IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No.: 104677-5008-826
`
`
`
`Hulst et al.
`In re Patent of:
`U.S. Patent No.: 8,033,458
`Issue Date:
`October 11, 2011
`Appl. Serial No.: 12/943,847
`Filing Date:
`November 10, 2010
`Title:
`
`DATA STORAGE AND ACCESS SYSTEMS
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`
`UNITED STATES PATENT NO. 8,033,458 PURSUANT TO 35 U.S.C. § 321
`
`AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
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`
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`

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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458
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`TABLE OF CONTENTS
`
`I. 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
`II. PAYMENT OF FEES ........................................................................................ 2
`III. REQUIREMENTS FOR CBM UNDER 37 C.F.R. § 42.304 ............................ 2
`A. Grounds for Standing Under 37 C.F.R. § 42.304(a) .................................. 2
`B. Challenge Under 37 C.F.R. § 42.304(b) and Relief ................................... 2
`C. Claim Constructions under 37 C.F.R. §§ 42.104(b)(3) .............................. 4
`D. The ‘458 Patent is a Covered Business Method Patent .............................. 6
`E. The ‘458 Patent Is Not Directed to a Technological Invention, And
`Thus, Should Not Be Excluded From the Definition of a CBM Patent. .... 8
`IV. SUMMARY OF THE ‘458 Patent ................................................................... 11
`A. Brief Description ...................................................................................... 11
`B. Summary of the Prosecution History of the ‘458 Patent .......................... 13
`C. OMITTED ................................................................................................ 14
`V. DEMONSTRATION OF A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE CLAIM OF THE ‘458 PATENT IS UNPATENTABLE ....... 14
`A. GROUND 1 - Claim 11 is Patent-Ineligible under 35 U.S.C. § 101 For
`Abstractness .............................................................................................. 14
`1. Legal Standard ..................................................................................... 14
`2. Claim 11 of the ‘458 Patent Recites an Abstract Idea, as it Can be
`Performed in the Human Mind and by a Human Using a Pen and
`Paper .................................................................................................... 17
`(i)
`a user interface, a data carrier interface, a program store, and
`a processor ................................................................................. 18
`code to retrieve use status data indicating a use status of data
`stored on the carrier, and use rules data indicating
`permissible use of data stored on the carrier ............................. 19
`(iii) use rules permit partial use of a data item stored on the
`carrier and further comprising code to write partial use status
`
`(ii)
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`Attorney Docket No 104677-5008-826
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`data to the data carrier when only part of a stored data item
`has been accessed ...................................................................... 21
`(iv) code to evaluate the use status data using the use rules data .... 22
`(v)
`code to access the stored data when access is permitted .......... 24
`3. Claim 11 of the ‘458 Patent Preempts All Effective Uses of the
`Abstract Idea of Regulating Authorized Use of Information .............. 25
`4. Claim 11 of the ‘458 Patent is Not Tied to a Particular Machine in
`any Manner that Would Make Claim 11 Patent-Eligible .................... 27
`5. Claim 11 of the ‘458 Patent Does Not Transform Anything in any
`Manner that Would Make it Patent-Eligible ....................................... 29
`B. OMITTED ................................................................................................ 31
`VI. CONCLUSION ................................................................................................ 31
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458
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`EXHIBITS
`
`Exhibit-1001
`
`Exhibit-1002
`
`U.S. Patent No. 8,033,458 to Hulst et al. (“the ‘458 Patent” or
`“‘458”)
`
`Excerpts from the Prosecution History of the ‘458 Patent (“the
`Prosecution History”)
