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` CBM2015-00032
`United States Patent No. 8,336,772 B2
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`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
`
`____________
`
`
`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.
`
`

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` CBM2015-00032
`United States Patent No. 8,336,772 B2
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`TABLE OF CONTENTS
`
`
`
`Page
`
`(b)
`
`B.
`
`INTRODUCTION ....................................................................................................... 1
`I.
`II. OVERVIEW OF FIELD OF THE CLAIMED INVENTION ......................... 5
`III. PETITIONER HAS STANDING ............................................................................ 7
`A.
`The ’772 Patent Is a Covered Business Method (“CBM”) Patent ............. 7
`1.
`Exemplary Claim 19 Is Financial In Nature ...................................... 7
`2.
`Claim 19 Does Not Cover A Technological Invention ................. 10
`(a)
`Claim 19 Does Not Recite A Technological
`Feature That Is Novel and Unobvious .............................. 10
`Claim 19 Does Not Solve A Technical Problem
`Using A Technical Solution ................................................. 13
`Related Matters and Mandatory Notice Information; Petitioner
`Is a Real Party In Interest Sued for and Charged With Infringement ..... 14
`IV. DETAILED EXPLANATION OF REASONS FOR RELIEF
`REQUESTED, SHOWING IT IS MORE LIKELY THAN NOT THAT
`AT LEAST ONE CHALLENGED CLAIM IS UNPATENTABLE .............. 15
`A.
`Claim Construction .......................................................................................... 18
`B.
`The Challenged Claims Are Unpatentable Under § 101 ............................ 20
`1.
`Claims Are Directed To Abstract Ideas ........................................... 22
`2.
`Claims Do Not Disclose An “Inventive Concept” That Is
`“Significantly More” Than An Abstract Idea .................................. 25
`Field Of Use Limitations Cannot Create Patent Eligibility ........... 25
`Generic Computer Implementation Cannot Transform
`Abstract Ideas Into Patent Eligible Inventions ............................... 26
`Functional Nature Confirms Preemption and Ineligibility ............ 31
`5.
`6. Machine-or-Transformation Test Also Confirms Patent
`Ineligibility ............................................................................................. 33
`The Challenged Claims Are Invalid Under § 103 ....................................... 33
`1.
`Overview of Stefik ............................................................................... 33
`2. Motivation to Combine Stefik with Poggio ..................................... 37
`
`3.
`4.
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`C.
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`i
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` CBM2015-00032
`United States Patent No. 8,336,772 B2
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`5.
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`(b)
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`(c)
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`(d)
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`(e)
`
`
`3. Motivation to Combine Stefik with Poggio and Subler ................. 38
`4. Motivation to Combine Stefik with Poggio, Subler, and
`Sato ......................................................................................................... 39
`Claims 14, 19, and 22 are Obvious in Light of Stefik in
`view of Poggio and Subler (Ground 2); Claims 14, 19, and
`22 are Obvious in Light of Stefik in view of Poggio, Subler,
`and Sato (Ground 3) ........................................................................... 41
`(a)
`Cl. 14 Preamble: A handheld multimedia terminal,
`comprising .............................................................................. 41
`Cl. 14: a wireless interface configured to interface
`with a wireless network for communicating with a
`da-ta supplier; ......................................................................... 41
`Cl. 14: 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. 14: a program store storing processor control
`code; ......................................................................................... 45
`Cl. 14: 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; .............................................. 46
`Cl. 14: 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: ........................................................ 47
`Cl. 14: code to request identifier data identifying
`one or more items of multimedia content available
`for retrieving via said wireless interface; ............................ 47
`Cl. 14: code to receive said identifier data via said
`wireless interface, said identifier data identifying
`said one or more items of multimedia content
`available for retrieving via said wireless interface; ............ 50
`Cl. 14: code to request content information via said
`wireless interface, wherein said content
`information comprises one or more of description
`
`(h)
`
`(f)
`
`(g)
`
`(i)
`
`ii
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`

