`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC. AND
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00059
`
`Patent 8,336,772
`
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`
`PATENT OWNER’S LIST OF EXHIBITS ............................................................ iii
`
`I.
`
`OVERVIEW OF U.S. PATENT NO. 8,336,772 ............................................ 1
`
`A.
`
`B.
`
`Background of U.S. Patent No. 8,336,772 ............................................ 1
`
`Claim Construction ............................................................................... 4
`
`
`II.
`
`THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT MATTER . 5
`
`A.
`
`B.
`
`C.
`
`The Two-Part Test for Statutory Subject Matter .................................. 5
`
`The Claims Are Statutory Under the Second Step of Mayo and Alice . 6
`
`The Claims Do Not Result in Inappropriate Preemption .................... 27
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Preemption under DDR Holdings ............................................. 27
`
`Preemption under Mayo and Alice ............................................ 29
`
`Non-Infringing Alternatives Show a Lack of Preemption ........ 31
`
`The Allegedly Preempted Field is Unduly Narrow .................. 40
`
`The Field is the Same in CBMs and Litigation ........................ 41
`
`
`D.
`
`
`
`
`
`Evidence Relied Upon by the Bloom and Blumenfeld Declarations
`Are Not from the Appropriate Timeframe .......................................... 41
`
`- i -
`
`
`
`III.
`
`PETITIONER HAS ALREADY LOST A CHALLENGE TO THE CLAIMS
`ON THE SAME STATUTORY GROUNDS IN ITS LITIGATION WITH
`PATENT OWNER BASED ON EVIDENCE THAT IT HAS NOT
`PROVIDED TO THE PTAB ......................................................................... 43
`
`
`IV. SAMSUNG’S UNTIMELY § 101 CHALLENGE WILL NOT SECURE
`THE JUST, SPEEDY, AND INEXPENSIVE RESOLUTION OF THE
`ISSUES SURROUNDING THE ‘772 PATENT .......................................... 45
`
`
`V.
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`FINANCIAL PRODUCT OR SERVICE ...................................................... 47
`
`
`VI. THE CHALLENGED CLAIMS OF THE ‘772 PATENT ARE
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW .... 53
`
`
`VII. CONCLUSION .............................................................................................. 55
`
`
`
`
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`- ii -
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`
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`PATENT OWNER’S LIST OF EXHIBITS
`
`Exhibit Number
`
`Exhibit Description
`
`2001
`
`2002
`
`Congressional Record - House, June 23, 2011, H4480-4505
`
`Congressional Record - Senate, Sep. 8, 2011, S5402-5443
`
`2003-2048
`
`Reserved
`
`2049
`
`2050
`
`Report and Recommendation (on Defendants’ Motions for
`Summary Judgment of Invalidity Pursuant to 35 U.S.C. 101),
`from Smartflash LLC et al. v. Apple, Inc., et al., Case No.
`6:13-CV-447 (E.D. Tex.) and Smartflash LLC et al. v.
`Samsung Electronics Co. Ltd, et al., Case No. 6:13-CV-448
`(E.D. Tex.), dated Jan. 21, 2015
`
`Order adopting Report and Recommendation (on
`Defendants’ Motions for Summary Judgment of Invalidity
`Pursuant to 35 U.S.C. 101), from Smartflash LLC et al. v.
`Apple, Inc., et al., Case No. 6:13-CV-447 (E.D. Tex.) and
`Smartflash LLC et al. v. Samsung Electronics Co. Ltd, et al.,
`Case No. 6:13-CV-448 (E.D. Tex.), dated Feb. 13, 2015
`
`
`
`
`
`
`
`
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`- iii -
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`
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`Patent Owner sets forth below, in its Preliminary Response, why no Covered
`
`Business Method (CBM) review should be instituted for the patent-at-issue.
`
`Arguments presented herein are presented without prejudice to presenting
`
`additional arguments in a later response should the PTAB institute a CBM review.
`
`
`
`I.
`
`OVERVIEW OF U.S. PATENT NO. 8,336,772
`
`A.
