IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Racz et al.
`Attorney Docket No.: 39843-0008CP3
`
`U.S. Patent No.: 8,336,772
`
`Issue Date:
`December 25, 2012
`
`Appl. Serial No.: 13/212,047
`
`Filing Date:
`August 17, 2011
`Title:
`DATA STORAGE AND ACCESS SYSTEMS
`
`
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`
`UNITED STATES PATENT NO. 8,336,772 PURSUANT TO 35 U.S.C. § 321
`
`AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`TABLE OF CONTENTS
`
`I.
`
`V.
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 1
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 1
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 1
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 2
`PAYMENT OF FEES ..................................................................................... 2
`II.
`III. REQUIREMENTS FOR CBM UNDER 37 C.F.R. § 42.304 ......................... 3
`A. Grounds for Standing Under 37 C.F.R. § 42.304(a)................................. 3
`B. Challenge Under 37 C.F.R. § 42.304(b) and Relief ................................. 3
`C. Claim Construction under 37 C.F.R. §§ 42.304(b)(3) .............................. 4
`D. The ‘772 Patent is a Covered Business Method Patent ............................ 7
`E. The ‘772 Patent Is Not Directed to a Technological Invention, And
`Thus, Should Not Be Excluded From the Definition of a CBM Patent. 10
`IV. SUMMARY OF THE ‘772 PATENT ........................................................... 13
`A. Brief Description ..................................................................................... 13
`IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE CLAIM OF
`THE ‘772 PATENT IS UNPATENTABLE .................................................. 15
`A. GROUND 1 – Claims 5, 10, 14, 26, and 32 are Patent Ineligible Under
`35 U.S.C. § 101. ...................................................................................... 15
`1.
`Legal Standard ............................................................................... 15
`2.
`Claims 5, 10, 14, 26 and 32 of the ‘772 Patent Recite an Abstract
`Idea that Can be Performed in the Human Mind and by a Human
`Using a Pen and Paper ................................................................... 21
`Claims 5, 10, 14, 26 and 32 of the ‘772 Patent Preempt All
`Effective Uses of the Abstract Idea of Enabling Limited Use of
`Paid-For/Licensed Content ............................................................ 58
`Claims 5, 10, 14, 26 and 32 of the ‘772 Patent are Not Tied to a
`Particular Machine in any Manner that Would Make these Claims
`Patent-Eligible ............................................................................... 61
`Claims 5, 10, 14, 26 and 32 of the ‘772 Patent Do Not Transform
`Anything in any Manner that Would Make these Claims Patent-
`Eligible .......................................................................................... 64
`VI. CONCLUSION .............................................................................................. 66
`
`3.
`
`4.
`
`5.
`
`ii
`
`
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`
`EXHIBITS
`
`SAMSUNG-1001 U.S. Patent No. 8,336,772 to Racz et al. (“the ‘772 Patent”)
`
`SAMSUNG-1002 Excerpts from the Prosecution History of the ‘772 Patent (“the
`Prosecution History”)
`
`SAMSUNG-1003 Declaration of Dr. Jeffrey Bloom re the ‘772 Patent
`
`SAMSUNG-1004 RESERVED
`
`SAMSUNG-1005 RESERVED
`
`SAMSUNG-1006 RESERVED
`
`SAMSUNG-1007 PCT Application PCT/GB00/04110 (“the ‘110 Appln”) or
`(‘110)
`
`SAMSUNG-1008 United Kingdom Patent Application GB9925227.2 (“the ‘227.2
`Appln.”) (‘227.2)
`
`SAMSUNG-1009 Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and Technolog-
`ical Invention, 77 Fed. Reg. 157 (Aug. 14, 2012)
`
`SAMSUNG-1010 A Guide to the Legislative History of the America Invents Act;
`Part II of II, 21 Fed. Cir. Bar J. No. 4
`
`SAMSUNG-1011 Interim Guidance for Determining Subject Matter Eligibility for
`Process Claims in View of Bilski v. Kappos (Jul. 27, 2010)
`
`SAMSUNG-1012 Apple Inc. v. Sightsound Technologies, LLC, CBM2013-00019
`Paper No. 17 (entered Oct. 8, 2013) at 11-13
`
`SAMSUNG-1013 Volusion, Inc. v. Versata Software, Inc. and Versata Develop-
`ment Group, Inc., CBM2013-00017 Paper No. 8 (entered Oct.