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`United States Patent No. 8,336,772 B2
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`
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`data and cost data pertaining to at least one of said
`one or more items of multimedia content identified
`by said identifier data; ........................................................... 52
`Cl. 14: code to receive said content information via
`said wireless interface; ........................................................... 54
`Cl. 14: code to present said content information
`pertaining to said identified one or more items of
`multimedia content available for retrieving to a
`user on said display; ............................................................... 56
`Cl. 14: code to receive a user selection selecting at
`least one of said one or more items of multimedia
`content available for retrieving; ........................................... 58
`Cl. 14: code responsive to said user selection of
`said selected at least one item of multimedia
`content to transmit payment data relating to
`payment for said selected at least one item of
`multimedia content via said wireless interface for
`validation by a payment validation system; ....................... 59
`Cl. 14: code to receive payment validation data via
`said wireless interface defining if said payment
`validation system has validated payment for said
`selected at least one item of multimedia content; ... ........ 61
`Cl. 14: code responsive to said payment validation
`data to retrieve said selected at least one item of
`multimedia content via said wireless interface from
`a data supplier and to write said retrieved at least
`one item of multimedia content into said non-
`volatile memory, .................................................................... 62
`Cl. 14: wherein said user interface is operable to
`enable a user to select said selected at least one
`item of multimedia content available for retrieving. ........ 63
`Cl. 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: .................................. 64
`Cl. 19: a first interface for communicating with the
`data supplier; .......................................................................... 69
`
`iii
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`(j)
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`(k)
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`(l)
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`(m)
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`(n)
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`(o)
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`(p)
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`(q)
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`(r)
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`

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`United States Patent No. 8,336,772 B2
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`(v)
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`(w)
`(x)
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`(s)
`(t)
`(u)
`
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`Cl. 19: a user interface; .......................................................... 72
`Cl. 19: a data carrier interface; ............................................. 72
`Cl. 19: a program store storing code implementable
`by a processor; and ................................................................ 74
`Cl. 19: 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: ............................................................................. 75
`Cl. 19: First 8 Code Elements .............................................. 77
`Cl. 19: 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. ............................................................................. 77
`Cl. 22: A data access terminal as claimed in claim
`19, wherein said data access terminal is integrated
`with a mobile communications device and
`audio/video player. ............................................................... 79
`CONCLUSION........................................................................................................... 79
`
`(y)
`
`V.
`
`iv
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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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` CBM2015-00032
`United States Patent No. 8,336,772 B2
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`
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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
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`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
`
`v
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`

`

`1320
`
`1321
`
`1322
`
`1323
`
`1324
`
`1325
`
`1326
`
`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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` CBM2015-00032
`United States Patent No. 8,336,772 B2
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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
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`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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`vi
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`

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` CBM2015-00032
`United States Patent No. 8,336,772 B2
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`I.
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`INTRODUCTION
`
`Pursuant to § 321 and Rule § 42.304,2 the undersigned, on behalf of and acting
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`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 minimum
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`coordination, of these proceedings, is appropriate. Further, Petitioner previously filed
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`CBM2014-00110/111 seeking review of the ’772 under §§102 and 103. In its Deci-
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`sions Denying Institution, the Board then determined that Petitioner had not shown
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`that it was more likely than not that it would prevail in demonstrating that Stefik alone
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`or combined with Poggio and/or Sato rendered obvious limitations related to “code
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`to request identifier data…” CBM2014-00110, Pap. 7, at 15-18; -00111, Pap. 7, at 15-
`
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`2 Petitioner is demonstrating, in pending litigation, that these claims are invalid for
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`numerous additional reasons. All section cites herein are to 35 U.S.C. or 37 C.F.R., as
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`the context indicates, and all emphasis herein added unless otherwise noted.
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`United States Patent No. 8,336,772 B2
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`21. In light of the Board’s decision, Petitioner now identifies additional prior art—
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`Subler (Ex.1336)—with explicit disclosures of the limitations related to “code to re-
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`quest identifier data…” For example, Subler discloses an end user device that pro-
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`vides a powerful, easy-to-use interface to browse through and analyze products avail-
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`
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`able from a storage database. Ex.1336 3:46-52. The end user device software includes
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`code that retrieves product information from the database and presents the infor-
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`mation to the user in a windowed GUI. Ex.1336 4:49-54; 5:26-30. Petitioner has also
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`identified additional disclosures in Stefik and Poggio concerning these limitations, fur-
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`ther confirming a POSA3 would have found it obvious and routine to implement Stef-
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`ik and Poggio’s system using the expressly advantageous teachings of Subler and/or
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`Sato, 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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`3 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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`

