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` CBM2015-00033
`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 CBM2015-00033
`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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`

`

` CBM2015-00033
`United States Patent No. 8,336,772 B2
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`
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`TABLE OF CONTENTS
`
`B.
`
`C.
`
`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 30 Is Financial In Nature ...................................... 7
`2.
`Claim 30 Does Not Cover A Technological Invention ................... 9
`Related Matters and Mandatory Notice Information; Petitioner Is a Real
`Party In Interest Sued for and Charged With Infringement ..................... 13
`IV. DETAILED EXPLANATION OF REASONS FOR RELIEF REQUESTED,
`SHOWING IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE
`CHALLENGED CLAIM IS UNPATENTABLE ............................................... 14
`A.
`Claim Construction .......................................................................................... 17
`B.
`The Challenged Claims Are Unpatentable Under 35 U.S.C. § 101 .......... 20
`1.
`Claims Are Directed To Abstract Ideas ........................................... 21
`2.
`Claims Do Not Disclose An “Inventive Concept” That Is
`“Significantly More” Than An Abstract Idea .................................. 24
`Field Of Use Limitations Cannot Create Patent Eligibility ........... 24
`Generic Computer Implementation Cannot Transform
`Abstract Ideas Into Patent Eligible Inventions ............................... 25
`Functional Nature Confirms Preemption and Ineligibility ............ 29
`5.
`6. Machine-or-Transformation Test Confirms Ineligibility .............. 31
`The Challenged Claims Are Invalid Under § 103 ....................................... 31
`1.
`Overview of Stefik ............................................................................... 31
`2. Motivation to Combine Stefik with Poggio ..................................... 35
`3. Motivation to Combine Stefik with Poggio and Subler ................. 36
`4. Motivation to Combine Stefik with Poggio, Subler, and
`Ahmad .................................................................................................... 37
`5. Motivation to Combine Stefik with Poggio, Subler, Ahmad,
`and Kopp ............................................................................................... 39
`6. Motivation to Combine Stefik with Poggio, Subler, Ahmad,
`and Sato ................................................................................................. 40
`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
`
`3.
`4.
`
`7.
`
`i
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`

