Covered Business Method Patent Review
`United States Patent No. 8,336,772
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No.:
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` 104677-5008-821
`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
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`INTRODUCTION ....................................................................................................... 1 
`I. 
`II.  OVERVIEW OF FIELD OF THE CLAIMED INVENTION ......................... 6 
`III.  PETITIONER HAS STANDING ............................................................................ 9 
`A. 
`The ’772 Patent Is a Covered Business Method (“CBM”) Patent ............. 9 
`1. 
`Exemplary Claim 30 Is Financial In Nature .................................... 10 
`2. 
`Claim 30 Does Not Cover A Technological Invention ................. 12 
`Related Matters and Mandatory Notice Information; Petitioner Is a Real
`Party In Interest Sued for and Charged With Infringement ..................... 16 
`IV.  DETAILED EXPLANATION OF REASONS FOR RELIEF REQUESTED,
`SHOWING IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE
`CHALLENGED CLAIM IS UNPATENTABLE ............................................... 17 
`A. 
`Claim Construction .......................................................................................... 19 
`B. 
`The Challenged Claims Are Unpatentable Under 35 U.S.C. § 101 .......... 23 
`1. 
`Claims Are Directed To Abstract Ideas ........................................... 24 
`2. 
`Claims Do Not Disclose An “Inventive Concept” That Is
`“Significantly More” Than An Abstract Idea .................................. 27 
`Field Of Use Limitations Cannot Create Patent Eligibility ........... 27 
`Generic Computer Implementation Cannot Transform
`Abstract Ideas Into Patent Eligible Inventions ............................... 28 
`Functional Nature Confirms Preemption and Ineligibility ............ 32 
`5. 
`Machine-or-Transformation Test Confirms Ineligibility .............. 34 
`6. 
`The Challenged Claims Are Invalid Under § 103 ....................................... 35 
`1. 
`Overview of Stefik ............................................................................... 35 
`2. 
`Motivation to Combine Stefik with Poggio ..................................... 38 
`3. 
`Motivation to Combine Stefik with Poggio and Subler ................. 40 
`4. 
`Motivation to Combine Stefik with Poggio, Subler, and
`Ahmad .................................................................................................... 41 
`Motivation to Combine Stefik with Poggio, Subler, Ahmad,
`and Kopp ............................................................................................... 42 
`
`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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`6. 
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`7. 
`
`Motivation to Combine Stefik with Poggio, Subler, Ahmad,
`and Sato ................................................................................................. 44 
`Claims 25, 26, 30, and 32 are Obvious in Light of Stefik in
`view of Poggio, Subler, and Ahmad (Ground 2), Obvious
`in Light of Stefik in View of Poggio, Subler, Ahmad, and
`Kopp (Ground 3), Obvious in Light of Stefik in View of
`Poggio, Subler, Ahmad, and Sato (Ground 4), and Obvious
`in Light of Stefik in View of Poggio, Subler, Ahmad, Kopp,
`and Sato (Ground 5). ........................................................................... 46 
`CONCLUSION........................................................................................................... 80 
`
`V. 
`
`
`iii
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`

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`EXHIBIT LIST
`1401
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`1402
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`1403
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`1404
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`1405
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`1406
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`1407
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`1408
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`1409
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`1410
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`1411
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`1412
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`1413
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`1414
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`1415
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`1416
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`1417
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`1418
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`1419
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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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`

`
`1420
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`1421
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`1422
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`1423
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`1424
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`1425
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`1426
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`1427
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`1428
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`1429
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`1430
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`1431
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`1432
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`1433
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`1434
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`1435
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`1436
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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
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`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
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`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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`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 25, 26, 30, and 32 (“challenged claims”) of U.S. Pat. No.
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`8,336,772, issued to Smartflash Technologies Limited and assigned to Smartflash LLC
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`(“Patentee”). Petitioner asserts it is more likely than not that the challenged claims are
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`unpatentable for the reasons herein and requests review of, and judgment against, the
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`challenged claims under §§ 101 and 103. As discussed in Sec. III.B, infra, Petitioner
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`has concurrently filed two other CBM Petitions requesting judgment against differ-
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`ent ’772 claims. The Director, pursuant to Rule 325(c), may determine that merger, or
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`at minimum coordination, of these proceedings, is appropriate.