`
`Background of U.S. Patent No. 8,336,772
`
`Although the claims define the actual scope of coverage of the patent, as
`
`described in the first paragraph of the BACKGROUND OF THE INVENTION,
`
`the patent-at-issue, U.S. Patent No. 8,336,772 (hereinafter “the ‘772 patent”)
`
`generally describes “data storage and access systems ... [and] is particularly useful
`
`for managing stored audio and video data, but may also be applied to storage and
`
`access of text and software, including games, as well as other types of data.” Col.
`
`1, lines 23-31.
`
`Preferred embodiments described in the paragraph crossing cols. 15 and 16
`
`illustrate this further: “FIG. 7 ... shows a variety of content access terminals for
`
`accessing data supply computer system 120 over internet 142. The terminals are
`
`provided with an interface to a portable data carrier or ‘smart Flash card’ (SFC) as
`
`generally described with reference to FIG. 2 and as described in more detail below.
`
`In most embodiments of the terminal the SFC interface allows the smart Flash card
`
`
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`- 1 -
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`
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`data carrier to be inserted into and removed from the terminal, but in some
`
`embodiments the data carrier may be integral with the terminal.” Exemplary
`
`terminals include, but are not limited to, set-top boxes 154, CD/DVD Players 170
`
`and mobile communications devices 152. Col. 16, lines 12-26.
`
`Referring to preferred embodiments, the ‘772 patent discloses that a data
`
`supply system may provide users with a seamless purchase and content delivery
`
`experience. Col. 24, lines 5-10. Users are able to purchase content from a variety
`
`of different content providers even if they do not know where the content providers
`
`are located or how the content is delivered. See id. The exemplary system is
`
`operated by a “content data supply ‘system owner,’” who may act as an
`
`intermediary between a user seeking to purchase content and content providers,
`
`such as record labels, movie studios, and software providers. See col. 14, lines 1-8.
`
`When a user accesses the system, he or she is able to select content to purchase or
`
`rent from a variety of different content providers. See col. 5, lines 1-12. If the user
`
`finds a content item to buy, his or her device will transmit stored “payment data” to
`
`a “payment validation system” to validate the payment data. See col. 8, lines 7-11.
`
`The payment validation system returns proof that the payment data has been
`
`validated, in the form of “payment validation data,” and the user is able to retrieve
`
`the purchased content from the content provider. See col. 8, lines 11-14.
`
`
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`- 2 -
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`
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`Col. 24, lines 25-27, discloses that “FIG. 13 ... shows a flow chart for user
`
`access of stored data on a smart Flash card using a data access device such as the
`
`MP3 player of FIG. 1.” Col. 9, lines 26-28, discloses “The data access device uses
`
`the use status data and use rules to determine what access is permitted to data
`
`stored on the data carrier.” Col. 5, lines 4-12, discloses “The carrier may ... store
`
`content use rules pertaining to allowed use of stored data items. These use rules
`
`may be linked to payments made from the card to provide payment options such as
`
`access to buy content data outright; rental access to content data for a time period
`
`or for a specified number of access events; and/or rental/purchase, for example
`
`where rental use is provided together with an option to purchase content data at the
`
`reduced price after rental access has expired.” Further, as described in col. 9, lines
`
`39-41, “use status data [is retrieved] from the data carrier [to] indicat[e] past use of
`
`the stored data.” Thus, as described in col. 5, lines 33-37, “[b]y combining digital
`
`rights management with content data storage using a single carrier, the stored
`
`content data becomes mobile and can be accessed anywhere while retaining control
`
`over the stored data for the data content provider or data copyright owner.”
`
`By using a system that combines on the data carrier both the digital content
`
`and the use rules/use status data, access control to the digital content can be
`
`continuously enforced prior to access to the digital content. By comparison, unlike
`
`a system that uses use rules/use status data as claimed, when a DVD was
`
`
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`- 3 -
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`
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`physically rented for a rental period, the renter could continue to play the DVD,
`
`even if the renter kept the DVD past the rental period because the use rules were
`
`not associated with the DVD. Similarly, there was no way to track a use of the
`
`DVD such that a system could limit its playback to specific number of times (e.g.,
`
`three times) or determine that the DVD had only been partially used.
`
`
`
`B.