`
`Exhibit-1003
`
`Declaration of Dr. Jeffrey Bloom re the ‘458 Patent (“Bloom”)
`
`Exhibit-1004
`
`U.S. Patent No. 5,530,235 (“Stefik ‘235” or “Stefik”)
`
`Exhibit-1005
`
`U.S. Patent No. 5,629,980 (“Stefik ‘980”) (incorporated by
`5,530,235)
`
`Exhibit-1006
`
`PCT Publication No. WO 00/08909 (“Gruse”)
`
`Exhibit-1007
`
`Exhibit-1008
`
`Exhibit-1009
`
`Exhibit-1010
`
`Exhibit-1011
`
`Exhibit-1012
`
`Exhibit-1013
`
`PCT Application PCT/GB00/04110 (“the ‘110 Appln.” or
`“‘110”)
`
`United Kingdom Patent Application GB9925227.2 (“the ‘227.2
`Appln.” or “227.2”)
`
`Transitional Program for Covered Business Method Patents-
`Definitions of Covered Business Method Patent and
`Technological Invention, 77 Fed. Reg. 157 (Aug. 14, 2012)
`
`A Guide to the Legislative History of the America Invents Act;
`Part II of II, 21 Fed. Cir. Bar J. No. 4
`
`Interim Guidance for Determining Subject Matter Eligibility for
`Process Claims in View of Bilski v. Kappos (Jul. 27, 2010)
`
`Apple Inc. v. Sightsound Technologies, LLC, CBM2013-00019
`Paper No. 17 (entered Oct. 8, 2013) at 11-13
`
`Volusion, Inc. v. Versata Software, Inc. and Versata
`Development Group, Inc., CBM2013-00017 Paper No. 8
`(entered Oct. 24, 2013)
`
`Exhibit-1014
`
`Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024
`Paper No. 16 (entered Nov. 19, 2013)
`
`
`
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458
`
`Exhibit-1015
`
`U.S. Patent No. 8,336,772 (“the ‘772 Patent” or “‘772”)
`
`Exhibit-1016
`
`U.S. Patent No. 8,118,221 (“the ‘221 Patent” or “‘221”)
`
`Exhibit-1017
`
`U.S. Patent No. 8,061,598 (“the ‘598 Patent” or “‘598”)
`
`Exhibit-1018
`
`RESERVED
`
`Exhibit-1019
`
`U.S. Patent No. 7,942,317 (“the ‘317 Patent” or “‘317”)
`
`Exhibit-1020
`
`U.S. Patent Application No. 12/014,558 (“the ‘558 Appln.” or
`“‘558”)
`
`Exhibit-1021
`
`U.S. Patent No. 7,334,720 (“the ‘720 Patent” or ‘720”)
`
`Exhibit-1022
`
`RESERVED
`
`Exhibit-1023
`
`RESERVED
`
`Exhibit-1024
`
`U.S. Patent Application No. 12/943,847 (“the ‘847 Appln.” or
`“‘847”)
`
`Exhibit-1025
`
`RESERVED
`
`Exhibit-1026
`
`RESERVED
`
`Exhibit-1027
`
`RESERVED
`
`Exhibit-1028
`
`Exhibit-1029
`
`Weinstein “MasterCard Plans Point-of-Sale Product for
`Merchants Leery of Bank Cards”
`
`Mayo Collaborative Serv v. Prometheus Labs., Inc., 132 S. Ct.
`1289 (2012)
`
`Exhibit-1030
`
`Gottschalk v. Benson, 409 U.S. 63 (1972)
`
`Exhibit-1031
`
`Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366
`(Fed. Cir. 2011)
`
`Exhibit-1032
`
`Bilski v. Kappos, 130 S. Ct. 3218 (2010)
`
`Exhibit-1033
`
`Alice Corp. v. CLS Bank Internationa1,134 S.Ct. 2347 (2014)
`
`
`
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`-iv-
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458
`
`Exhibit-1034
`
`Bancorp Serv., L.L.C. v. Sun Life Assur. Co. (U.S.) 687 F.3d
`1266 (Fed. Cir. 2012)
`
`Exhibit-1035
`
`Dealertrack, Inc. v. Huber, 674 F.3d 1323 (Fed. Cir. 2012)
`
`Exhibit-1036
`
`SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed.
`Cir. 2010)
`
`Exhibit-1037
`
`In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008)
`
`Exhibit-1038
`
`Exhibit-1039
`
`Accenture Global Services, GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013)
`
`Keith, Michael C., The Radio Station Broadcast, Satellite and
`Internet, Eighth Edition, 2009
`
`
`
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458
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`Apple Inc. (“Petitioner” or “Apple”) petitions for Covered Business Method
`
`Patent Review (“CBM”) under 35 U.S.C. §§ 321 and § 18 of the Leahy-Smith
`
`American Invents Act of claim 11 (“the Challenged Claim”) of U.S. Patent No.
`
`8,033,458 (“the ‘458 Patent”). As explained in this petition, there exists a
`
`reasonable likelihood that Apple will prevail in demonstrating unpatentability with
`
`respect to at least one of the Challenged Claim based on teachings set forth in at
`
`least the references presented in this petition. Apple respectfully submits that a
`
`CBM should be instituted, and that the Challenged Claim 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)
`Apple Inc. is filing this Petition and is the real party-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Apple is not aware of any disclaimers or reexamination certificates for the
`
`‘458 Patent. The ‘458 Patent is the subject of a number of civil actions including:
`
`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, Smartflash LLC et al
`
`v. Google, Inc. et al., Case No. 6:14-cv-00435, Smartflash LLC et al. v.