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`
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`Petitioner previously filed CBM2014-00110/111 seeking review of the ’772 un-
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`der §§102 and 103. Those petitions were not instituted. In its Decisions Denying In-
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`stitution, the Board construed “use rule” as “a rule specifying a condition under which
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`access to content is permitted,” and determined Petitioner had not shown it was more
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`likely than not that it would prevail in demonstrating that Stefik alone or combined
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`with Poggio and/or Sato rendered obvious limitations related to “code to request
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`identifier data…” and “use status data.” CBM2014-00110, Pap. 7, at 15-18; -00111,
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`1 All section cites herein are to 35 U.S.C. or 37 C.F.R., as context indicates, and all
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`emphasis herein added unless otherwise noted.
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` Covered Business Method Patent Review
`United States Patent No. 8,336,772
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`Pap. 7, at 15-21. In light of the Board’s decision, Petitioner now identifies additional
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`prior art with explicit disclosures of the limitations related to “code to request identi-
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`fier data…” For example, Subler discloses an end user device that provides a power-
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`ful, easy-to-use interface to browse through and analyze products available from a
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`storage database. Ex.1436 3:46-52. The end user device software includes code that
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`retrieves product information from the database and presents the information to the
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`user in a windowed graphical user interface. Ex.1436 4:49-54; 5:26-30. Petitioner also
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`identifies additional prior art—Ahmad and Kopp (Exs.1403 and 1404)—with explicit
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`disclosures of “use rules” as construed by the Board and “use status data.” Ahmad,
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`for example, describes a software rental system that monitors an elapsed time of use
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`recorded by a timer or a number of uses recorded by a counter and does not permit
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`access to the rented software if a software rental license has been exhausted (see, e.g.,
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`Ex.1403 2:62-3:18), while Kopp discloses checking recorded utilization data and deny-
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`ing access to a data record if a licensed extent of utilization has been exhausted (see,
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`e.g., Ex.1404 6:41-47). Petitioner has also identified additional disclosures in Stefik and
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`Poggio concerning these limitations, further confirming a POSA2 would have found it
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`2 “POSA” refers to knowledge/understanding of a person of ordinary skill in the art
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`as of Oct. 25, 1999, who would have at least a B.S. in E.E., C.S., or a telecommunica-
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`tions related field, and at least 3 yrs. industry experience including client-server data/
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`information distribution and management architectures. See Ex.1419 ¶¶ 25, 28 n.3.
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`2
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`United States Patent No. 8,336,772
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`obvious and routine to implement the system disclosed by Stefik and Poggio using the
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`expressly advantageous teachings of Subler, Ahmad, Kopp, and/or Sato, detailed in
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`§IV.C, infra. See, e.g., Ex.1419 ¶¶ 60-67.