`
`Claim Construction
`
`Petitioner has alleged that “‘payment data’ should be construed to include
`
`and be met by data that relates to previous, present and/or prospective payment.”
`
`Petition at 4. However, “payment data” in the context of the claims of the ‘772
`
`patent should be interpreted to mean “data that can be used to make payment for
`
`content” when using a broadest reasonable interpretation.1
`
`The ‘772 patent, col. 21, lines 1-4, states “payment data for making a
`
`payment … is received from the smart Flash card by the content access terminal
`
`1 Patent Owner’s use of the “broadest reasonable interpretation” (BRI)
`
`standard herein is not an admission that the BRI standard is the proper standard for
`
`CBM proceedings such as this one. However, for the purposes of this proceeding
`
`based on the issues in the instituted proceeding, Patent Owner has presented its
`
`arguments utilizing the BRI standard for “payment data.” Patent Owner reserves
`
`its right to argue for a different standard at a later date or in a different proceeding.
`
`
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`- 4 -
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`
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`and forwarded to an e-payment system.” That is, the payment data is used for
`
`making a payment. Furthermore, as can be seen in Figure 12c of the ‘772 patent,
`
`step S54 reads “PAYMENT FOR SCHEME OWNER RECEIVED FROM CARD
`
`BY CONTENT ACCESS TERMINAL AND FORWARDED TO e-PAYMENT
`
`SYSTEM.” Step S55 then reads “PAYMENT RECORD DATA RECEIVED
`
`FROM e-PAYMENT SYSTEM BY CONTENT ACCESS TERMINAL AND
`
`FORWARDED TO CARD.” Both of those steps precede step S56 which recites
`
`“PAYMENT RECORD DATA, PURCHASE REQUEST AND CARD
`
`REGISTRATION DATA TRANSMITTED TO SCHEME OWNER.” Thus, as
`
`payment has not yet been made when the payment data of step S54 is sent,
`
`“payment data” should be interpreted to mean “data that can be used to make
`
`payment for content.”
`
`
`
`II.
`
`THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT MATTER
`
`A.
`
`The Two-Part Test for Statutory Subject Matter
`
`As described on page 18 of the Petition, the Supreme Court articulated a
`
`two-part test for patentability in Mayo Collaborative Services v. Prometheus
`
`Laboratories, Inc., 132 S. Ct. 1289 (2012), which has been followed by Alice
`
`Corp. Pty. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014). The first step in the analysis
`
`is to determine whether the claims at issue are directed to patent-ineligible
`
`
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`- 5 -
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`
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`concepts. Petition at 18. If the claims at issue are directed to a patent-ineligible
`
`concept, the second step of the analysis is to determine whether the limitations of
`
`the claims, individually and as ordered combinations, contain an inventive concept
`
`that transforms the nature of the claims into patent-eligible subject matter. Id. at
`
`19.
`
`B.
`
`The Claims Are Statutory Under the Second Step of Mayo and Alice
`
`
`
`Post Mayo and Alice, the Federal Circuit has provided guidance on how to
`
`distinguish statutory claims, like those of the ‘772 Patent, from non-statutory
`
`claims. In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
`
`2014), the Federal Circuit analyzed claims, such as the ones at issue here, that have
`
`technological solutions to technological problems created by the nature of digital
`
`content and the Internet. The system of exemplary claim 19 included (a) a
`
`computer store containing the data needed to support operation of the system and
`
`(b) a computer server (or processor) that was coupled to the computer store, where
`
`the claimed system was programmed to (by having code configured to) perform
`
`the solution to a network-specific problem. The computer server was
`
`“programmed to” perform four steps. The first two steps are “(i) receive from the
`
`web browser of a computer user a signal indicating activation of one of the links
`
`displayed by one of the first web pages; [and] (ii) automatically identify as the
`
`source page the one of the first web pages on which the link has been activated.”
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`- 6 -
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`The third and fourth steps were “(iii) in response to identification of the source
`
`page, automatically retrieve the stored data corresponding to the source page; and
`
`(iv) using the data retrieved, automatically generate and transmit to the web
`
`browser a second web page that displays: (A) information associated with the
`
`commerce object associated with the link that has been activated, and (B) the
`
`plurality of visually perceptible elements visually corresponding to the source
`
`page.” The Court found the claims to be statutory because “the claimed solution is
`
`necessarily rooted in computer technology in order to overcome a problem
`
`specifically arising in the realm of computer networks.” Id. at 1257.
