a variety of known dis-
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`tribution and payment methods. See, e.g., id. 13 (“Different methods can be used to distribute
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`the encrypted contents (standard techniques). . . . Different electronic payment methods can be
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`integrated . . . . This flexibility leads to the fact that totally different authorisation methods can be
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`United States Patent No. 8,336,772
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`integrated.”). Von Faber also addressed the known issue of payment distribution to
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`providers. See, e.g., id. (“The system automatically divides the package price (payments) and guar-
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`antees that the money is transferred to each Content Provider.”); Ex.1319 ¶¶ 36-38.
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`And U.S. Pat. No. 5,915,019 (“Ginter,” filed Jan. 8, 1997) issued June 1999,
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`discloses “systems and methods for secure transaction management and electronic
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`rights protection.” See, e.g., Ex. 1314 Abstract. Ginter’s system “help[s] ensure that in-
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`formation is accessed and used only in authorized ways, and maintain the integrity, availability,
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`and/or confidentiality of the information.” See, e.g., id. Ginter’s “techniques may be used
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`to support an all-electronic information distribution, for example, utilizing the ‘electronic high-
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`way.’” Id. Ginter discloses that the various entities of the virtual distribution environ-
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`ment (“VDE”) can flexibly take on any VDE roles. See, e.g., id. 255:22-23 (“All partici-
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`pants of VDE 100 have the innate ability to participate in any role.”); 255:23-43. Ginter
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`thus highlights the known flexibility in such distribution systems, underscoring that
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`combinations between and among disclosures of such distribution systems would
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`have been obvious. See, e.g., Ex. 1319 ¶¶ 39-40.
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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. As one example, Ex.
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`1316 (“Rydbeck,” pub’d Aug. 26, 1999), discloses a cell phone for storing digital con-
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`tent in non-volatile memory and accessing that content. See, e.g., Ex. 1316 5 (“Because
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`of its integration into the cellular phone, the digital entertainment module can share com-
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`ponents already present in the cellular phone. Such savings would not be available if a
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`CD player were simply aggregated with the phone. Further, the use of solid state
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`RAM or ROM, as opposed to disc storage, eliminates the need for bounce control
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`circuitry[, enabling the] invention to provide cellular communications and entertain-
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`ment during leisure activities.”); Ex. 1319 ¶ 41. And Exhibit 1317 (“Sato,” pub’d June
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`18, 1999), discloses storing media content onto mobile user devices and playing the
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`media content from these mobile devices, as well as storing that media content on a
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`removable IC card. See, e.g., ¶ 9 (“portable music selection and viewing device 70 pro-
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`vides a removable storage device 76 on a main body 71. This storage device 76 is a memory
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`card similar to, for example. . . an IC card. The user, after downloading the music
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`software to the storage device (medium) 76 of the portable music selection and view-
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`ing device 70 . . . can enjoy this music software on a display 72 or a receiver 74 of . . .
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`device 70, and can also enjoy higher quality music playback by removing this storage device
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`(medium) and inserting it into another audio unit. Further, the user can store the music soft-
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`ware from another audio unit into the storage device 76”); ¶ 13 (“music storage medi-
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`um 250 such as . . . a memory card such as an IC card stores the music software, and this
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`storage medium 250 can be removed and used on other audio units.”); Ex. 1319 ¶ 42.
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`Thus, as these background examples and the additional prior art detailed below
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`in IV.B (including the primary prior art Stefik patent) illustrate, the prior art was rife
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`with awareness and discussion of the same supposed “invention” now memorialized
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`10
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`in the challenged claims. Long before the purported priority date, disclosures abound-
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` Covered Business Method Patent Review
`United States Patent No. 8,336,772
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`ed of the very features that Smartflash now seeks to claim as its exclusive property. As
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`outlined below, the challenged claims are obvious.
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`III. PETITIONER HAS STANDING
`A.
`The ’772 is a CBM patent under § 18(d)(1) of the AIA, and Petitioner certifies
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`The ’772 Patent Is a Covered Business Method (“CBM”) Patent
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`it is available for review under § 42.304(a). Although in fact many claims qualify, a pa-
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`tent with even one CBM claim is a CBM patent. See CBM 2012-00001, Doc. 36 at 26;
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`77 Fed. Reg. 48,709 (Aug. 14, 2012). The Board previously found claim 8 of the ’772
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`satisfied the CBM standing requirement. CBM2014-00110, Pap. 7, 9-14. Petitioner
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`additionally addresses exemplary Claim 19 (quoted above).
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`1.
`A CBM patent is “a patent that claims a method or corresponding apparatus for per-
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`Exemplary Claim 19 Is Financial In Nature
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`forming data processing or other operations used in the practice, administration, or management of a
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`financial product or service, except that the term does not include patents for technological
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`inventions.” AIA § 18(d)(1); Rule § 42.301. “[T]he definition of covered business
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`method patent was drafted to encompass patents claiming activities that are financial in
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`nature, incidental to a financial activity or complementary to a financial activity.’” 77 Fed. Reg.
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`48,734-35 (Aug. 14, 2012) (citing 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)).