`
`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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`trolling access to one or more content data items stored on a data carrier.” Ex.1401
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`1:24-26. Claim 30, for example, recites four rudimentary components of a data access
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`terminal “for controlling access to one or more content data items”—(A) a user interface, (B) a
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`data carrier interface, (C) a program store storing code implementable by a processor, and
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`(D) a processor . . . for implementing the stored code. The recited code is similarly ele-
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`mentary, requesting and receiving user identifier data (D1-D2), requesting, receiving, and present-
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`ing content information (D3-D5), receiving and responding to a user selection (D6-D7), re-
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`ceiving and responding to payment validation data (D8-D9), receiving a second user selec-
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`tion (D10), and reading and evaluating use status data and use rules (D11-D12):
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`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;
`[B] a data carrier interface;
`[C] a program store storing code implementable by a processor; and
`[D] a processor coupled to the user interface, to the data carrier interface
`and to the program store for implementing the stored code, the code
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`3
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`United States Patent No. 8,336,772
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`comprising:
`[D1]code to request identifier data identifying one or more content
`data items available for retrieving;
`[D2] code to receive said identifier data identifying said one or more
`content data items available for retrieving;
`[D3] code to request content information pertaining to at least one of
`said one or more content data items identified by said identified data;
`[D4] code to receive said content information;
`[D5] 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;
`[D6] code to receive a first user selection selecting at least one of said
`one or more of said content data items available for retrieving;
`[D7] code responsive to said first user selection of said selected at
`least one content data item to transmit payment data relating to pay-
`ment for said selected at least one content item for validation by a
`payment validation system;
`[D8] code to receive payment validation data defining if said payment
`validation system has validated payment for said selected at least one
`content data item;
`[D9] 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;
`[D10] code to receive a second user selection selecting one of said one
`or more of said retrieved content data items to access;
`[D11] code to read use status data and use rules from said data carrier
`pertaining to said second selected one or more retrieved content data
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`United States Patent No. 8,336,772
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`items; and
`[D12] code to evaluate said use status data and use rules to determine
`whether access is permitted to said second selected one or more re-
`trieved content data items.
`Ex.1401. 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 a payment (e.g., purchase of music on
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`a CD) was already well known. E.g., id. 5:13-16 (“the purchase outright option may be
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`equivalent to the purchase of a compact disc (CD)”). And, the prior art was teeming with
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`disclosures of this basic concept and its straightforward physical implementation.
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`Further, claim 30 clearly involves no “technology” at all other than “a data access
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`terminal,” with user and data carrier interfaces, a program store storing code, and a processor
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`that implements the specification’s well-known steps—all conceded as well known
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`and commonplace by the ’772, which states this “terminal comprises a general purpose
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`computer.” E.g., id. 4:7, 16:47-52. Claim 30 recites no more than a system for requesting
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`and retrieving content while sending payment data, receiving and responding to pay-
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`ment data, and controlling access to the data based on payment validation data. And
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`the other challenged claims are nothing but variations on this simple theme, with the
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`addition, in the challenged “handheld multimedia terminal” claims, of equally generic
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`components (e.g., known wireless interface, non-volatile memory, and a display). 3 See,
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`3 Claim 25, e.g., recites a “handheld multimedia terminal,” but simply adds to claim 30
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`United States Patent No. 8,336,772
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`e.g., id. 12:37-40 (“physical embodiment of the system is not critical and a skilled person will un-
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`derstand that the terminals, data processing systems and the like can all take a variety of forms.”).
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`Indeed, as confirmed by Alice Corp.Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347
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`(2014)—decided after Petitioner’s original ’772 petitions—the challenged claims are
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`also directed to patent ineligible subject matter under §101. As the Board noted previ-
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`ously, “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 obvious, and is thus 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.1419 § V. In 1991, e.g.,
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`the requirements of a wireless interface, non-volatile memory, and a display, while
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`specifying the user interface enables certain functions. Claim 32, which depends from
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`claim 30, simply specifies integration with a mobile communications device. Ex.1401.