`
`Such is the case here too. Here, the claims are directed to particular devices
`
`that can download and store digital content into a data carrier, and such devices
`
`utilize use rules and/or use status data stored in the data carrier to control access to
`
`the downloaded and stored digital content stored in the data carrier. By using a
`
`system that combines on the data carrier both the digital content and the use
`
`rules/use status data, access control to the digital content can be continuously
`
`enforced prior to access to the digital content. By comparison, unlike a system that
`
`uses use rules/use status data as claimed, when a DVD was physically rented for a
`
`rental period, the renter could continue to play the DVD, even if the renter kept the
`
`DVD past the rental period because the use rules were not associated with the
`
`DVD. Similarly, there was no way to track a use of the DVD such that a system
`
`
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`- 7 -
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`
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`could limit its playback to specific number of times (e.g., three times) or determine
`
`that the DVD had only been partially used.
`
`Furthermore, claims (e.g., claim 26) of the ‘772 patent use link-like access to
`
`cause digital content to be retrieved where the system uses “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.” Thus, the
`
`claims are rooted in computer technology in order to overcome a problem
`
`specifically arising in the realm of computer networks – that of digital data piracy,
`
`and, like in DDR Holdings, “address … a challenge particular to the Internet.” Id.
`
`at 1257. The Report and Recommendation too acknowledged this distinction,
`
`finding:
`
`As in DDR Holdings, the patents here do not simply apply a known
`
`business practice from the pre-Internet world to computers or the
`
`Internet. “The claimed solution is necessarily rooted in computer
`
`technology in order to overcome a problem specifically arising in the
`
`realm of computer networks.” ... Digital Rights Management is a
`
`technology that was developed after widespread use of the Internet.
`
`Entry into the Internet Era presented new and unique problems for
`
`digital content providers in combatting unauthorized use and
`
`reproduction of protected media content.
`
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`- 8 -
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`Report and Recommendation at 19, lines 7-12 (quoting DDR Holdings, 773 F.3d at
`
`1257) (internal citation omitted).
`
`
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`
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`1.
`
`Claim 26
`
`As discussed above, claim 26, which depends on claim 25, recites a
`
`handheld multimedia terminal (a system) that parallels the structure of the statutory
`
`claim 19 in DDR Holdings as set forth in the chart below.
`
`
`
`Claim element from DDR Holding
`
`Similar claim element from claims
`
`25/26
`
`19. A system useful in an outsource
`
`25. A handheld multimedia terminal for
`
`provider serving web pages offering
`
`retrieving and accessing protected
`
`commercial opportunities, the system
`
`multimedia content, comprising:
`
`comprising:
`
`(a) a computer store containing data, for
`
`non-volatile memory configured to store
`
`each of a plurality of first web pages,
`
`multimedia content, wherein said
`
`defining a plurality of visually
`
`multimedia content comprises one or
`
`perceptible elements, which visually
`
`more of music data, video data and
`
`perceptible elements correspond to the
`
`computer game data;
`
`plurality of first web pages; (i) wherein
`
`a program store storing processor
`
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`- 9 -
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`
`
`Claim element from DDR Holding
`
`Similar claim element from claims
`
`25/26
`
`each of the first web pages belongs to
`
`control code;
`
`one of a plurality of web page owners;
`
`code to request identifier data
`
`(ii) wherein each of the first web pages
`
`identifying one or more items of
`
`displays at least one active link
`
`multimedia content available for
`
`associated with a commerce object
`
`retrieving via said wireless interface;
`
`associated with a buying opportunity of
`
`code to receive said identifier data via
`
`a selected one of a plurality of
`
`said wireless interface, said identifier
`
`merchants; and (iii) …
`
`data identifying said one or more items
`
`of multimedia content available for
`
`retrieving via said wireless interface;
`
`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;
`
`(b) a computer server at the outsource
`
`a processor coupled to said non-volatile
`
`
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`- 10 -
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`
`
`Claim element from DDR Holding
`
`Similar claim element from claims
`
`25/26
`
`provider, which computer server is
`
`memory, said program store, said
`