`24, 2013)
`
`iii
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`SAMSUNG-1014 Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024
`Paper No. 16 (entered Nov. 19, 2013)
`
`SAMSUNG-1015 RESERVED
`
`SAMSUNG-1016 RESERVED
`
`SAMSUNG-1017 RESERVED
`
`SAMSUNG-1018 RESERVED
`
`SAMSUNG-1019 RESERVED
`
`SAMSUNG-1020 RESERVED
`
`SAMSUNG-1021 RESERVED
`
`SAMSUNG-1022 RESERVED
`
`SAMSUNG-1023 RESERVED
`
`SAMSUNG-1024 RESERVED
`
`SAMSUNG-1025 RESERVED
`
`SAMSUNG-1026 RESERVED
`
`SAMSUNG-1027 RESERVED
`
`SAMSUNG-1028 Weinstein “MasterCard Plans Point-of-Sale Product for Mer-
`chants Leery of Bank Cards”, April 6, 1984
`
`SAMSUNG-1029 Mayo Collaborative Serv. v. Prometheus Labs., Inc., 132 S.Ct.
`1289 (2012)
`
`SAMSUNG-1030 Gottschalk v. Benson, 409 U.S. 63 (1972)
`
`iv
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`SAMSUNG-1031 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366
`(Fed. Cir. 2011)
`
`SAMSUNG-1032 Bilski v. Kappos, 130 S.Ct. 3218 (2010)
`
`SAMSUNG-1033 Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347
`(2014)
`
`SAMSUNG-1034 Bancorp Serv., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.),
`687 F.3d 1266 (Fed. Cir. 2012)
`
`SAMSUNG-1035 Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012)
`
`SAMSUNG-1036 SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed.
`Cir. 2010)
`
`SAMSUNG-1037 In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008)
`
`SAMSUNG-1038 Accenture Global Services, GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013)
`
`SAMSUNG-1039 Keith, Michael C., The Radio Station: Broadcast, Satellite and
`Internet (8th ed. 2009)
`
`SAMSUNG-1040 Russell Sanjek, Pennies from Heaven: The American Popular
`Music Business in the Twentieth Century (1996)(“Pennies from
`Heaven”)
`
`SAMSUNG-1041 ASCAP, “ASCAP’s Survey and Distribution System: Rules &
`Policies” (2014)
`
`SAMSUNG-1042 ASCAP, “ASCAP Payment System: Identifying Performances”
`(2014)
`
`SAMSUNG-1043 Billboard Newspaper, Ross, “BMI to Log Airplay at College
`Stations” (November 12, 1988)
`
`SAMSUNG-1044 BMI, “Royalty Policy Manual” (2014)
`
`v
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`SAMSUNG-1045 Encyclopaedia Britannica, Disc jockey, http://www.britan-
`nica.com/EBchecked/topic/165206/disc-jockey (last visited
`Nov. 25, 2014)
`
`SAMSUNG-1046 Billboard Music Week, “Facts on BMI Logging and Member-
`ship Noted” (January 30, 1961)
`
`SAMSUNG-1047 Dick Weissman, Songwriter’s Handy Guide Selling Your
`Songs – Part 3 (1980)
`
`SAMSUNG-1048 Curriculum Vitae of Dr. Jeffrey Bloom
`
`SAMSUNG-1049 Planet Bingo, LLC v. VKGS LLC, 2014 U.S. App. LEXIS
`16412, *4 (Fed. Cir. Aug. 26, 2014)
`
`SAMSUNG-1050 Ultramercial Inc. v. Hulu LLC No. 2010-1544, *11 (Fed. Cir.