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`6
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`United States Patent No. 8,336,772
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`U.S. Pat. 4,999,806 disclosed a system and method for content protection and sale
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`and distribution of digital products (e.g., software) by phone. See, e.g., Ex.1406 Abstract
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`(“central station distributes software by telephone. . . accepts credit card information, transmits an
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`acceptance code . . . After verifying the credit card information, the station calls the purchaser back
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`and continues with the transaction only after receiving the acceptance code.”); 1:67-2:9 (describing
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`“means for selling and distributing protected software using standard telephone lines,” “permit[ting]
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`the purchaser to rent the protected software for a period of time,” and “to rent the protected software
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`for a specific number of runs”). Ex.1406 also discloses (1) different types of access, e.g.,
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`purchase vs. rental and (2) a Control Transfer Program and a Primary Protection Pro-
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`gram to prevent unauthorized copies. See id. Abstract; 2:65-3:23; Ex.1419 ¶ 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.1411 1:64-2:17. Ex. 1411’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.1419 ¶ 33. Also in 1997, Exhibit 1418 (“von Faber”)
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`observed that “[e]lectronic commerce systems dealing with the distribution of digital con-
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`tents . . . have to couple the use of the provided digital goods with a prior payment for the goods in a
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`way which cannot be bypassed,” proposing a system where customers purchase keys
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`required to utilize encrypted content. See, e.g., id. at 7(“The basic idea . . . is to distribute
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`the contents in encrypted form, and to have the customer pay for the key which he needs to transform
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`7
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`the encrypted content in an usable form.”); id. 8; see also id. Fig. 1. Von Faber’s system can be
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`used for a variety of known distribution and payment methods. See, e.g., id. 13 (“Differ-
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`ent methods can be used to distribute the encrypted contents (standard techniques). . . . Different
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`electronic payment methods can be integrated . . . . This flexibility leads to the fact that totally differ-
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`ent authorisation methods can be integrated.”). Von Faber further addressed the known issue
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`of payment distribution to providers. See, e.g., id. (“The system automatically divides the
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`package price (payments) and guarantees that the money is transferred to each Content Provider.”);
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`Ex.1419 ¶¶ 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.1414 Abstract. Ginter’s system “help[s] to ensure that
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`information is accessed and used only in authorized ways, and maintain the integrity, availabil-
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`ity, and/or confidentiality of the information.” See, e.g., id. Ginter’s “techniques may be
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`used to support an all-electronic information distribution, for example, utilizing the ‘electronic
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`highway.’” Id. Ginter discloses that the various entities of the virtual distribution envi-
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`ronment (“VDE”) can flexibly take on any VDE roles. See, e.g., id. 255:22-23 (“All par-
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`ticipants 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 among disclosures of such distribution systems would have been obvi-
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`ous. See, e.g., Ex.1419 ¶¶ 39, 40.
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`8
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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.1416 (“Rydbeck,” pub’d Aug. 26, 1999), discloses a cell phone for storing digital
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`content in non-volatile memory and accessing that content. See, e.g., Ex.1416 5 (“Be-
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`cause of its integration into the cellular phone, the digital entertainment module can share
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`components already present in the cellular phone. Such savings would not be available
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`if a 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.1419 ¶ 41. Thus, as these background examples
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`and the additional prior art detailed below in IV.B (including the primary prior art
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`Stefik patent) illustrate, the art was rife with discussion of the same supposed “inven-
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`tion” now memorialized in the challenged claims. Long before the purported priority
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`date, disclosures abounded of the very features that Smartflash now seeks to claim as
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`its exclusive property. As outlined below, the challenged claims are obvious.
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`III. PETITIONER HAS STANDING
`A.
`The ’772 is a CBM patent under AIA § 18(d)(1), and Petitioner certifies it is
`
`The ’772 Patent Is a Covered Business Method (“CBM”) Patent
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`available for review under § 42.304(a). Although many claims qualify, a patent with
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`even one CBM claim is a CBM patent. See CBM 2012-00001, Doc. 36 at 26; 77 Fed.
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`9
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`Reg. 48,709 (Aug. 14, 2012). This Board previously found the claim 8 satisfies the
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`CBM requirement, CBM2014-00104, Pap. 8, 8-13. Petitioner nevertheless additionally
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`addresses Claim 30 (quoted above) herein.
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`1. Exemplary Claim 30 Is Financial In Nature
`A CBM patent is “a patent that claims a method or corresponding apparatus for per-
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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); 37 C.F.R. § 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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`industries such as banks. See, e.g., CBM2012-00001, Pap. 36 at 23. .