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`United States Patent No. 8,336,772 B2
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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”—an interface for communicating, a user interface, a data carrier inter-
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`face, a program store storing code implementable by a processor, and a processor . . . for
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`implementing the stored code. The recited code is similarly elementary, requesting and
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`receiving user identifier data, requesting, receiving, and presenting content data, receiving and respond-
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`ing to a user selection, and receiving and responding to payment validation data. SeeE. 1301
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`cl. 19. But at the patent’s earliest claimed priority date, these simple elements and their
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`combination were well known to any POSA. The patent acknowledges that the idea
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`of providing access to data in exchange for payment (e.g., purchase of music on a CD)
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`was already well known. E.g., Ex.1301 5:13-16 (“the purchase outright option may be
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`equivalent to the purchase of a compact disc (CD)”). And, as demonstrated herein, the pri-
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`or art was teeming with disclosures of this basic concept and its straightforward im-
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`plementation in physical systems.
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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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`3
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`

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`United States Patent No. 8,336,772 B2
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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).4
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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 recently in Alice Corp.Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct.
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`2347 (2014)—decided after filing Petitioner’s original challenges to the ’772—the
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`challenged claims are also directed to patent ineligible subject matter under § 101. As
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`the Board noted, “the ’772 patent makes clear that the asserted novelty of the inven-
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`tion is not in any specific improvement of software or hardware, but in the method of
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`controlling access to data,” CBM2014-00110, Pap. 7, at 13, and the challenged claims are
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`directed to no more than the unpatentable abstract idea of paying for and controlling
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`4 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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`4
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`United States Patent No. 8,336,772 B2
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`access to data, with at most the addition of well-known, routine and conventional fea-
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`
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`tures—in particular, generic computer implementation that cannot confer patentabil-
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`ity on these patent-ineligible abstractions. E.g., Alice, 134 S. Ct. at 2359-60. Each chal-
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`lenged claim recites ineligible subject matter and is 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
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`also have been at minimum obvious. See, e.g., Ex.1319 §V. In March 1991, for example,
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`U.S. Pat. No. 4,999,806 issued, disclosing a system and method for sale and distribu-
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`tion of digital products (e.g., software) by phone, and for content protection. See, e.g.,
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`Ex.1306 Abstract; 1:67-2:9. Ex.1306 also discloses different types of access, e.g., pur-
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`chase vs. rental and a Control Transfer Program and a Primary Protection Program to
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`prevent unauthorized copies. See Ex.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. Ex.1311’s emphasis on assuring per-
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`mission to access a program and compensating providers underscores this existing fo-
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`cus in the art on digital rights management (“DRM”), over eight years before the
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`claimed priority date. See, e,g., Ex.1319 ¶ 33.
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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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`5
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`United States Patent No. 8,336,772 B2
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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; id. 8; see also id. Fig. 1. Von Faber notes its system could be used for a variety
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`of known distribution and payment methods. See, e.g., id. 13. Von Faber also addressed
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`the known issue of payment distribution to providers. See, e.g., id.; 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,
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`Ex.1316 (“Rydbeck,” pub’d Aug. 26, 1999), discloses a cell phone for storing digital
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`6
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`content in non-volatile memory and accessing that content. See, e.g., Ex.1316 5;
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`Ex.1319 ¶41. Ex.1317 (“Sato,” pub’d June 18, 1999), discloses storing media content
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`onto mobile user devices and playing the media content from these mobile devices,
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`and storing that media on a removable IC card. See, e.g., id. ¶9; ¶13; 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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`in the challenged claims. Long before the purported priority date, disclosures abound-
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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
`
`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.
`
`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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`7
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`United States Patent No. 8,336,772 B2
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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.
`
`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 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