`Nov. 14, 2014)
`
`SAMSUNG-1051 Enfish, LLC v. Microsoft Corp., 2014 WL 5661456, No. 2:12-
`cv-07360 (C.D. Cal. Nov. 3, 2014)
`
`SAMSUNG-1052 PCT Publication No. WO 00/08909 (“Gruse”)
`
`SAMSUNG-1053 U.S. Patent No. 5,915,019 (“Ginter”)
`
`SAMSUNG-1054 U.S. Patent No. 5,530,235 (“Stefik ‘235”)
`
`SAMSUNG-1055 DDR Holdings, LLC v. Hotels.com, L.P., No. 2013-1505 at *17
`(Fed. Cir. Dec. 5, 2014)
`
`SAMSUNG-1056 In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995)
`
`SAMSUNG-1057 In re Iwahashi, 888 F.2d 1370 (Fed. Cir. 1989)
`
`SAMSUNG-1058 Comcast IP Holdings I LLC v. Sprint Communications Com-
`pany L.P., et al., 1:2012cv00205 (D. Del. Jul. 16, 2014) Memo-
`randum Opinion
`
`vi
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`SAMSUNG-1059 2014 Interim Guidance on Patent Subject Matter Eligibility,
`(December 10, 2014)
`
`SAMSUNG-1060 Declaration of Dr. Jeffrey Bloom re the ‘772 Patent as filed in
`CBM2014-00200
`
`SAMSUNG-1061 Declaration of Dr. Jeffrey Bloom re the ‘772 Patent as filed in
`CBM2014-00204
`
`SAMSUNG-1062 Declaration of Steven Blumenfeld re the ‘772 Patent
`
`SAMSUNG-1063 Petitions for Covered Business Method Review: CBM2015-
`00031, CBM2015-00032, and CBM2015-00033
`
`SAMSUNG-1064 American Banker, MasterCard Plans Point-of-Sale Product For
`Merchants Leery of Bank Cards, (April 6, 1984)
`
`SAMSUNG-1065 I/P Engine, Inc. v. AOL Inc., 576 Fed. Appx 982, 996 (Fed. Cir.
`2014) (nonprecedential) (Mayer, J., concurring)
`
`
`
`vii
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`Two sister companies, Samsung Electronics America, Inc. and Samsung
`
`Electronics Co., Ltd. (“Petitioner” or “Samsung”) petition for Covered Business
`
`Method Patent Review (“CBM”) under 35 U.S.C. §§ 321 and § 18 of the Leahy-
`
`Smith American Invents Act of claims 5, 10, 14, 26 and 32 (“the Challenged
`
`Claims”) of U.S. Patent No. 8,336,772, SAMSUNG-1001. As explained in this pe-
`
`tition, there exists a reasonable likelihood that Samsung will prevail in demonstrat-
`
`ing unpatentability with respect to at least one of the Challenged Claims based on
`
`teachings set forth in at least the references presented in this petition. Samsung re-
`
`spectfully submits that a CBM review should be instituted, and that the Challenged
`
`Claims should be canceled as unpatentable.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd. are
`
`
`
`jointly filing this Petition, and are the real parties-in-interest.  Samsung Telecom-
`
`munications America, LLC (STA), originally a Petitioner and real-party-in-interest
`
`at the time of filing the Petition requesting CBM review of CBM2014-00200 and
`
`CBM2014-00204, has merged with and into Petitioner Samsung Electronics Amer-
`
`ica, Inc. (SEA) as of January 1, 2015.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Petitioner is not aware of any disclaimers or reexamination certificates for
`
`1
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`the ‘772 Patent. The ‘772 Patent is the subject of a number of civil actions includ-
`
`ing: Smartflash LLC et al. v. Apple, Inc., Case No. 6:13-cv-00447; Smartflash et al
`
`v. Samsung Electronics Co. Ltd. et al, Case No. 6:13-cv-00448; and Smartflash
`
`LLC et al. v. Google, Inc. et al, Case 6:14-cv-00435. It is also the subject of the
`
`following Petitions for Covered Business Method Review: Apple Inc. v. Smart-
`
`flash LLC, CBM2014-00110 and CBM2014-00111. Petitioner previously peti-
`
`tioned, in two other petitions assigned attorney docket numbers 39843-0008CP1
`
`(CBM2014-00204) and 39843-0008CP2 (CBM2014-00200), respectively, for
`
`CBM review of the ‘772 Patent under grounds additional to those presented in this
`
`petition. Three more CBMR petitions, namely, CBM2015-00031, CBM2015-
`
`00032, and CBM2015-00033, are also directed to the ‘772 Patent.