`

`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). ........................................................................... 42
`(a)
`Cl. 25: A handheld multimedia terminal for
`retrieving and accessing protected multimedia
`content, comprising: ............................................................. 42
`Cl. 25: a wireless interface configured to interface
`with a wireless network for communicating with a
`data supplier; .......................................................................... 43
`Cl. 25: 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; .................................. 46
`Cl. 25: a program store storing processor control
`code; ........................................................................................ 46
`Cl. 25: 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; .............................................. 47
`Cl. 25: 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: ....................................................... 48
`Cl. 25: code to request identifier data identifying
`one or more items of multimedia content available
`for retrieving via said wireless interface; ............................ 49
`Cl. 25: 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; ............ 51
`Cl. 25: code to request content information via said
`wireless interface, wherein said content
`information comprises one or more of description
`data and cost data pertaining to at least one of said
`one or more items of multimedia content identified
`by said identifier data; ........................................................... 53
`Cl. 25: code to receive said content information via
`said wireless interface; ........................................................... 55
`
`(h)
`
`(b)
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`(c)
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`(d)
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`(e)
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`(f)
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`(g)
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`(i)
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`(j)
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`United States Patent No. 8,336,772 B2
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`ii
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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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`(s)
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`(t)
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` CBM2015-00033
`United States Patent No. 8,336,772 B2
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`Cl. 25: 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; .............................................................. 57
`Cl. 25: code to receive a first user selection
`selecting at least one of said one or more items of
`multimedia content available for retrieving; ...................... 58
`Cl. 25: code responsive to said first 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; ....................... 58
`Cl. 25: 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; ............ 60
`Cl. 25: 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. 25: code to receive a second user selection
`selecting one or more of said items of retrieved
`multimedia content to access; .............................................. 63
`Cl. 25: code to read use status data and use rules
`from said non-volatile memory pertaining to said
`second selected one or more items of retrieved
`multimedia content; and ....................................................... 64
`Cl. 25: code to evaluate said use status data and use
`rules to determine whether access is permitted to
`said second selected one or more items of retrieved
`multimedia content, .............................................................. 66
`Cl. 25: wherein said user interface is operable to
`enable a user to make said first user selection of
`said selected at least one item of multimedia
`content available for retrieving, ........................................... 69
`Cl. 25: wherein said user interface is operable to
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`iii
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` CBM2015-00033
`United States Patent No. 8,336,772 B2
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`(u)
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`(v)
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`(w)
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`enable a user to make said second user selection of
`said one or more items of retrieved multimedia
`content available for accessing, and .................................... 69
`Cl. 25: wherein said user interface is operable to
`enable a user to access said second user selection
`of said one or more item of retrieved multimedia
`content responsive to said code to control access
`permitting access to said second selected one or
`more items of retrieved multimedia content. .................... 70
`Cl. 26: A handheld multimedia terminal as claimed
`in claim 25 further comprising code to present said
`second selected one or more items of retrieved
`multimedia content to a user via said display if
`access is permitted. ................................................................ 71
`Cl. 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: ..................... 72
`Cl. 30: a user interface; .......................................................... 74
`Cl. 30: a data carrier interface; ............................................. 74
`Cl. 30: a program store storing code implementable
`by a processor; and ................................................................ 75
`Cl. 30: 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: ............................................................................. 76
`Cl. 30: Remaining Claim 30 limitations .............................. 78
`Cl. 32: A data access terminal as claimed in claim
`30, wherein said data access terminal is integrated
`with a mobile communications device and
`audio/video player. ............................................................... 79
`CONCLUSION........................................................................................................... 80
`
`(x)
`(y)
`(z)
`
`(aa)
`
`(bb)
`(cc)
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`V.
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`iv
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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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` CBM2015-00033
`United States Patent No. 8,336,772 B2
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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
`
`v
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`

`

`1420
`
`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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` CBM2015-00033
`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
`
`International Publication No. WO 95/34857
`
`JP Patent Application Publication No. H10-269289 (transla-
`tion)
`File History for U.S. Patent No. 7,942,317
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`File History for U.S. Patent No. 8,033,458
`
`U.S. Patent No. 8,061,598
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`U.S. Patent No. 8,118,221
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`File History for U.S. Patent No. 8,118,221
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`U.S. Patent No. 7,334,720
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`File History for U.S. Patent No. 7,334,720
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`U.S. Patent No. 5,646,992
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`vi
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` CBM2015-00033
`United States Patent No. 8,336,772 B2
`
`I.
`
`INTRODUCTION
`
`Pursuant to § 321 and Rule § 42.304,2 the undersigned, on behalf of Apple Inc.
`
`(“Petitioner”), petitions for covered business method review of claims 25, 26, 30, and
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`32 (“challenged claims”) of U.S. Pat. No. 8,336,772, issued to Smartflash Technolo-
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`gies Limited and assigned to Smartflash LLC (“Patentee”). Petitioner asserts it is more
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`likely than not that the challenged claims are unpatentable and requests review of, and
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`judgment against, the challenged claims under §§ 101 and 103. Petitioner has concur-
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`rently filed two other CBM Petitions against different ’772 claims. The Director, pur-
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`suant to Rule 325(c), may determine that merger, or at minimum coordination, of
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`these proceedings, is appropriate.
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`
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`Petitioner previously filed CBM2014-00110/111 on the ’772 under §§102 and
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`103. In its Decisions Denying Institution, the Board construed “use rule” as “a rule
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`specifying a condition under which access to content is permitted,” and determined
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`Petitioner had not shown it was more likely than not that it would prevail in demon-
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`strating that Stefik alone or combined with Poggio and/or Sato rendered obvious lim-
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`itations related to “code to request identifier data” and “use status data.” CBM2014-
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`00110, Pap. 7, at 15-18; -00111, Pap. 7, at 15-21. In light of the Board’s decision, Peti-
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`tioner now identifies additional prior art with explicit disclosures of the limitations re-
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`
`2 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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`