`
`Amazon.Com, Inc., et al., No. 6:14-cv-992, and Smartflash LLC et al. v. Apple,
`
`Inc., Case No. 6:15-cv-00145. It is also the subject of the following Petitions for
`
`
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458
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`Covered Business Method Review: Apple Inc. v. Smartflash LLC, CBM2014-
`
`00106, CBM2014-00107, CBM2014-00192, CBM2014-00197, and CBM2015-
`
`00016.
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Apple designates J. Steven Baughman, Reg. No. 47,414, as Lead Counsel
`
`and Ching-Lee Fukuda, Reg. No. 44,334, and Megan Raymond, Reg. No. 72,997,
`
`as Backup Counsel, all available for service at Ropes & Gray LLP, IPRM – Floor
`
`43, Prudential Tower, 800 Boylston Street, Boston, MA 02199-3600 or by
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`electronic service by email at ApplePTABService-SmartFlash@ropesgray.com.
`
`PAYMENT OF FEES
`
`II.
`Apple authorizes charges to Deposit Account No. 061075 for the fee set in
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`37 C.F.R. § 42.15(b) for this Petition and any related additional fees.
`
`III. REQUIREMENTS FOR CBM UNDER 37 C.F.R. § 42.304
`A. Grounds for Standing Under 37 C.F.R. § 42.304(a)
`Apple certifies that the ‘458 Patent is available for CBM. Apple is not
`
`barred or estopped from requesting this review of the Challenged Claim on the
`
`following grounds.
`
`B. Challenge Under 37 C.F.R. § 42.304(b) and Relief
`Apple requests a CBM review of the Challenged Claim on the grounds set
`
`forth in the table shown below, and requests that each of the Challenged Claim be
`
`found unpatentable. An explanation of how these claims are unpatentable under
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`-2-
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`

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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458
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`the statutory grounds identified below is provided in the form of detailed
`
`description that follows. Additional explanation and support for the ground of
`
`rejection is set forth in Exhibit-1003, the Declaration of Dr. Jeffrey Bloom
`
`(“Bloom”), originally filed by Samsung in CBM2014-00192 and re-filed and relied
`
`upon here by Apple only as it relates to the ground of rejection under 35 U.S.C. §
`
`101 set forth in this Petition.
`
`Ground
`
`‘458 Patent Claims
`
`Basis for Rejection
`
`Ground 1
`
`11
`
`§ 101
`
`
`
`The ‘458 Patent issued Oct. 11, 2011 from the ‘847 Appln. (Exhibit-1024),
`
`which was filed Nov. 10, 2010. The ‘847 Appln. is a continuation of the ‘558
`
`Appln. (Exhibit-1020) filed Jan. 15, 2008 (now the ‘317 Patent, Exhibit-1019);
`
`which is a continuation of U.S. Patent Application No. 11/336,758 (“the ‘758
`
`Appln.”) filed Jan. 19, 2006 (now U.S. Patent No. 7,334,720, Exhibit-1021), which
`
`is a continuation of U.S. Patent Appln. No. 10/111,716 (“the ‘716 Appln.”) filed
`
`Apr. 25, 2002. The ‘716 Appln. is a National Stage Entry of PCT Appln. No.
`
`PCT/GB00/04110 (Exhibit-1007, “the ‘110 Appln.”) filed Oct. 25, 2000. The ‘110
`
`Appln. claimed priority to United Kingdom Patent Appln. GB9925227.2 (Exhibit-
`
`1008, “the ‘227.2 Appln.” or “227.2”) filed Oct. 25, 1999.
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458
`C. Claim Constructions under 37 C.F.R. §§ 42.104(b)(3)
`In the institution decision in CBM2014-00192, the PTAB construed only the
`
`term “use rules,” and decided that the other terms should be interpreted according
`
`to their ordinary and customary meaning:
`
`In a covered business method patent review, claim terms are given
`their broadest reasonable interpretation in light of the specification in which
`they appear and the understanding of others skilled in the relevant art. See
`37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 2015 WL
`448667 at *7 (Fed. Cir. Feb. 4, 2015) (“We conclude that Congress
`implicitly adopted the broadest reasonable interpretation standard in
`enacting the AIA.”). Applying that standard, we interpret the claim terms of
`the ’458 patent according to their ordinary and customary meaning in the
`context of the patent’s written description. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes of this decision, we
`construe the claim term “use rules.”