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Samsung designates W. Karl Renner, Reg. No. 41,265, as Lead Counsel and
`
`Thomas Rozylowicz, Reg. No. 50,620, as Backup Counsel, both available for ser-
`
`vice at 3200 RBC Plaza, 60 South Sixth Street, Minneapolis, MN 55402 (T: 202-
`
`783-5070) or via electronic service by email at CBM39843-0008CP3@fr.com.
`
`PAYMENT OF FEES
`
`II.
`Samsung authorizes charges to Deposit Acct. 06-1050 for the fee set in 37
`
`C.F.R. § 42.15(b) for this Petition and for payments of any related additional fees.
`
`
`
`2
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`III. REQUIREMENTS FOR CBM UNDER 37 C.F.R. § 42.304
`
`A. Grounds for Standing Under 37 C.F.R. § 42.304(a)
`Samsung certifies that the ‘772 Patent is eligible for CBM review. Sam-
`
`sung is not barred or estopped from requesting this review challenging the Chal-
`
`lenged Claims on the below-identified grounds.
`
`B. Challenge Under 37 C.F.R. § 42.304(b) and Relief
`Samsung requests a CBM review of the Challenged Claims on the grounds
`
`set forth in the table shown below, and requests that each of the Challenged Claims
`
`be found unpatentable. An explanation of how these claims are unpatentable under
`
`the statutory grounds identified below is provided in the form of detailed descrip-
`
`tion that follows. Additional explanation and support for each ground of rejection
`
`is set forth in the Declarations of Dr. Jeffrey Bloom (“Bloom”), SAMSUNG-1003,
`
`SAMSUNG-1060, and SAMSUNG-1061, as well as the Declaration of Mr. Steven
`
`Blumenfeld (“Blumenfeld”), SAMSUNG-1062, referenced throughout this Peti-
`
`tion.
`
`Ground
`
`‘772 Patent Claims
`
`Basis for Rejection
`
`Ground 1 5, 10, 14, 26, 32
`
`§ 101
`
`3
`
`
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`C. Claim Construction under 37 C.F.R. §§ 42.304(b)(3)
`A claim subject to CBM review is given its “broadest reasonable construc-
`
`
`
`tion in light of the specification of the patent in which it appears.” 37 C.F.R. §
`
`42.100(b). Thus the words of the claim are given their plain meaning unless that
`
`meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed.
`
`Cir. 1989). Petitioner submits, for the purposes of the CBM review only, that the
`
`claim terms are presumed to take on their broadest reasonable interpretation in
`
`view of the specification of The ‘772 Patent.1
`
`1.
`For this CBM review, “payment data” should be construed to include and be
`
`CONSTRUCTION 1 – Payment data
`
`met by data that relates to previous, present, and/or prospective payment.
`
`Claims 1, 4, 8, 14, 19, 25, 30, and 35 of the ‘772 Patent each recite the term
`
`“payment data.” Claim 14, for example, recites the following - “code responsive
`
`to said user selection of said selected at least one item of multimedia content to
`
`transmit payment data relating to payment for said selected at least one item of
`
`
`1 Because the standards of claim interpretation applied in litigation differ from
`
`PTO proceedings, any interpretation of claim terms in this CBM is not binding
`
`upon Petitioner in any litigation related to the subject patent. See In re Zletz, 893
`
`F.2d 319, 321-22 (Fed. Cir. 1989).
`
`4
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`multimedia content via said wireless interface for validation by a payment valida-
`
`tion system . . . .” A POSITA2 would understand that, as used in claims 1, 4, 8, 14,
`
`19, 25, 30, and 35, the term “payment data” indicates and is met by data that re-
`
`lates to previous, present, and/or prospective payment. Bloom at, e.g., ¶ 28, SAM-
`
`SUNG-1003.
