`Tel: 571-272-7822
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`Paper 11
`Entered: May 28, 2015
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`
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`
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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 CBM2015-00033
`Patent 8,336,772 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`CBM2015-00033
`Patent 8,336,772 B2
`
`A. Background
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Corrected Petition requesting covered
`
`business method patent review of claims 25, 26, 30, and 32 (the “challenged
`
`claims”) of U.S. Patent No. 8,336,772 B2 (Ex. 1401, “the ’772 patent”)
`
`pursuant to § 18 of the Leahy-Smith America Invents Act (“AIA”).1 Paper
`
`5 (“Pet.”). Smartflash LLC (“Patent Owner”) filed a Preliminary Response.
`
`Paper 8 (“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 324, which provides that a
`
`covered business method patent review may not be instituted “unless . . . it is
`
`more likely than not that at least 1 of the claims challenged in the petition is
`
`unpatentable.”
`
`Upon consideration of the Petition and Preliminary Response, we
`
`determine that Petitioner has demonstrated that it is more likely than not that
`
`the challenged claims are unpatentable. Accordingly, we institute a covered
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`business method review of claims 25, 26, 30, and 32 of the ’772 patent.
`
`B. Asserted Grounds
`
`Petitioner argues that the challenged claims are unpatentable based on
`
`the following grounds (Pet. 19):
`
`Basis Claims Challenged
`§ 101 25, 26, 30, and 32
`§ 103 25, 26, 30, and 32
`
`References
`Not Applicable
`Stefik2, Poggio3, Subler4, and
`Ahmad5
`
`1 Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011).
`2 U.S. Patent No. 5,530,235 (Ex. 1412) (“Stefik ’235”), and U.S. Patent No.
`5,629,980 (Ex. 1413) (“Stefik ’980”) (collectively, “Stefik”).
`3 European Patent Application, Publication No. EP0809221A2 (translation)
`(Ex. 1415) (“Poggio”).
`
`2
`
`
`
`CBM2015-00033
`Patent 8,336,772 B2
`
`References
`Stefik, Poggio, Subler, Ahmad,
`and Kopp6
`Stefik, Poggio, Subler, Ahmad,
`and Sato7
`Stefik, Poggio, Subler, Ahmad,
`Kopp, and Sato
`
`Basis Claims Challenged
`§ 103 25, 26, 30, and 32
`
`§ 103 25, 26, 30, and 32
`
`§ 103 25, 26, 30, and 32
`
`Petitioner also provides a declaration from Anthony J. Wechselberger.
`
`Ex. 1419.
`
`C. Related Matters
`
`The parties indicate that the ’772 patent is the subject of the following
`
`district court cases: Smartflash LLC v. Apple Inc., Case No. 6:13-cv-447
`
`(E.D. Tex.); Smartflash LLC v. Samsung Electronics Co., Case No. 6:13-cv-
`
`448 (E.D. Tex.). Pet. 14; Paper 6, 3. Patent Owner also indicates that the
`
`’772 patent is the subject of two other district court cases: Smartflash LLC
`
`v. Google, Inc., Case No. 6:14-cv-435 (E.D. Tex.); Smartflash LLC, et al. v.
`
`Apple Inc., Case No. 6:15-cv-145 (E.D. Tex.), all pending in the U.S.
`
`District Court for the Eastern District of Texas (E.D. Tex.). Paper 10, 4–5.
`
`Petitioner previously filed two Petitions for covered business method
`
`patent review of the ’772 Patent: CBM2014-00110 and CBM2014-00111.
`
`A covered business method patent review was denied in both cases. Apple
`
`Inc. v. Smartflash LLC, Case CBM2014-00110, slip op. at 19 (PTAB Sept.
`
`30, 2014) (Paper 7); Apple Inc. v. Smartflash LLC, Case CBM2014-00111,
`
`
`4 U.S. Patent No. 5,646,992 (Ex. 1436) (“Subler”).
`5 U.S. Patent No. 5,925,127 (Ex. 1403) (“Ahmad”).
`6 U.S. Patent No. 5,940,805 (Ex. 1404) (“Kopp”).
`7 JP Patent Application Publication No. H11-164058 (including translation)
`(Ex. 1417) (“Sato”).