`The term “use rules” is recited in claim 11.7 Neither party proposes a
`construction of “use rules.” The ’458 patent describes “use rules” as “for
`controlling access to the stored content” (Ex. 1001, Abstract) and as
`“indicating permissible use of data stored on the carrier” (id. at 9:14–16).
`The ’458 patent also describes “evaluating the use status data using the use
`rules to determine whether access to the stored data is permitted.” Id. at
`6:38–40; see also id. at 21:48–53 (“[E]ach content data item has an
`associated use rule to specify under what conditions a user of the smart Flash
`card is allowed access to the content data item.”). Accordingly, for purposes
`of this decision, we construe “use rules” as rules specifying a condition
`
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`under which access to content is permitted.
`
` 7
`
` We note that claim 11’s recited “said use rules” lacks antecedent basis,
`because independent claim 6, from which claim 11 depends, does not recite
`“use rules,” but rather recites “use rules data.” Ex. 1001, 27:18, 27:20-21.
`Neither party has yet addressed any resulting issues under 35 U.S.C. § 112.
`The lack of explicit antecedent basis for claim terms does not always render
`a claim indefinite, if the scope of the claim may be reasonably ascertainable
`by those skilled in the art. Energizer Holdings, Inc. v Int’l Trade Comm’n,
`435 F.3d 1366, 1370 (Fed. Cir. 2006). For purposes of this Decision, we
`construe “use rules,” and expect further explication of this issue by the
`parties during trial.
`
`See 4/2/2015 Decision in CBM2014-00192 (Pap. 7) at 6-7 and n.7.
`
`Petitioner submits that, under these circumstances and the broadest reasonable
`
`interpretation standard applicable in this review, it would be appropriate for the
`
`Patent Trial and Appeal Board (“PTAB”) to adopt these constructions in this
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`Covered Business Method review.1
`
`
`1 Because the standards of claim interpretation applied in litigation differ from
`
`PTO proceedings, any interpretation of claim terms in this CBM review 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).
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458
`D. The ‘458 Patent is a Covered Business Method Patent
`The ‘458 Patent, which generally relates to systems and methods “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. ‘458 at
`
`Abstract.
`
`The AIA defines a CBM patent as “a patent that claims a method or
`
`corresponding apparatus for performing data processing or other operations used in
`
`the practice, administration, or management of a financial product or service”
`
`(emphases added). AIA § 18(d)(1); see also 37 C.F.R. § 42.301. The USPTO
`
`recognizes that 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 financial activity.’” Exhibit-1009 at 48735 (quoting 157
`
`Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)).
`
`Moreover, as the Guide to the Legislative History of the America Invents Act
`
`indicates, the language “practice, administration, or management” is “intended to
`
`cover any ancillary activities related to a financial product or service, including . . .
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`marketing, customer interfaces [and] management of data . . .” (emphases added).
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`Exhibit-1010 at 635-36.
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`Attorney Docket No 104677-5008-826
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`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
`
`corresponding apparatus for performing data processing or other operations used in
`
`activities that are financial in nature, incidental to a financial activity, or
`
`complementary to a financial activity, including the management of data. See AIA
`
`§ 18(d)(1); Exhibit-1009 at 48735; and Exhibit-1010 at 635-26.
`
`In the words of the Patent Owner, the claims of the ‘458 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 ‘458 at 1:21-28. Indeed, claim 6,
`
`for example (the limitations of which are incorporated into claim 11, which
`
`depends from claim 6), recites a “data access device for retrieving stored data from
`
`a data carrier” that includes “code to evaluate the use status data using the use rules
`
`data to determine whether access is permitted to the stored data.” See ‘458 at
`
`claim 6; Bloom at, e.g., ¶ 23. As the specification explains, the claimed use rules
`
`pertain to “allowed use of stored data items,” and “[t]hese use rules may be linked
`
`to payments made from the card to provide payment options such as access to buy
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`content data outright; rental access to content data for a time period or for a
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`specified number of access events; and/or rental/purchase . . .” ‘458 at 5:1-8. In
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`other words, the claimed use rules are linked to payment data and are used to
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`ensure that stored data is only accessible by paying customers. See also ‘458 at
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`5:17-28 (“In a debit mode, the additional storage of use rules facilitates the
`
`regulation of access to content data stored on the carrier without the need for
`
`further exchange of payment/use data with an external system to validate the use”);
`
`Bloom at, e.g., ¶ 23.