`
`This interpretation is consistent with the relevant disclosure in the specifica-
`
`tion of the ‘772 Patent. See Bloom at, e.g., ¶ 28, SAMSUNG-1003. The ‘772 Pa-
`
`tent describes, e.g., “[d]ata storage and access systems . . . for downloading and
`
`paying for data,” including a payment validation system that “validate[s] payment
`
`with an external authority such as a bank or building society,” such that “[t]he
`
`combination of the payment validation means with the data storage means allows
`
`the access to the downloaded data which is to be stored by the data storage means,
`
`to be made conditional upon checked and validated payment being made for the
`
`data.” ‘772 Patent at Abstract, 2:8-15, SAMSUNG-1001. The ‘772 Patent’s de-
`
`scription of making access to downloaded content data conditional upon checked
`
`and validated payment being made indicates that “payment data” may relate previ-
`
`ous, present, and/or prospective payment. See Bloom at, e.g., ¶ 28, SAMSUNG-
`
`
`2 The term “POSITA”, as used in this Petition, refers to a Person of Ordinary Skill
`
`In the Art at the ‘772 Patent’s effective filing date.
`
`5
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`1003. The ‘772 Patent also states, e.g., in the Abstract, that “[d]ata storage and ac-
`
`cess systems are described for downloading a paying for data such as audio and
`
`video data, text, software, games, and other types of data” – further supporting that
`
`“payment data”, as used in the claims of the ‘772 Patent, can relate to present pay-
`
`ment. See also ‘772 Patent at 4:54-61 (“the portable data carrier further comprises
`
`a program store for storing code . . . wherein the code comprises code to output
`
`payment data from the payment data memory”), 3:49-64, 4:36-38, SAMSUNG-
`
`1001. In yet another example, the ‘772 Patent states that “[t]he carrier may also
`
`store content use rules pertaining to allowed use of stored data items,” and that
`
`“these use rules may be linked to payments made from [a] card . . .” – further sup-
`
`porting that “payment data”, as used in the claims of the ‘772 Patent, can relate to
`
`previous payment. ‘772 Patent at 5:1-12; see also 5:4-11, 5:17-20, SAMSUNG-
`
`1001.
`
`As such, the disclosure in the specification of the ‘772 Patent is consistent
`
`with the term “payment data,” as used in claims 1, 4, 8, 14, 19, 25, 30, and 35, as it
`
`would be understood by a POSITA: data that relates to previous, present, and/or
`
`prospective payment. See Bloom at, e.g., ¶ 28, SAMSUNG-1003. Thus, for pur-
`
`poses of this proceeding, “payment data” should be construed to include and be
`
`met by data that relates to previous, present, and/or prospective payment.
`
`
`
`6
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`D. The ‘772 Patent is a Covered Business Method Patent
`As rightly acknowledged by the PTAB in Institution Decisions of
`
`CBM2014-00110 and 00011, and for reasons detailed in petitions filed in those
`
`proceedings, which are substantively reproduced below, which are consistent with
`
`those articulated in petitions filed by Petitioner in CBM2014-00200 and 00204 on
`
`September 26, 2014, the ‘772 Patent, which generally relates to systems and meth-
`
`ods “for downloading and paying for data” is a “covered business method patent”
`
`(“CBM patent”) as defined under § 18 of the AIA and 37 C.F.R. § 42.301. ‘772
`
`Patent at Abstract, SAMSUNG-1001.
`
`The AIA defines a CBM patent as “a patent that claims a method or corre-
`
`sponding apparatus for performing data processing or other operations used in the
`
`practice, administration, or management of a financial product or service” (empha-
`
`ses added). AIA § 18(d)(1), SAMSUNG-1009; see also 37 C.F.R. § 42.301. The
`
`AIA’s legislative history demonstrates that the term “financial product or service”
`
`should be “interpreted broadly,” encompassing patents “’claiming activities that
`
`are financial in nature, incidental to a financial activity or complementary to a fi-
`
`nancial activity.’” Legislative history at 48735 (quoting 157 Cong. Rec. S5432
`
`(daily ed. Sept. 8, 2011) (statement of Sen. Schumer)), SAMSUNG-1010. Moreo-
`
`ver, as the Guide to the Legislative History of the America Invents Act indicates,
`
`the language “practice, administration, or management” is “intended to cover any
`
`7
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`ancillary activities related to a financial product or service, including . . . market-
`
`ing, customer interfaces [and] management of data . . .” (emphases added). Legis-
`
`lative history at 635-36, SAMSUNG-1010.