`
`3
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`CBM2015-00033
`Patent 8,336,772 B2
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`slip op. at 22 (PTAB Sept. 30, 2014) (Paper 7). Several related patents,
`
`which claim priority back to a common series of applications, are currently
`
`the subject of CBM2014-00102, CBM2014-00106, CBM2014-00108,
`
`CBM2014-00112, CBM2015-00015, CBM2015-00016, CBM2015-00017,
`
`and CBM2015-00018, filed by Apple.
`
`Petitioner filed concurrently another two Petitions for covered
`
`business method patent review of the ’772 patent: CBM2015-00031 and
`
`CBM2015-00032. In addition, Petitioner concurrently filed two other
`
`Petitions for covered business method patent review challenging claims of
`
`other patents owned by Patent Owner, which disclose similar subject matter:
`
`CBM2015-00028 and CBM2015-00029.
`
`D. The ’772 Patent
`
`The ’772 patent relates to “a portable data carrier for storing and
`
`paying for data and to computer systems for providing access to data to be
`
`stored” and the “corresponding methods and computer programs.”
`
`Ex. 1401, 1:24–28. Owners of proprietary data, especially audio recordings,
`
`have an urgent need to address the prevalence of “data pirates,” who make
`
`proprietary data available over the internet without authorization.
`
`Id. at 1:32–58. The ’772 patent describes providing portable data storage
`
`together with a means for conditioning access to that data upon validated
`
`payment. Id. at 1:62–2:3. According to the ’772 patent, this combination of
`
`the payment validation means with the data storage means allows data
`
`owners to make their data available over the internet without fear of data
`
`pirates. Id. at 2:10–18.
`
`As described, the portable data storage device is connected to a
`
`terminal for internet access. Id. at 1:62–2:3. The terminal reads payment
`
`4
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`CBM2015-00033
`Patent 8,336,772 B2
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`information, validates that information, and downloads data into the portable
`
`storage device from a data supplier. Id. The data on the portable storage
`
`device can be retrieved and output from a mobile device. Id. at 2:4–7. The
`
`’772 patent makes clear that the actual implementation of these components
`
`is not critical and the alleged invention may be implemented in many ways.
`
`See, e.g., id. at 25:59–62 (“The skilled person will understand that many
`
`variants to the system are possible and the invention is not limited to the
`
`described embodiments.”).
`
`E. Illustrative Claims
`
`As noted above, Petitioner challenges claims 25, 26, 30, and 32.
`
`Claims 25 and 30 are independent and claims 26 and 32 depend from claims
`
`25 and 30, respectively. Claim 30 is illustrative of the claimed subject
`
`matter and is reproduced below:
`
`30. A data access terminal for controlling access to one or
`more content data items stored on a data carrier, the data access
`terminal comprising:
`
`a user interface;
`
`a data carrier interface;
`
`a program store storing code implementable by a
`processor; and
`
`a processor coupled to the user interface, to the data
`carrier interface and to the program store for implementing the
`stored code, the code comprising:
`
`code to request identifier data identifying one or more
`content data items available for retrieving;
`
`code to receive said identifier data identifying said one or
`more content data items available for retrieving;
`
`code to request content information pertaining to at least
`one of said one or more content data items identified by said
`identified data;
`
`5
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`CBM2015-00033
`Patent 8,336,772 B2
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`code to receive said content information;
`
`code to present said content information to a user via said
`user interface pertaining to said identified one or more content
`data items available for retrieving;
`
`code to receive a first user selection selecting at least one
`of said one or more of said content data items available for
`retrieving;
`
`code responsive to said first user selection of said
`selected at least one content data item to transmit payment data
`relating to payment for said selected at least one content item
`for validation by a payment validation system;
`
`code to receive payment validation data defining if said
`payment validation system has validated payment for said
`selected at least one content data item;
`
`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;
`
`code to receive a second user selection selecting one of
`said one or more of said retrieved content data items to access;
`
`code to read use status data and use rules from said data
`carrier pertaining to said second selected one or more retrieved
`content data items; and
`
`code to evaluate said use status data and use rules to
`determine whether access is permitted to said second selected
`one or more retrieved content data items.
`
`Id. at 30:65–31:42.
`
`A. Claim Construction
`
`ANALYSIS
`
`While Petitioner presents constructions for several claim terms, no
`
`terms require express construction for purposes of this Decision.