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` CBM2015-00033
`United States Patent No. 8,336,772 B2
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`lated to “code to request identifier data.” For example, Subler discloses an end user
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`device that provides a powerful, easy-to-use interface to browse through and analyze
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`products available from a storage database. Ex.1436 3:46-52. The end user device
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`software includes code that retrieves product information from the database and pre-
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`sents the information to the user in a windowed graphical user interface. Ex.1436
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`4:49-54; 5:26-30. Petitioner also identifies additional prior art—Ahmad and Kopp
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`(Exs.1403, 1404)—with explicit disclosures of “use rules” as construed by the Board
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`and “use status data.” Ahmad, e.g., describes a software rental system that monitors an
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`elapsed time of use recorded by a timer or a number of uses recorded by a counter
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`and does not permit access to the rented software if a software rental license has been
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`exhausted (see, e.g., Ex.1403 2:62-3:18), while Kopp discloses checking recorded utili-
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`zation data and denying access to a data record if a licensed extent of utilization has
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`been exhausted (see, e.g., Ex.1404 6:41-47). Petitioner has also identified additional dis-
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`closures in Stefik and Poggio concerning these limitations, further confirming a
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`POSA3 would have found it obvious and routine to implement the system disclosed
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`3 “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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`

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` CBM2015-00033
`United States Patent No. 8,336,772 B2
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`by Stefik and Poggio using the expressly advantageous teachings of Subler, Ahmad,
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`Kopp, and/or Sato, detailed in §IV.C, infra. See, e.g., Ex.1419 ¶¶ 60-67.
`
`The challenged claims merely recite basic computer systems well-known in the
`
`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 user interface, a data car-
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`rier interface, a program store storing code implementable by a processor, and a proces-
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`sor . . . for implementing the stored code. The recited code is similarly elementary, re-
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`questing and receiving user identifier data, requesting, receiving, and presenting content infor-
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`mation, receiving and responding to a user selection, receiving and responding to payment vali-
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`dation data, receiving a second user selection, and reading and evaluating use status data
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`and use rules. Ex. 1401 cl.30. But at the patent’s earliest claimed priority date, these
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`simple elements and their combination were well known to any POSA. The patent
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`admits the idea of providing access to data in exchange for a payment (e.g., purchase
`
`of music on a CD) was already well known. See id. 5:13-16. And, the prior art was
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`teeming with 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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`3
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`

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` CBM2015-00033
`United States Patent No. 8,336,772 B2
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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. The
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`other challenged claims are variations on this simple theme, with the addition, in the
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`challenged “handheld multimedia terminal” claims, of equally generic components. 4
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`See, e.g., id. 12:37-40 (“physical embodiment of the system is not critical . . . the terminals, data
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`processing systems and the like can all take a variety of forms.”). Indeed, as confirmed by Alice
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`Corp.Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)—decided after Petitioner’s
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`original ’772 petitions—the challenged claims are also directed to patent ineligible
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`subject matter under §101. As the Board noted previously, “the ’772 patent makes
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`clear that the asserted novelty of the invention is not in any specific improvement of
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`software or hardware, but in the method of controlling access to data,” CBM2014-00110,
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`Pap. 7, at 13, and the challenged claims are directed to not more than the unpatenta-
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`4 Claim 25, e.g., recites a “handheld multimedia terminal,” but simply adds to claim 30
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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
`
`claim 30, simply specifies integration with a mobile communications device. Ex.1401.
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`4
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`