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`“[F]inancial product or service” is to be interpreted broadly, id., and “financial . . . simp-
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`ly means relating to monetary matters”—it does not require any link to traditional financial
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`11
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`industries such as banks. See, e.g., CBM2012-00001, Pap. 36 at 23. See also CBM2013-
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` Covered Business Method Patent Review
`United States Patent No. 8,336,772
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`00020, Pap. 14 at 11-12; CBM2013-00017, Pap. 8 at 5-6.
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`The ’772 includes claims to a “data access terminal” (e.g., a “conventional com-
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`puter” or mobile phone (Ex. 1301 4:7-8)), that transmits payment data to a payment
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`validation system, and reads and responds to payment validation data, and allows ac-
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`cess to content in exchange for payment (id. 8:26-28). See AIA § 18(d)(1); Rule
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`§ 42.301(a). The patent alleges this terminal is part of a system that allows content
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`owners to make content available without fear of losing revenue. Ex. 1301 2:15-19.
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`See also id. Fig 12(a)-(e). More generally, the patent is about “[d]ata storage and access
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`systems [that] enable downloading and paying for data.” Id. Abstract. “The combina-
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`tion of payment data and stored content data . . . helps reduce the risk of unauthor-
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`ized access.” Id. And in asserting the patent, Smartflash conceded the alleged inven-
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`tion relates to a financial activity or transaction, stating “[t]he patents-in-suit generally
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`cover a portable data carrier for storing data and managing access to the data via pay-
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`ment information and/or use status rules. The patents-in-suit also generally cover a com-
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`puter network . . . that serves data and manages access to data by, for example, validat-
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`ing payment information.” Ex. 1302 ¶ 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. 1301 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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` Covered Business Method Patent Review
`United States Patent No. 8,336,772
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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 19 expressly recites software to perform data processing and other oper-
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`ations in connection with the recited “payment validation system” and thus clearly re-
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`lates to a financial activity and providing a financial service. See CBM2013-00020, Pap.
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`14 at 11-12 (“the electronic transfer of money is a financial activity, and allowing such
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`a transfer amounts to providing a financial service.”). See also AIA § 18(d)(1); 37 C.F.R.
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`§ 42.301(a); 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012) (“[T]he definition of [CBM]
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`was drafted to encompass patents ‘claiming activities that are financial in nature, incidental
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`to a financial activity or complementary to a financial activity.’”) (citation omitted). 4
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`2.
`Claim 19 Does Not Cover A Technological Invention
`Further, claim 19 does not cover a “technological invention” within the excep-
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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). Rather, the specification explains that
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`4 Claim 8 is similarly financial in nature. See CBM2014-00110, Pap. 7, 10-12.
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`13
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` Covered Business Method Patent Review
`United States Patent No. 8,336,772
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`claim 19’s “data access terminal” was commonplace, and is not directed to a technical
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`problem, but rather offers a non-technical solution to the business problem of data piracy.
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`(a) Claim 19 Does Not Recite A Technological Feature
`That Is Novel and Unobvious
`First, no “technological feature” of claim 19 is novel and unobvious. The
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`PTAB has confirmed that “[m]ere recitation of known technologies, such as comput-
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`er hardware, communication or computer networks, software, memory, computer-
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`readable storage medium, scanners, display devices or databases, or specialized ma-
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`chines, such as an ATM or point of sale device,” or “[r]eciting the use of known prior
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`art technology to accomplish a process or method, even if that process or method is
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`novel and non-obvious” will “not typically render a patent a technological invention.”
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`See, e.g., 77 Fed. Reg. 48,764 (Aug. 14, 2012). As PTAB further stated, “combining
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`prior art structures to achieve a normal, expected, or predictable result of that combi-
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`nation” is not a technological invention. 77 Fed. Reg. 157 (Aug. 14, 2012) at 48,764.
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`As its language makes clear, claim 19 involves no “technology” at all other than “a
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`data access terminal,” which includes a first interface for communicating with a data
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`supplier, a user interface, data carrier interface, a program store storing code, and a
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`processor that implements the well-known steps disclosed in the specification. Ex.
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`1301. “The data access terminal may be a conventional computer or, alternatively, it may
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`be a mobile phone,” both of which were known in the art well before the earliest claimed
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`priority. Id. 4:7; 16:47-52. Indeed, the specification disclaims the use of particular hard-
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`14
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`ware, relying instead on conventional hardware known to a POSA: “[t]he physical em-
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` Covered Business Method Patent Review
`United States Patent No. 8,336,772
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`bodiment of the system is not critical and a skilled person will understand that the terminals,
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`data processing systems and the like can all take a variety of forms.” Id. 12:37-40. The “data
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`supplier” referenced in the claim is also not a technological component, and requires
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`no specific hardware, see Ex. 1301 6:20-22; 6:62-64, but is, instead, simply a supplier of
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`online data. Id. 6:2-4. See also id. 6:62-64 (“The computer system is operated by a data
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`supplier or a data supplier ‘system owner’ for providing content data to the data carrier.”);
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`8:16-19. The referenced data carrier is, e.g., a s