`
`6
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`CBM2015-00033
`Patent 8,336,772 B2
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`B. Covered Business Method Patent
`
`Section 18 of the AIA provides for the creation of a transitional
`
`program for reviewing covered business method patents. A “covered
`
`business method patent” is a patent that “claims a method or corresponding
`
`apparatus for performing data processing or other operations used in the
`
`practice, administration, or management of a financial product or service,
`
`except that the term does not include patents for technological inventions.”
`
`AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have only one
`
`claim directed to a covered business method to be eligible for review. See
`
`Transitional Program for Covered Business Method Patents—Definitions of
`
`Covered Business Method Patent and Technological Invention; Final Rule,
`
`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”) (Comment 8).
`
`1. Financial Product or Service
`
`Petitioner asserts that claim 30 “expressly recites software to perform
`
`data processing and other operations in connection with the recited ‘payment
`
`validation system’ [and] thus clearly relates to a financial activity and
`
`providing a financial service.” Pet. 9. Based on this record, we agree with
`
`Petitioner that the subject matter recited by claim 30 is directed to activities
`
`that are financial in nature, namely data access conditioned on payment
`
`validation.
`
`Claim 30 recites “code . . . to transmit payment data relating to payment
`
`for said selected at least one content item for validation by a payment
`
`validation system,” “code to receive payment validation data,” and “code
`
`responsive to the payment validation data to retrieve said selected at least
`
`one content data item from a data supplier and to write said retrieved at least
`
`one content data item into said data carrier.” We are persuaded that payment
`
`7
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`CBM2015-00033
`Patent 8,336,772 B2
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`validation is a financial activity, and conditioning data access based on
`
`payment validation amounts to a financial service. This is consistent with
`
`the Specification of the ’772 patent, which confirms claim 30’s connection
`
`to financial activities by stating that the invention “relates to a portable data
`
`carrier for storing and paying for data.” Ex. 1401, 1:24–25. The
`
`Specification also states repeatedly that the disclosed invention involves
`
`managing access to data based on payment validation. See, e.g., Ex. 1401,
`
`1:62–2:3, 6:64–7:1, 20:59–63.
`
` Patent Owner disagrees that claim 30 satisfies the financial in nature
`
`requirement of AIA § 18(d)(1), arguing that that section should be
`
`interpreted narrowly to cover only technology used specifically in the
`
`financial or banking industry. Prelim. Resp. 5–11. Patent Owner cites to
`
`various portions of the legislative history as support for its proposed
`
`interpretation. Id.
`
`We do not agree that the phrase “financial product or service” is as
`
`limited as Patent Owner proposes. The AIA does not include as a
`
`prerequisite for covered business method patent review, a “nexus” to a
`
`“financial business,” but rather a “method or corresponding apparatus for
`
`performing data processing or other operations used in the practice,
`
`administration, or management of a financial product or service.” AIA
`
`§ 18(d)(1). Further, contrary to Patent Owner’s view of the legislative
`
`history, the legislative history indicates that the phrase “financial product or
`
`service” is not limited to the products or services of the “financial services
`
`industry” and is to be interpreted broadly. CBM Rules, 77 Fed. Reg. at
`
`48,735–36. For example, the “legislative history explains that the definition
`
`of covered business method patent was drafted to encompass patents
`
`8
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`CBM2015-00033
`Patent 8,336,772 B2
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`‘claiming activities that are financial in nature, incidental to a financial
`
`activity or complementary to a financial activity.’” Id. (citing 157 Cong.
`
`Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)).
`
`In addition, Patent Owner asserts that claim 30 is not directed to an
`
`apparatus or method that is financial in nature because claim 30 “omits the
`
`specifics of how payment is made.” Prelim. Resp. 10–11. We are not
`
`persuaded by this argument because § 18(d)(1) of the AIA does not include
`
`such a requirement, nor does Patent Owner point to any other authority that
`
`imposes such a requirement. Id. We determine that because claim 19 recites
`
`payment data and restricting access content based on such payment data, as
`
`Patent Owner acknowledges (id.), the financial in nature requirement of
`
`§ 18(d)(1) is satisfied.
`
`For the reasons stated above, and based on the particular facts of this
`
`proceeding, we conclude that the ’772 patent includes at least one claim that
`
`meets the financial in nature requirement of § 18(d)(1) of the AIA.