`
`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
`
`§ 42.301(a). The patent alleges this terminal is part of a system that allows content
`
`owners to make content available without fear of losing revenue. Ex.1301 2:15-19. See
`
`also id. Fig 12(a)-(e). More generally, the patent is about “[d]ata storage and access sys-
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`tems [that] enable downloading and paying for data.” Id. Abstract. “The combination
`
`of payment data and stored content data . . . helps reduce the risk of unauthorized ac-
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`cess.” Id. And in asserting the patent, Smartflash conceded the alleged invention re-
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`8
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` CBM2015-00032
`United States Patent No. 8,336,772 B2
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`lates to a financial activity or transaction, stating “[t]he patents-in-suit generally cover
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`a portable data carrier for storing data and managing access to the data via payment in-
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`formation and/or use status rules. The patents-in-suit also generally cover a computer net-
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`work . . . that serves data and manages access to data by, for example, validating payment
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`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 finan-
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`cial services provider to control payment” (id. 3:53-55), and can “validate payment with an ex-
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`ternal authority such as a bank” (id. 2:8-10). Further, “[p]ayment for the data item or items
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`requested may either be made directly to the system owner or may be made to an e-payment system”
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`(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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` CBM2015-00032
`United States Patent No. 8,336,772 B2
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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). 5
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`2.
`Further, claim 19 does not cover a “technological invention” within the excep-
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`Claim 19 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). Rather, the specification explains that
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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
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`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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`5 Claim 8 is similarly financial in nature. See CBM2014-00110, Pap. 7, 10-12.
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` CBM2015-00032
`United States Patent No. 8,336,772 B2
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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.
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`Ex.1301. “The data access terminal may be a conventional computer or, alternatively, it
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`may be a mobile phone,” both of which were known in the art well before the earliest
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`claimed priority. Id. 4:7; 16:47-52. Indeed, the specification disclaims the use of particu-
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`lar hardware, relying instead on conventional hardware known to a POSA: “[t]he phys-
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`ical embodiment of the system is not critical and a skilled person will understand that the ter-
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`minals, data processing systems and the like can all take a variety of forms.” Id. 12:37-40. The
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`“data supplier” referenced in the claim is also not a technological component, and re-
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`quires no specific hardware, see Ex.1301 6:20-22; 6:62-64, but is, instead, simply a sup-
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`plier of online data. Id. 6:2-4. See also id. 6:62-64 (“The computer system is operated by
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`a data supplier or a data supplier ‘system owner’ for providing content data to the data carri-
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`er.”); 8:16-19. The referenced data carrier is, e.g., a standard smart card. Ex.1301 11:35.
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`The use of software (code) for requesting and receiving data, transmitting pay-
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`ment data, and receiving and responding to payment validation data, as disclosed in
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`the specification, was also exceedingly well known in the art, and could not transform
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` CBM2015-00032
`United States Patent No. 8,336,772 B2
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`the 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.1319 § V, ¶¶ 79-87. The functions performed by the code (E1-E6)—
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`relate to the identification, access, presentation, selection and control of data and con-
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`tent information as disclosed in the specification—were commonplace before the ear-
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`liest claimed priority date. See, e.g., Ex.1306 8:62-9:12; Ex.1301 1:40-50. Further, the
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`financial transaction performed by the code described in elements E7-E9 was well
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`known, because, as the patent concedes, e-payment systems were known. Ex.1301
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`13:43-64 (“E-payment systems coupled to banks . . . these provide an e-payment system accord-
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`ing to, for example, MONDEX, Proton, and/or Visa cash compliant standards . . . payment data
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`may be validated by a data access terminal using payment management code.”). Using code to im-
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`plement this transaction, as disclosed in the specification, was obvious and known.
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`E.g,, Ex.1319 §V, ¶¶ 79-87.
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`The state of the art at the time, and the detailed prior art analysis below, further
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`reflects claim 19 does not recite a technological feature that is novel and nonobvious.
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`See, e.g., Section II, supra; Section IV.C, infra. Even apart from other failures to trigger
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`the exception, for these reasons alone, claim 19 is not a technological invention. 6
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`6 Claim 8 similarly requires no technology at all other than, at most, a data terminal
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