`coupled to the computer store and
`
`wireless interface and a user interface to
`
`programmed to:
`
`allow a user to select and play said
`
`multimedia content;
`
`(i) receive from the web browser of a
`
`wherein said user interface is operable
`
`computer user a signal indicating
`
`to enable a user to make said first user
`
`activation of one of the links displayed
`
`selection of said selected at least one
`
`by one of the first web pages;
`
`item of multimedia content available for
`
`retrieving,
`
`said user interface is operable to enable
`
`a user to make said second user
`
`selection of said one or more items of
`
`retrieved multimedia content available
`
`for accessing;
`
`(ii) automatically identify as the source
`
`code to receive a first user selection
`
`page the one of the first web pages on
`
`selecting at least one of said one or more
`
`which the link has been activated;
`
`items of multimedia content available
`
`for retrieving;
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`- 11 -
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`
`
`
`Claim element from DDR Holding
`
`Similar claim element from claims
`
`25/26
`
`code to receive a second user selection
`
`selecting one or more of said items of
`
`retrieved multimedia content to access;
`
`(iii) in response to identification of the
`
`code responsive to said payment
`
`source page, automatically retrieve the
`
`validation data to retrieve said selected
`
`stored data corresponding to the source
`
`at least one item of multimedia content
`
`page; and
`
`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,
`
`(iv) using the data retrieved,
`
`code to read use status data and use
`
`automatically generate and transmit to
`
`rules from said non-volatile memory
`
`the web browser a second web page that
`
`pertaining to said second selected one or
`
`displays: (A) information associated
`
`more items of retrieved multimedia
`
`with the commerce object associated
`
`content; and code to evaluate said use
`
`with the link that has been activated, and
`
`status data and use rules to determine
`
`(B) the plurality of visually perceptible
`
`whether access is permitted to said
`
`elements visually corresponding to the
`
`second selected one or more items of
`
`
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`- 12 -
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`
`
`Claim element from DDR Holding
`
`Similar claim element from claims
`
`source page.
`
`retrieved multimedia content;
`
`25/26
`
`
`
`(claim 26) code to present said second
`
`selected one or more items of retrieved
`
`multimedia content to a user via said
`
`display if access is permitted;
`
`
`
`In addition to the similar elements from claim 19 of DDR Holdings, claim 26
`
`further recites additional structure not explicitly found in DDR Holdings. By
`
`comparison, claim 26 also comprises a wireless interface configured to interface
`
`with a wireless network and a display for displaying one or both of said played
`
`multimedia content and data relating to said played multimedia content. Thus, like
`
`in DDR Holdings, when “the limitations of the … claims are taken as [a]
`
`combination, the claims recite[] an invention that is not merely the routine or
`
`conventional use of the Internet.” DDR Holdings, 773 F.3d at 1259. Such a
`
`finding was further echoed by the Report and Recommendation when it held the
`
`“asserted claims … recite specific ways of using distinct memories, data types, and
`
`use rules that amount to significantly more than the underlying abstract idea.
`
`
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`- 13 -
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`
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`Although in some claims the language is functional and somewhat generic, the
`
`claims contain significant limitations on the scope of the inventions.” Report and
`
`Recommendation at 19, lines 1-4.
`
`
`
`While it is the combination of elements that ultimately defines patentability,
`
`exemplary limitations show that the Petition has failed to show that claim 26 is
`
`non-statutory. For example, claim 26 expressly recites “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 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.” The use status data and use
`
`rules are both read from a non-volatile memory that also stores multimedia content,
`
`and the Petition has not shown that such limitations were known. At best, page 49
`
`of the Petition is alleging that use status data was stored in a log book of some sort
`
`but that “rules indicating permissible use of songs [was] stored on records and/or
`
`other media.” This does not disclose that use status data and use rules are both
`
`read from a non-volatile memory that also stores multimedia content. Page 49 of
`
`the Petition also does not show that the alleged use rule (e.g., “a prohibition on
`
`playing the same song consecutively”) was read from any non-volatile memory, let
`
`alone the non-volatile memory that also stores multimedia content and use status
`
`data.