`
`2. Exclusion for Technological Inventions
`
`Petitioner asserts that claim 30 does not fall within § 18(d)(1)’s
`
`exclusion for “technological inventions.” Pet. 9–13. In particular, Petitioner
`
`argues that claim 30 “does not claim ‘subject matter as a whole [that] recites
`
`a technological feature that is novel and unobvious over the prior art[] and
`
`solves a technical problem using a technical solution.’” Pet. 9 (quoting 37
`
`C.F.R. § 42.301(b)) (emphases in original). Patent Owner disagrees and
`
`argues that claim 30, as a whole, recites at least one technological feature
`
`that is novel and unobvious over the prior art. Prelim. Resp. 12–13.
`
`We are persuaded that claim 30 as a whole does not recite a
`
`technological feature that is novel and unobvious over the prior art. For
`
`9
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`CBM2015-00033
`Patent 8,336,772 B2
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`example, claim 30 recites only features such as “user interface,” “data carrier
`
`interface,” “program store,” “processor,” and “code.”
`
`In addition, the ’772 patent makes clear that the asserted novelty of
`
`the invention is not in any specific improvement of software or hardware,
`
`but in the method of controlling access to data. For example, the ’772 patent
`
`states that “there is an urgent need to find a way to address the problem of
`
`data piracy,” (id. at 1:56–58) while acknowledging that the “physical
`
`embodiment of the system is not critical and a skilled person will understand
`
`that the terminals, data processing systems and the like can all take a variety
`
`of forms” (id. at 12:37–40). Thus, on this record, we determine that claim
`
`30 is merely the recitation of a combination of known technologies, which
`
`indicates that it is not a patent for a technological invention. See Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012).
`
`Patent Owner also argues that claim 30 falls within § 18(d)(1)’s
`
`exclusion for “technological invention” because it is directed to solving the
`
`technological problem of “controlling access to one or more content data
`
`items stored on a data carrier, e.g., as part of a convenient, legitimate
`
`acquisition of data from a data supplier.” Prelim. Resp. 12. We are not
`
`persuaded by this argument because, as Petitioner argues, the problem being
`
`solved by claim 30 is a business problem—data piracy. Pet. 12. For
`
`example, the Specification states that “[b]inding the data access and payment
`
`together allows the legitimate owners of the data to make the data available
`
`themselves over the internet without fear of loss of revenue, thus
`
`undermining the position of data pirates.” Ex. 1401, 2:14–19. Therefore,
`
`based on the particular facts of this proceeding, we conclude that claim 30
`
`10
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`CBM2015-00033
`Patent 8,336,772 B2
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`does not recite a technological invention and is eligible for a covered
`
`business method patent review.
`
`3. Conclusion
`
`In view of the foregoing, we conclude that the ’772 patent is a covered
`
`business method patent under AIA § 18(d)(1) and is eligible for review
`
`using the transitional covered business method patent review program.
`
`C. Statutory Subject Matter
`
`Petitioner challenges claims 25, 26, 30, and 32 as being directed to
`
`patent-ineligible subject matter under 35 U.S.C. § 101. Pet. 20–31. Patent
`
`Owner does not address the merits of this challenge. See Prelim. Resp. 15–
`
`17. Analyzing the challenged claims using the two-step process applied
`
`recently in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014),
`
`Petitioner asserts that all the challenged claims are directed to an abstract
`
`idea without additional elements that transform the claims into a patent-
`
`eligible application of that idea. Pet. 20–31. Specifically, Petitioner argues
`
`that the challenged claims are directed to the abstract idea of “paying for and
`
`controlling access to data/content.” Id. at 20.
`
`We agree with Petitioner that, on this record, the challenged claims of
`
`the ’772 patent are more likely than not directed to patent-ineligible subject
`
`matter. Under 35 U.S.C. § 101, we must first identify whether an invention
`
`fits within one of the four statutorily provided categories of patent-
`
`eligibility: “processes, machines, manufactures, and compositions of
`
`matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713–14 (Fed. Cir.
`
`2014). Here, each of the challenged claims recites a “machine,” i.e., a
`
`“handheld multimedia terminal” (claim 25) or a “data access terminal”
`
`(claim 30), under § 101. Section 101, however, “contains an important
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`CBM2015-00033
`Patent 8,336,772 B2
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`implicit exception [to subject matter eligibility]: Laws of nature, natural
`
`phenomena, and abstract ideas are not patentable.” Alice, 134 S. Ct. at 2354
`
`(quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct.