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` CBM2015-00033
`United States Patent No. 8,336,772 B2
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`ble abstract idea of paying for and controlling access to data, with at most the addition
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`of well-known, routine and conventional features—in particular, generic computer
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`implementation that cannot confer patentability on these patent-ineligible abstractions.
`
`E.g., Alice, 134 S. Ct. at 2359-60. Each challenged claim recites ineligible subject mat-
`
`ter and is obvious, and is thus 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
`
`also have been at minimum obvious. See, e.g., Ex.1419 § V. In 1991, e.g., U.S. Pat.
`
`4,999,806 disclosed a system and method for content protection and sale and distribu-
`
`tion of digital products (e.g., software) by phone. See, e.g., Ex.1406 Abstract; 1:67-2:9.
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`Ex.1406 also discloses different types of access, e.g., purchase vs. rental and a Control
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`Transfer Program and a Primary Protection Program to prevent unauthorized copies.
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`See id. Abstract; 2:65-3:23; Ex.1419 ¶ 30.
`
`In 1992, U.S. Pat. No. 5,103,392 issued, disclosing use-based charging for digi-
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`tal products. See, e.g., id. Ex.1411 1:64-2:17. Ex. 1411’s emphasis on assuring permis-
`
`sion to access a program and compensating providers underscores this existing focus
`
`in the art on digital rights management (“DRM”), over eight years before the claimed
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`priority date. See, e,g., Ex.1419 ¶ 33. In 1997, Exhibit 1418 (“von Faber”) observed
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`that “[e]lectronic commerce systems dealing with the distribution of digital contents . . . have
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`5
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`to couple the use of the provided digital goods with a prior payment for the goods in a way which
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`cannot be bypassed,” proposing a system where customers purchase keys required to
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`utilize encrypted content. See, e.g., id. at 7, 8; see also id. Fig. 1. Von Faber’s system can
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`be used for a variety of known distribution and payment methods, and addresses the
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`known issue of payment distribution to providers. See, e.g., id. at 13; 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
`
`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; 255:23-
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`43. Ginter thus highlights the known flexibility in such distribution systems, under-
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`scoring that combinations among disclosures of such distribution systems would have
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`been obvious. See, e.g., Ex.1419 ¶¶ 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.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;
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`6
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`United States Patent No. 8,336,772 B2
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`Ex.1419 ¶ 41. The art was rife with discussion of the same supposed “invention” in
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`the challenged claims. Long before the purported priority date, disclosures abounded
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`of the very features that Smartflash now seeks to claim as its exclusive property.
`
`III. PETITIONER HAS STANDING
`A.
`The ’772 is a CBM patent under AIA § 18(d)(1), and Petitioner certifies it is
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`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.
`
`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 herein.
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`1.
`A CBM patent “ claims a method or corresponding apparatus for performing data pro-
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`Exemplary Claim 30 Is Financial In Nature
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`cessing or other operations used in the practice, administration, or management of a financial product
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`or service, except that the term does not include patents for technological inventions.”
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`AIA § 18(d)(1); 37 C.F.R. § 42.301. “[T]he definition of covered business method pa-
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`tent was drafted to encompass patents claiming activities that are financial in nature, in-
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`cidental to a financial activity or complementary to a financial activity.’” 77 Fed. Reg. 48,734-35
`
`(Aug. 14, 2012). “[F]inancial product or service” is to be interpreted broadly, id., and
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`“financial . . . simply means relating to monetary matters”—it does not require any link to tra-
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`7
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`ditional financial industries such as banks. See, e.g., CBM2012-00001, Pap. 36 at 23.
`
`
`
`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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`The specification confirms that the recited “data access terminal” is “for stor-
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`ing and paying for data,” (Ex.1401 1:20-22), “can communicate with a bank or other financial
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`services provider to control payment” (id. 3:53-55), and can “validate payment with an external
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`authority such as a bank” (id. 2:8-10). “Payment for the data item or items requested may ei-
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`ther be made directly to the system owner or may be made to an e-payment system” (id. 20:59-61),
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`and such systems may be provided “according to, for example, MONDEX, Proton,
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`and/or Visa cash compliant standards” and “payment authentication . . . may [] be performed
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`by, for example, a data access terminal . . . using payment management code.” Id. 13:43-64.
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`See also id. 7:66-8:61 (esp. 8:26-28); 11:65-12:4; Fig. 12(a)-(e). Claim 30 expressly recites