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`- 14 -
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`Furthermore, the Petition does not even show that the alleged use rule was
`
`known prior to the effective filing date of the patent. Page 49 of the Petition
`
`references this limitation, but as described above, the alleged use rule (e.g., “a
`
`prohibition on playing the same song consecutively”) was allegedly from
`
`requirements not formalized until 2003. Thus, such a requirement has not been
`
`shown to be from prior to the effective filing date of the patent.
`
`
`
`The second paragraph of page 48 of the Petition includes an
`
`incomprehensible allegation that “receiving and evaluating use status data and use
`
`rules to determine whether permission exists to access an item is performed, e.g.,
`
`in the context of leasing a selected item from in a retail environment or with
`
`respect to intellectual property such as copyrightable works.” What that allegation
`
`is supposed to mean is totally unclear. In support of such an assertion, the Petition
`
`cites paragraph 44 of the Bloom declaration (Exhibit 1003), but neither that
`
`paragraph nor any other part of the Bloom declaration discusses leases and how
`
`they relate to use status data and use rules. Also in support of such an assertion,
`
`the Petition cites paragraphs 36-41 of the Bloom declaration and alleges that those
`
`paragraphs relate to “applicable ASCAP and BMI restrictions required to operate a
`
`radio station.” However, paragraphs 36-41 do not, in fact, describe that “receiving
`
`and evaluating use status data and use rules” were known prior to the effective
`
`filing date of the ‘772 patent. If this allegation is referencing licensing models
`
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`- 15 -
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`such as those used by ASCAP and BMI, then such models are irrelevant to the
`
`claim’s recited elements of reading and evaluating use rules and use status data.
`
`The ASCAP and BMI license models do not control access to content in the user’s
`
`possession. For example, a hotel owner can physically play music in the hotel
`
`lobby regardless of whether she pays for an ASCAP or BMI license. ASCAP and
`
`BMI might dispute her rights to do so, but the lack of a license will not prevent or
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`control physical access to the music in the hotel owner’s possession.
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`
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`The Petition also has not shown that the limitation in claim 26 of “code
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`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
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`write said retrieved at least one item of multimedia content into said non-volatile
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`memory” was known prior to the effective filing date of the ‘772 patent. Page 45
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`of the Petition alleges that “Retrieving a selected item in response to payment
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`validation is performed, e.g., when a retail customer simply purchases an item. …
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`A retail clerk may, e.g., in response to payment validation, retrieve a large
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`purchased item such as an appliance for a retail customer.” However, by relying
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`on “a large purchased item such as an appliance,” it can be seen that the Petition is
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`ignoring even the context of the problem -- that a technological solution is
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`necessary to address the technological problem created by the nature of digital
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`content and the Internet. Moreover, such allegations do not show that “responsive
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`- 16 -
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`
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`to said payment validation data … said selected at least one item of multimedia
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`content [is retrieved] via said wireless interface from a data supplier” and written
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`into the non-volatile memory. How is an appliance retrieved via a wireless
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`network from a data supplier or written to a non-volatile memory? It is not.
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`Likewise, the Petition does not show that such retrieving via the wireless interface
`
`can be performed by humans using pencil and paper. Accordingly, claim 26 is
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`directed to statutory subject matter under the two-part test of Mayo and Alice.
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`
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`2.
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`Claim 5
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`Page 56 of the Petition alleges that “claim 1, from which claim 5 depends, is
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`highly similar to claim 26.” However, claims 1 and 5 include a combination of
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`elements, like in claim 26 and in DDR Holdings, such that claim 5 is directed to
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`statutory subject matter. For example, claim 1 recites “non-volatile memory
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`configured to store multimedia content,” and “program store storing processor
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`control code” similar to the “computer store” of claim 19 in DDR Holdings.
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`Similarly, claim 1 recites “a processor coupled to said non-volatile memory, said
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`program store, said wireless interface and a user interface to allow a user to select
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`and play said multimedia content” similar to the “computer server” of claim 19 in
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`DDR Holdings. As discussed above with respect to claim 26, the “code to”
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`- 17 -
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`
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`limitations of the claims of these proceedings are substantially similar to the
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`statutory limitations of claim 19 from DDR Holdings, as shown in the chart below.