`
`2107, 2116 (2013) (internal quotation marks omitted)).
`
`We are persuaded that the challenged claims are more likely than not
`
`drawn to a patent-ineligible abstract idea. In Alice, the Supreme Court
`
`reiterated the framework set forth previously in Mayo Collaborative Servs.
`
`v. Prometheus Labs., 132 S. Ct. 1289 (2012) “for distinguishing patents that
`
`claim laws of nature, natural phenomena, and abstract ideas from those that
`
`claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at
`
`2355. The first step in the analysis is to “determine whether the claims at
`
`issue are directed to one of those patent-ineligible concepts.” Id. If so, the
`
`second step in the analysis is to consider the elements of the claims
`
`“individually and ‘as an ordered combination’” to determine whether there
`
`are additional elements that “‘transform the nature of the claim’ into a
`
`patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1291, 1298).
`
`In other words, the second step is to “search for an ‘inventive concept’—i.e.,
`
`an element or combination of elements that is ‘sufficient to ensure that the
`
`patent in practice amounts to significantly more than a patent on the
`
`[ineligible concept] itself.’” Id. (alteration in original) (quoting Mayo, 132
`
`S. Ct. at 1294).
`
`Petitioner contends that each challenged claim is drawn to the concept
`
`of controlling access based on payment, a “well-known ‘building block of
`
`the modern economy’ and a longstanding ‘method of organizing human
`
`activity’ long pre-dating the ’772 patent.” Pet. 23 (quoting Alice, 134 S. Ct.
`
`at 2356–57). As discussed above, the ’772 patent discusses addressing
`
`12
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`CBM2015-00033
`Patent 8,336,772 B2
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`recording industry concerns of data pirates offering unauthorized access to
`
`widely available compressed audio recordings. Ex. 1401, 1:33–58. The
`
`’772 patent proposes to solve this problem by restricting access to data on a
`
`portable data carrier based upon payment validation. Id. at 1:62–2:7. The
`
`’772 patent makes clear that the heart of the claimed subject matter is
`
`restricting access to stored data based on supplier-defined access rules and
`
`validation of payment. Id. at 2:8–19. We are persuaded, on this record, that
`
`the challenged claims are directed to an abstract idea. See Alice, 134 S. Ct.
`
`at 2356 (holding that the concept of intermediated settlement at issue in
`
`Alice was an abstract idea); Accenture Global Servs., GmbH v. Guidewire
`
`Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (holding the abstract
`
`idea at the heart of a system claim to be “generating tasks [based on] rules . .
`
`. to be completed upon the occurrence of an event” (citation omitted)).
`
`Turning to the second step of the analysis, we look for additional
`
`elements that can “transform the nature of the claim” into a patent-eligible
`
`application of an abstract idea. Mayo, 132 S. Ct. at 1297. On this record,
`
`we are not persuaded that the challenged claims of the ’772 patent add an
`
`inventive concept sufficient to ensure that the patent in practice amounts to
`
`significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct.
`
`at 2355; see also Accenture Global Servs., 728 F.3d at 1345 (holding claims
`
`directed to the abstract idea of “generating tasks [based on] rules . . . to be
`
`completed upon the occurrence of an event” to be unpatentable even when
`
`applied in a computer environment and within the insurance industry).
`
`Petitioner contends that the “challenged claims simply instruct that the
`
`abstract ideas of payment for controlling access to data should be
`
`implemented in software and refer only to generic computer functions.” Pet.
`
`13
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`26. On this record, we are not persuaded that the recited limitations of the
`
`challenged claims, which include, for example, “wireless interface,” “non-
`
`volatile memory,” “program store,” “processor,” “display,” “user interface,”
`
`“data carrier interface,” and “code” perform functions that are anything other
`
`than “purely conventional.” See Alice, 134 S. Ct. at 2359. Thus, on this
`
`record, we are not persuaded that any of the allegedly technical limitations
`
`viewed “both individually and ‘as an ordered combination,’” transform the
`
`nature of the claims into patent-eligible subject matter. See Alice, 134 S. Ct.
`
`at 2355 (quoting Mayo, 132 S. Ct. at 1297, 1298).