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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.1401 4:7-8)), that transmits payment data to a payment
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`validation system for authorization and responds to payment validation data to re-
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`trieve requested content. See id. cl. 8, 30, 35; AIA § 18(d)(1); Rule § 42.301(a). The pa-
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`tent alleges this terminal is part of a system that allows content to be made available
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`without fear of losing revenue, and claim 30 specifies that the terminal is “for control-
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`ling access to one or more content data items.” Ex.1401 2:15-19; see also id. Fig 12(a)-
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`(e). More generally, the patent is about “[d]ata storage and access systems [that] enable
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`downloading and paying for data.” Id. Abstract. “The combination of payment data
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`and stored content data . . . helps reduce the risk of unauthorized access.” Id. And in
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`asserting the patent, Smartflash conceded the alleged invention relates to a financial
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`activity or transaction, stating “[t]he patents-in-suit generally cover a portable data car-
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`rier for storing data and managing access to the data via payment information and/or use
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`status rule [and] also generally cover a computer network . . . that serves data and man-
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`ages access to data by, for example, validating payment information.” Ex.1402 ¶ 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.1401 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 30 expressly recites software to perform data processing and other oper-
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`ations in connection with the recited “payment validation system” thus clearly relates
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`11
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`to a financial activity and providing a financial service. See CBM2013-00020, Pap. 14 at
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`11-12 (“the electronic transfer of money is a financial activity, and allowing such a
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`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 30 Does Not Cover A Technological Invention
`Further, claim 30 does not cover a “technological invention” within the exception in
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`AIA § 18(d)(1), because it does not claim “subject matter as a whole [that] recites a
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`technological feature that is novel and unobvious over the prior art[] and solves a technical problem us-
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`ing a technical solution.” § 42.301(b). To the contrary, the specification explains that
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`claim 30’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 30 Does Not Recite A Technological Feature
`That Is Novel and Unobvious
`First, no “technological feature” of claim 30 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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`4 Claim 8 is similarly financial in nature. See CBM2014-00110, Pap. 7, 10-12.
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`12
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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 the 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 30 involves no “technology” at all other than, at
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`most, “a data access terminal,” which includes user and data carrier interfaces, a pro-
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`gram store, and a processor. Ex.1401. “The data access terminal may be a conventional
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`computer or, alternatively, it may be a mobile phone,” both of which were known in the
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`art well before 2000. Id. 4:7; 16:47-52. Indeed, the specification disclaims the use of par-
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`ticular hardware, relying instead on conventional hardware known to a POSA: “[t]he
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`physical embodiment of the system is not critical and a skilled person will understand that the
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`terminals, data processing systems and the like can all take a variety of forms.” Id. 12:37-40. The
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`“data supplier” of the claims is also not a technological component, and requires no
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`specific hardware, see Ex.1401 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 standard smart card. Id. 11:35.
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`The use of software (code) for requesting and receiving identifier data identify-
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`ing content data, requesting, receiving, and presenting content information, receiving
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`and responding to a user selection for content (including by transmitting payment da-
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`United States Patent No. 8,336,772
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`ta), receiving and responding to payment validation data, receiving a second user se-
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`lection for content, and reading and evaluating use status data and use rules to deter-
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`mine access, was also exceedingly well known in the art, and could not transform the
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`claims into a technological invention. See, e.g., 77 Fed. Reg. 48,756 48,764 (Aug. 14,
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`2012) (“[m]ere recitation of known technologies, such as . . . software, memory, com-
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`puter-readable storage medium . . . [will] not typically render a patent a technological
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`invention.”); Ex.1419 § V, ¶¶ 80-88. The functions performed by the code (D1-D7,
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`D10)—related to the identification, access, presentation, selection, and control of data
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`and content information, as disclosed in the specification—were commonplace before
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`the earliest claimed priority date. See, e.g., Ex.1406 8:62-9:12; Ex.1401 1:40-50. Further,
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`the sending of payment data to a payment validation system and (D7) and the finan-
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`cial transaction performed by the code described in elements D8 and D9 was well
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`known, because, as the patent concedes, e-payment systems were known. Ex.1401
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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.1419 §V, ¶¶ 80-88. Providing access to content based on payment and rules
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`(D11-D12), as claimed in the patent, was also well known. See, e.g., Exs.1407; 1406
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`14
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`Abstract, 1:67-2:9; 1408 Abstract, 4:27-35; 1419 §V, ¶¶ 76-78.
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`United States Patent No. 8,336,772
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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 30 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 30 is not a technological invention. 5
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`(b) Claim 30 Does