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`software to perform data processing and other operations in connection with the re-
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`cited “payment validation system” thus clearly relates to a financial activity and
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`providing a financial service. See CBM2013-00020, Pap. 14 at 11-12 (“the electronic
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`transfer of money is a financial activity, and allowing such a transfer amounts to
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`providing a financial service.”); 77 Fed. Reg. 48,734, 48,735. 5
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`2.
`Further, claim 30 does not cover a “technological invention” within the exception in
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`Claim 30 Does Not Cover A Technological Invention
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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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`First, claim 30 does not recite a “technological feature” that is novel and un-
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`5 Claim 8 is similarly financial in nature. See CBM2014-00110, Pap. 7, 10-12.
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`obvious. “Mere recitation of known technologies, such as computer hardware, com-
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`munication or computer networks, software, memory, computer-readable storage me-
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`dium, scanners, display devices or databases, or specialized machines, such as an ATM
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`or point of sale device,” or “[r]eciting the use of known prior art technology to ac-
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`complish a process or method, even if that process or method is novel and non-
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`obvious” will “not typically render a patent a technological invention.” See, e.g., 77 Fed.
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`Reg. 48,764 (Aug. 14, 2012). As the PTAB further stated, “combining prior art struc-
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`tures to achieve a normal, expected, or predictable result of that combination” is not a
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`technological invention. Id. As its language makes clear, claim 30 involves no “technolo-
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`gy” at all other than, at most, “a data access terminal,” which includes user and data
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`carrier interfaces, a program store, and a processor. Ex.1401. “The data access termi-
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`nal may be a conventional computer or, alternatively, it may be a mobile phone,” both of
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`which were known in the art well before 2000. Id. 4:7; 16:47-52. Indeed, the specifica-
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`tion disclaims the use of particular hardware, relying instead on conventional hardware
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`known to a POSA: “[t]he physical embodiment of the system is not critical and a skilled per-
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`son will understand that the terminals, data processing systems and the like can all take a variety
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`of forms.” Id. 12:37-40. The “data supplier” of the claims is also not a technological
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`component, and requires no specific hardware, see Ex.1401 6:20-22; 6:62-64, but is, in-
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`stead, simply a supplier of online data. Id. 6:2-4. See also id. 6:62-64 (“The computer
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`system is operated by a data supplier or a data supplier ‘system owner’ for providing content
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`data to the data carrier.”); 8:16-19. The referenced data carrier is, e.g., a standard smart
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`card. Id. 11:35. The use of software (code) for requesting and receiving identifier data
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`identifying content data, requesting, receiving, and presenting content information, re-
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`ceiving and responding to a user selection for content (including by transmitting pay-
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`ment data), receiving and responding to payment validation data, receiving a second
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`user selection for content, and reading and evaluating use status data and use rules to
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`determine access, was also exceedingly well known in the art, and could not transform
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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.1419 § V, ¶¶ 80-88. The functions performed by the code—related to
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`the identification, access, presentation, selection, and control of data and content in-
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`formation, as disclosed in the specification—were commonplace before the earliest
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`claimed priority date. See, e.g., Ex.1406 8:62-9:12; Ex.1401 1:40-50. Further, the send-
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`ing of payment data to a payment validation system and the financial transaction per-
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`formed by the code was well known, because, as the patent concedes, e-payment sys-
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`tems were known. Ex.1401 13:43-64 (“E-payment systems coupled to banks . . . these pro-
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`vide an e-payment system according to, for example, MONDEX, Proton, and/or Visa cash com-
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`pliant standards . . . payment data may be validated by a data access terminal using payment man-
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`agement code.”). Using code to implement this transaction, as disclosed in the specifica-
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`tion, was obvious and known. E.g,, Ex.1419 §V, ¶¶ 80-88. Providing access to content
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`based on payment and rules, as claimed in the patent, was also well known. See, e.g.,
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`Exs.1407; 1406 Abstract, 1:67-2:9; 1408 Abstr