`
`Having considered the information provided in the Petition and the
`
`Preliminary Response, we are persuaded that Petitioner has demonstrated
`
`that it is more likely than not that challenged claims 25, 26, 30, and 32 are
`
`unpatentable under 35 U.S.C. § 101.
`
`Patent Owner argues that Petitioner’s assertion of this ground is
`
`untimely because Petitioner “provides no valid reason why it did not raise
`
`this purely legal issue as grounds for invalidity in its two prior petitions filed
`
`long before [the instant Corrected P]etition.” Prelim. Resp. 16. According
`
`to Patent Owner,
`
`[A]llowing Apple to raise a new ground of invalidity that it
`could have and should have raised in its April 3, 2014 petitions
`encourages Apple’s piecemeal invalidity challenges to Patent
`Owner’s patent claims and runs afoul of the [Board’s] charge to
`‘secure the just, speedy, and inexpensive resolution’ of Apple’s
`covered business method challenges to the ‘772 Patent.
`
`Id. at 17. Patent Owner, however, cites no statutory or regulatory authority
`
`precluding Petitioner from asserting this ground. Moreover, Patent Owner
`
`acknowledges that the Supreme Court’s June 19, 2014 decision in Alice was
`
`decided after Petitioner’s original petitions were filed in March 2014. Id. at
`
`14
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`16. Thus, on this record, we are not persuaded that Petitioner’s assertion of
`
`a new ground based on 35 U.S.C. § 101 is untimely.
`
`Conclusion
`
`On this record, Petitioner has established that it is more likely than not
`
`that claims 25, 26, 30, and 32 of the ’772 patent are unpatentable under 35
`
`U.S.C. § 101.
`
`D. Obviousness Challenges
`
`Petitioner argues that claims 25, 26, 30, and 32 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over: Stefik, Poggio, Subler, and Ahmad;
`
`Stefik, Poggio, Subler, Ahmad, and Kopp; Stefik, Poggio, Subler, Ahmad,
`
`and Sato; and Stefik, Poggio, Subler, Ahmad, Kopp, and Sato. Pet. 15, 31–
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`80.
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`A patent claim is unpatentable, under 35 U.S.C. § 103(a), if the
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`differences between the claimed subject matter and the prior art are such that
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`the subject matter, as a whole, would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations, including: (1) the scope and content of the prior art,
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`(2) any differences between the claimed subject matter and the prior art, (3)
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`the level of skill in the art, and (4) where in evidence, so-called secondary
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`considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`After carefully considering the Petition and Preliminary Response, we
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`determine that Petitioner has not shown that it is more likely than not that it
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`would prevail in showing that claims 25, 26, 30, and 32 are unpatentable as
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`obvious over any of the proposed obviousness combinations identified
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`above. An obviousness inquiry is based on factual inquiries including the
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`difference between the claimed invention and the prior art. Graham, 383
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`U.S. at 17–18. For each of the challenged claims, Petitioner has not
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`identified sufficiently the differences between the claimed invention and
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`each reference, or how the teachings of the references are to be combined, if
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`at all. Pet. 41–79. Petitioner also has not shown that any of the individual
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`references anticipate the challenged claims. Thus, it is unclear how
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`Petitioner proposes that we do a proper Graham analysis to determine that
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`the challenged claims are unpatentable.
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`We cannot ascertain from the Petition, including the claim charts and
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`the numerous attending footnotes, which disclosure of which prior art
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`reference Apple is referring to as teaching or suggesting each limitation and
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`why such disclosure satisfies the limitation. With respect to independent
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`claim 25, for example, Petitioner cites Stefik for each claim limitation. Id. at
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`42–71. At the same time, Petitioner cites Poggio, Ahmad, Kopp, and/or
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`Subler for thirteen of the nineteen limitations of claim 25. Id. With respect
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`to the recited “code to request identifier data identifying one or more items of
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`multimedia content available for retrieving via said wireless interface” in claim
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`25, for example, Petitioner cites a number of portions of Stefik, as well as
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`portions of Poggio and Subler. See id. at 49–51. Petitioner does not allege
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`directly that Stefik alone teaches or renders obvious each limitation, yet, as
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`noted above, Petitioner cites Stefik for each claim limitation. At the same
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`time, Petitioner proposes combining a number of features from Poggio
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`and/or Subler with the teachings of Stefik. See, e.g., id. at 44 n.19, 45–46
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`n.20, 46 n.22, 50 n.26, 51 n.27.