`
`Augmenting the statutory language with the above-referenced clarifications
`
`from the legislative history, and from the Guide to that legislative history, yields
`
`the following definition of a CBM patent: a patent that claims a method or corre-
`
`sponding apparatus for performing data processing or other operations used in ac-
`
`tivities that are financial in nature, incidental to a financial activity, or complemen-
`
`tary to a financial activity, including the management of data. See AIA § 18(d)(1),
`
`SAMSUNG-1009; and Legislative history at 635-26, SAMSUNG-1010.
`
`In the words of the Patent Owner, the claims of the ‘772 Patent are directed
`
`to a “portable data carrier for storing and paying for data and to computer systems
`
`for providing access to data to be stored.” See ‘772 Patent at 1:24-28, SAM-
`
`SUNG-1001. Claim 8, for example (the limitations of which are incorporated into
`
`claim 10, which depends from claim 8) recites “[a] data access terminal for con-
`
`trolling access to one or more content data items stored on a data carrier” that in-
`
`cludes a processor to implement “code to present to a user via said user interface
`
`said identified one or more content data items available from the data carrier” and
`
`“code responsive to said user selection of said selected content data item to trans-
`
`mit payment data relating to payment for said selected content item for validation
`
`8
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`by a payment validation system.” Claim 10 adds that the “data access terminal as
`
`claimed in claim 8 . . . is integrated with a mobile communications device and au-
`
`dio/video player.”
`
`Unquestionably, the data access terminal, data carrier, and payment valida-
`
`tion system of claim 8 are used for data processing in the practice, administration,
`
`and management of financial products and services; specifically, for processing
`
`payments for data downloads. Bloom at, e.g., ¶ 23, SAMSUNG-1003. Indeed, in
`
`a recent decision involving highly similar claims, the Board determined that selling
`
`a desired digital audio signal to a user constitutes financial activity. See Apple Inc.
`
`v. Sightsound at 11-13 (“The cited entities may not provide typical financial ser-
`
`vices, but . . . they do sell digital content, which is the financial activity recited in
`
`claim 1”), SAMSUNG-1012.
`
`
`
`The specification of the ‘772 Patent, moreover, is replete with examples of
`
`financial activity, stating that payment data forwarded to a payment validation sys-
`
`tem may be “data relating to an actual payment made to the data supplier, or . . . a
`
`record of a payment made to an e-payment system” that can be “coupled to banks.”
`
`See ‘772 Patent at 6:64-7:1, 13:30-42, SAMSUNG-1001. Even if claim 8 did not
`
`explicitly reference financial activity, and it does (as described above), this de-
`
`scription alone would be sufficient to establish that the terminal of claim 10 (which
`
`depends from claim 8) is a terminal for performing data processing used in the
`
`9
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`practice, administration, or management of a financial product or service and that,
`
`therefore, the ‘772 Patent is a CBM patent. See Apple Inc. v. Sightsound at 5, 6
`
`(determining, based on a specification statement that ‘embodiments of the present
`
`invention have application to a wide range of industries’ including ‘financial ser-
`
`vices,’ despite the apparent lack of financial-related language in the claims), SAM-
`
`SUNG-1012; see also Volusion, Inc. v. Versata Software, Inc. at 9-15 (“Although
`
`claim 8 does not expressly refer to financial activity . . . When applied to the activi-
`
`ties listed [in the patent’s specification] . . . the method of claim 8 represents a fi-
`
`nancial product or service”), SAMSUNG-1013.
`
`Thus, for at least the reasons described above, the ‘772 Patent is a CBM pa-
`
`tent that is eligible for the review requested by Petitioner.
`
`E.
`The ‘772 Patent Is Not Directed to a Technological Inven-
`tion, And Thus, Should Not Be Excluded From the Definition of a
`CBM Patent.