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`Claim element from DDR Holding
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`Similar claim element from claims 1/5
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`(i) receive from the web browser of a
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`code to present to a user on said display
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`computer user a signal indicating
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`said identified one or more items of
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`activation of one of the links displayed
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`multimedia content available from the
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`by one of the first web pages;
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`non-volatile memory;
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`code to receive a user selection to select
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`at least one of said one or more of said
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`stored items of multimedia content;
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`(ii) automatically identify as the source
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`code to receive a user selection to select
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`page the one of the first web pages on
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`at least one of said one or more of said
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`which the link has been activated;
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`stored items of multimedia content;
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`(iii) in response to identification of the
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`code to control access to said at least
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`source page, automatically retrieve the
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`one selected item of multimedia content
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`stored data corresponding to the source
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`on said terminal responsive to said
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`page; and
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`payment validation data;
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`(iv) using the data retrieved,
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`wherein said user interface is operable
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`automatically generate and transmit to
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`to enable a user to access said at least
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`the web browser a second web page that
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`one selected item of multimedia content
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`- 18 -
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`
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`Claim element from DDR Holding
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`Similar claim element from claims 1/5
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`displays: (A) information associated
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`responsive to said code to control access
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`with the commerce object associated
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`permitting access to said at least one
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`with the link that has been activated, and
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`selected item of multimedia content.
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`(B) the plurality of visually perceptible
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`elements visually corresponding to the
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`source page.
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`
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`While it is the combination of elements that ultimately defines patentability,
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`exemplary limitations show that the Petition has failed to show that claim 5 is non-
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`statutory. Claim 1 recites “code to receive payment validation data via said
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`wireless interface defining if said payment validation system has validated
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`payment for said at least one selected item of multimedia content” and “code to
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`control access to said at least one selected item of multimedia content on said
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`terminal responsive to said payment validation data.” As discussed above,
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`utilizing the licensing models such as those used by ASCAP and BMI does not
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`control access to the multimedia content stored in the non-volatile memory. For
`
`example, a hotel owner can physically play music in the hotel lobby regardless of
`
`whether she pays for an ASCAP or BMI license. ASCAP and BMI might dispute
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`- 19 -
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`
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`her rights to do so, but the lack of a license will not prevent or control physical
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`access to the music in the hotel owner’s possession.
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`Since the Petition has not shown that “code to control access to said at least
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`one selected item of multimedia content on said terminal responsive to said
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`payment validation data” was known, the Petition also has not shown that a “user
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`interface ... operable to enable a user to access said at least one selected item of
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`multimedia content responsive to said code to control access permitting access to
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`said at least one selected item of multimedia content” was known.
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`Furthermore, as discussed above with respect to claim 26, the Petition has
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`not shown that the “code to receive payment validation” and “code to control
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`access” limitations were known prior to the effective filing date of the ‘772 patent.
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`Therefore, the Petition is deficient for that reason as well.
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`Thus, like in DDR Holdings, when “the limitations of the … claims are
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`taken as [a] … combination, the claims recite[] an invention that is not merely the
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`routine or conventional use of the Internet.” DDR Holdings, 773 F.3d at 1259.
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`Such a finding was further echoed by the Report and Recommendation when it
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`held the “asserted claims … recite specific ways of using distinct memories, data
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`types, and use rules that amount to significantly more than the underlying abstract
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`idea. Although in some claims the language is functional and somewhat generic,
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`the claims contain significant limitations on the scope of the inventions.” Report
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`- 20 -
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`and Recommendation at 19, lines 1-4. Thus, claim 5 is statutory under at least the
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`second step of the Mayo and Alice framework.
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`3.
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`Claim 10
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`Claim 10 depends from claim 8 and includes a combination of elements, like
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`in claim 26 and in DDR Holdings, such that claim 10 is directed to statutory
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`subject matter. For example, claim 8 recites “a data carrier” and “program store
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`storing code implementable by a processor” similar to the “computer store” of
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`claim 19 in DDR Holdings. Similarly, claim 8 recites a “processor coupled to the
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`user interfac
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