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`Petitioner’s analysis prevents us from determining what specific
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`teaching is lacking in Stefik (i.e., the differences between the claimed
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`subject matter and Stefik). See Graham, 383 U.S. at 17–18. For example,
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`with respect to “a wireless interface configured to interface with a wireless
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`network for communicating with a data supplier,” also recited in claim 25,
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`Petitioner identifies the external interface or I/O port of a repository, such as
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`the PCMCIA interface of a DocuCard (id. at 43), and argues that “[t]o the
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`extent that Stefik does not explicitly disclose wireless communications, a
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`POSA would have appreciated and found it obvious to implement Stefik’s
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`media distribution among repositories using wireless communications, and
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`to do so by employing, for the disclosed repository interfaces, wireless
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`interfaces with this capability.” Id. at 43–44 n.18. Petitioner also alleges
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`that Sato discloses a radio transceiver. Id. at 43–44. Petitioner further
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`contends that it would have been obvious to “implement Stefik’s system of
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`repositories for encouraging the secure distribution of digital media, using
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`Sato’s advantageous explicit teachings of a mobile media device (such as a
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`mobile phone) for accessing such media wirelessly to increase the spread of
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`the content distribution.” Id. at 44 n.19. Similarly, Petitioner contends that
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`Poggio discloses “[a] client computer [that] includes an interface (e.g.,
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`interconnectivity means; communications interface) to communicate over
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`the network and access the remote system (e.g., VVM)” (id. at 45) and
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`argues that “[t]o the extent that Poggio does not explicitly disclose wireless
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`communications, a POSA would have appreciated and found it obvious to
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`implement Poggio’s VVM using wireless communications, and to do so by
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`employing, for the disclosed client computer interfaces, wireless interfaces
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`with this capability.” Id. at 45 n.20.
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`Nowhere does Petitioner explain any differences between the claimed
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`invention and Stefik. As a result, it is not clear whether Petitioner is alleging
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`that certain claim limitations are taught by Stefik, rendered obvious by
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`Stefik, taught by Poggio, Subler, Ahmad, Kopp, and/or Sato, or rendered
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`obvious in view of Stefik, Poggio, Subler, Ahmad, Kopp, and/or Sato. .
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`Given this ambiguity in the Petition, we cannot ascertain which reference to
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`rely on for any given limitation or why a person of ordinary skill in the art
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`would have found it obvious to combine that particular disclosed subject
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`matter with the subject matter disclosed by the other references.
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`We are, thus, not persuaded that Petitioner has shown that it is more
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`likely than not that claim 25 would have been obvious over the combination
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`of: Stefik, Poggio, Subler, and Ahmad; Stefik, Poggio, Subler, Ahmad, and
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`Kopp; Stefik, Poggio, Subler, Ahmad, and Sato; or Stefik, Poggio, Subler,
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`Ahmad, Kopp, and Sato. For the same reasons, we are not persuaded that
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`Petitioner has shown more likely than not that claims 26, 30, and 32 would
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`have been obvious over the combination of Stefik, Poggio, and Subler, or the
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`combination of Stefik, Poggio, Subler, and Sato.
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`Conclusion
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`On this record, Petitioner has not established that it is more likely than
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`not that claims 25, 26, 30, and 32 are unpatentable as obvious over: Stefik,
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`Poggio, Subler, and Ahmad; Stefik, Poggio, Subler, Ahmad, and Kopp;
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`Stefik, Poggio, Subler, Ahmad, and Sato; or Stefik, Poggio, Subler, Ahmad,
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`Kopp, and Sato.
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`CONCLUSION
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`For the foregoing reasons, we determine that the information
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`presented in the Petition establishes that it is more likely than not that
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`Petitioner would prevail in establishing the unpatentability of claims 25, 26,
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`30, and 32 of the ’772 patent.
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`The Board has not made a final determination on the patentability of
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`any challenged claims.
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`For the reasons given, it is:
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`ORDER
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`ORDERED that a covered business method patent review is instituted
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`as to claims 25, 26, 30, and 32 under 35 U.S.C. § 101 as being directed to
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`patent-ineligible subject matter under;
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`FURTHER ORDERED that no other ground raised in the Petition is
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`authorized for covered business method patent review; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 324(d) and
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`37 C.F.R. § 42.4, notice is hereby gi