`
`As rightly acknowledged by the PTAB in Institution Decisions of CBM2014-
`
`00110 and 00011, and for reasons detailed in petitions filed in those proceedings,
`
`which are substantively reproduced below, which are consistent with those articu-
`
`lated in petitions filed by Petitioner in CBM2014-00200 and 00204 on September
`
`26, 2014, the ‘772 Patent, which generally relates to systems and methods “for
`
`downloading and paying for data” is a not directed to a “technological invention,”
`
`as defined under § 18 of the AIA and 37 C.F.R. § 42.301. ‘772 Patent at Abstract,
`
`10
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`SAMSUNG-1001. The AIA excludes “patents for technological inventions” from
`
`the definition of CBM patents. AIA § 18(d)(2), SAMSUNG-1009. To determine
`
`when a patent covers a technological invention, “the following will be considered
`
`on a case-by-case basis: whether the claimed subject matter as a whole recites a
`
`technological feature that is novel and unobvious over the prior art; and solves a
`
`technical problem using a technical solution.” 37 C.F.R. § 42.301 (emphasis added);
`
`see also AIA at 48736-37 (USPTO clarified that to qualify as a technological inven-
`
`tion, a patent must have a novel, unobvious technological feature and a technical
`
`problem solved by a technical solution), SAMSUNG-1009. “[A]bstract business
`
`concepts and their implementation, whether in computers or otherwise,” are not in-
`
`cluded in the definition of “technological inventions.” Legislative guide at 634,
`
`SAMSUNG-1010. Indeed, Congress has explained that accomplishing a business
`
`process or method is not technological, whether or not that process or method is
`
`novel. See id. Finally, to institute a CBM, a patent need only have one claim di-
`
`rected to a covered business method, and not a technological invention. See, e.g.,
`
`AIA at 48736-37, SAMSUNG-1009.
`
`The claims of the ‘772 Patent fail to recite novel and unobvious technology,
`
`and fail to recite a technical problem solved by a technical solution. See Bloom at,
`
`e.g., ¶ 23, SAMSUNG-1003. Thus, the patent is subject to Section 18 review. Alt-
`
`hough the independent claims of The ‘772 Patent recite computer-related terms such
`
`11
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`as “non-volatile memory”, “data access terminal”, and “data carrier”, Congress has
`
`explained that simply reciting words describing generic technology such as “com-
`
`puter hardware, . . .software, memory, computer-readable storage medium, [or] da-
`
`tabases” does not make a patent a technological invention. Legislative guide at 634,
`
`SAMSUNG-1010.
`
`The specification of the ‘772 Patent confirms that the computer-related terms
`
`recited in the ‘772 Patent’s claims relate to technology that is merely, in the words
`
`of the Patent Owner, “conventional”: the specification states, for example, that “[t]he
`
`data access terminal may be a conventional computer or, alternatively, it may be a
`
`mobile phone” (emphasis added), that terminal memory “can comprise any conven-
`
`tional storage device” (emphasis added), and that a “data access device . . . such as
`
`a portable audio/video player . . . comprises a conventional dedicated computer sys-
`
`tem including a processor . . . program memory . . . and timing and control logic . .
`
`. coupled by a data and communications bus” (emphasis added). ‘772 Patent at 4:7-
`
`8, 16:52-55, 18:16-20, SAMSUNG-1001. Consequently, the ‘772 patent claim is
`
`not transformed into a technological invention by their recitation of these computer-
`
`related terms.
`
`The ‘772 Patent fails even to recite a technical problem, and instead addresses
`
`the non-technical task of allowing “owners of . . . data to make the data available
`
`themselves over the internet without fear of loss of revenue . . . undermining the
`
`12
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`position of data pirates.” ‘772 Patent at 2:15-19, 5:16-20, SAMSUNG-1001. The
`
`‘772 Patent’s solution to this non-technical problem is nothing more the combination
`
`of prior art structures to achieve a normal, expected, and predictable result: the use
`
`of a data supply system, content provision system, data terminal and data carrier to
`
`restrict access to data based on payment. See, e.g., ‘772 Patent at Abstract, 13:30-
`
`42, SAMSUNG-1001. A teaching of a combination of prior art structures that
`
`achieves a predictable result does not “render a patent a technological invention.”
`
`AIA at 48755, SAMSUNG-1009. Indeed, a POSITA would not have considered the
`
`methods described and claimed by the ‘772 Patent to be technical. See Bloom at,
`
`e.g., ¶¶ 23 and 24, SAMSUNG-1003.
`
`In sum, the AIA’s exclusion of “patents for technological inventions” from
`
`the definition of CBM patents is not applicable here because the ‘772 Patent fails
`
`to recite a novel and unobvious technological feature, and fails to recite a technical
`
`problem solved by a technical solution. CBM review is appropriate.
`
`IV. SUMMARY OF THE ‘772 PATENT
`A. Brief Description
`The ‘772 Patent includes 36 claims, of which claims 1, 8, 14, 25, 30, 35, and
`
`36 are independent. Of these, claims 1, 8, 25 and 30 serve as base claims for Chal-
`
`lenged Claims 5, 10, 26 and 32, respectively. These and other of the ‘772 Patent
`
`claims generally relate to “downloading and paying for data such as audio and
`
`13
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`video data, text, software, [and] games . . . .” ‘772 Patent at Abstract, SAMSUNG-
`
`1001.
`
`The ‘772 Patent leverages only conventional and standard technologies. In-
`
`deed, the ‘772 Patent claims recite, e.g., “a handheld multimedia terminal” for an
`
`end user to select and pay for “content available for retrieving” so that the end user
`
`can “retrieve . . . and write . . . multimedia content into said non-volatile memory.”
`
`See ‘772 Patent at 27:55-28:39, claim 14, SAMSUNG-1001. This can correspond
`
`to the end user purchasing multimedia content and downloading the same from the
`
`Internet. See Bloom at, e.g., ¶¶ 23, 24, SAMSUNG-1003.
`
`In another example, the ‘772 Patent claims recite “a handheld multimedia
`
`terminal” for an end user to select and pay for “multimedia content stored in the
`
`non-volatile memory [of the handheld multimedia terminal]” so that the end user
`
`can “access said . . . multimedia content.” See ‘772 Patent at 26:65-26:43, claim 1,
`
`SAMSUNG-1001. This can correspond to the end user renewing a license regard-
`
`ing multimedia content already available on the handheld multimedia terminal.
`
`See Bloom at, e.g., ¶ 23, 24, SAMSUNG-1003.
`
`As described in detail in Section V, the references listed above demonstrate
`
`a complete lack of patentability in the Challenged Claims. Bloom at, e.g., ¶ 25,
`
`SAMSUNG-1003.
`
`14
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE
`CLAIM OF THE ‘772 PATENT IS UNPATENTABLE
`
`V.
`
`Claims 5, 10, 14, 26, and 32 are challenged. Claim 5 depends from claim 1
`
`and, therefore, incorporates the subject matter of claim 1. Claim 10 depends from
`
`claim 8 and, therefore, incorporates the subject matter of claim 8. Claim 26 de-
`
`pends from claim 25 and, therefore, incorporates the subject matter of claim 25.
`
`Claim 32 depends from claim 30 and, therefore, incorporates the subject matter of
`
`claim 30. As demonstrated below, claims 5, 10, 14, 26, and 32 are directed to inel-
`
`igible subject matter.
`
`A. GROUND 1 – Claims 5, 10, 14, 26, and 32 are Patent Ineli-
`gible Under 35 U.S.C. § 101.
`1. Legal Standard
`Laws of nature, abstract ideas and natural phenomena cannot be patented.
`
`Mayo Collaborative Serv v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1293 (2012), at
`
`1293, SAMSUNG-1029. Allowing patents on such matters would effectively grant
`
`impermissible monopolies over entire concepts. See, e.g., Gottschalk v. Benson,
`
`409 U.S. 63, 71-72 (1972), SAMSUNG-1030. Thus, when claims of a patent recite
`
`abstract ideas, such as those that “can be performed in the human mind, or by a
`
`human using a pen and paper,” and those that preempt an entire concept or field,
`
`they must add “significantly more” to be patent-eligible. CyberSource Corp. v. Re-
`
`tail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011), SAMSUNG-1031; see
`
`15
`
`

`
`Attorney Docket No 39843-0008CP3
`CBM of U.S. Patent No. 8,336,772
`also Mayo, 132 S.Ct. at 1294, SAMSUNG-1029; Bilski v. Kappos, 130 S.Ct. 3218,
`
`3230 (2010), SAMSUNG-1032.
`
`As the Supreme Court recently reiterated, mere recitation of “a particular tech-
`
`nological environment” does not make eligible a claim that is otherwise improper