`
`In a recent decision involving highly similar claims, the Board determined
`
`that selling/providing access to a desired digital audio signal to a user constitutes
`
`financial activity. See Exhibit-1012 at 11-13 (“The cited entities may not provide
`
`typical financial services, but . . . they do sell digital content, which is the financial
`
`activity recited in claim 1”). Indeed, the specification of the ‘458 Patent is replete
`
`with further examples of financial activity, stating e.g., that payment data
`
`forwarded to a payment validation system 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 ‘458 at 6:60-7:2, 13:35-55.
`
`Thus, for at least the reasons described above, the ‘458 Patent is a CBM
`
`patent that is eligible for the review requested by Petitioner.
`
`E.
`
`The ‘458 Patent Is Not Directed to a Technological
`Invention, And Thus, Should Not Be Excluded From the
`Definition of a CBM Patent.
`
`The AIA excludes “patents for technological inventions” from the definition
`
`of CBM patents. AIA § 18(d)(2). To determine when a patent covers a
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458
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`technological invention, “the following will be considered on a case-by-case basis:
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`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 Exhibit-1009 at
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`48736-37 (USPTO clarified that to qualify as a technological invention, a patent
`
`must have a novel, unobvious technological feature and a technical problem solved
`
`by a technical solution). “[A]bstract business concepts and their implementation,
`
`whether in computers or otherwise,” are not included in the definition of
`
`“technological inventions.” Exhibit-1010 at 634. 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 directed to a covered business method, and not a
`
`technological invention. See, e.g., Exhibit-1009 at 48736-37.
`
`The claims of the ‘458 Patent fail to recite a novel and unobvious
`
`technological feature, and fail to recite a technical problem solved by a technical
`
`solution; thus, the patent is subject to Section 18 review. See Bloom at, e.g., ¶ 24.
`
`Although the independent claims of the ‘458 Patent recite computer-related terms
`
`such as “non-volatile payment data memory”, “data access device”, and “data
`
`carrier”, Congress has explained that simply reciting words describing generic
`
`technology such as “computer hardware, . . .software, memory, computer-readable
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458
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`storage medium, [or] databases” does not make a patent a technological invention.
`
`Exhibit-1010 at 634.
`
`The specification of the ‘458 Patent confirms that the computer-related
`
`terms recited in the ‘458 Patent’s claims do in fact relate to technology that is
`
`merely, in the words of the patentee, “conventional”: the specification states, e.g.,
`
`that “The data access terminal may be a conventional computer or, alternatively, it
`
`may be a mobile phone” that terminal memory “can comprise any conventional
`
`storage device,” and that a “data access device . . . such as a portable audio/video
`
`player . . . comprises a conventional dedicated computer system including a
`
`processor . . . program memory . . . and timing and control logic . . . coupled by a
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`data and communications bus.” ‘458 at 4:4-5, 16:46-49, 18:24-30. Consequently,
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`the ‘458 Patent claims cannot be saved by the recitation of computer-related terms.
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`The ‘458 Patent fails even to recite a technical problem, and instead
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`addresses the non-technical task of allowing “owners of . . . data to make the data
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`available themselves over the internet without fear of loss of revenue . . .
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`undermining the position of data pirates.” ‘458 at 2:11-15, 5:29-33. The ‘458
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`Patent’s solution to this non-technical problem is nothing more the combination of
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`prior art structures to achieve a normal, expected, and predictable result: the use of
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`a data supply system, content provision system, data terminal and data carrier to
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`restrict access to data based on payment. See e.g.,‘458 at Abstract, 13:60-14:6. A
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`teaching of a combination of prior art structures that achieves a predictable result
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`does not “render a patent a technological invention.” Exhibit-1009 at 48755.
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`Indeed, “[a] person having ordinary skill in the art at the time that the ‘458 Patent
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`was filed would not have considered the methods described and claimed by the
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`‘458 Patent to be technical”. Bloom at, e.g., ¶ 24.
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`In sum, the AIA’s exclusion of “patents for technological inventions” from
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`the definition of CBM patents is not applicable here because the ‘458 Patent fails
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`to recite a novel and unobvious technological feature, and fails to recite a technical
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`problem solved by a technical solution. CBM review is therefore appropriate for
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`the ‘458 Patent.
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`IV. SUMMARY OF THE ‘458 PATENT
`A. Brief Description
`The ‘458 Patent includes 12 claims, of which claims 1, 3, 4, 5 and 6 are
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`independent.
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`The claims of the ‘458 Patent generally relate to systems and methods “for
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`downloading and paying for data such as audio and video data, text, software,
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`[and] games . . . .” ‘458 at Abstract. The ‘458 Patent purports to address a specific
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`problem: “the growing prevalence of so-called data pirates” who “obtain data
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`either by unauthorized or legitimate means and then make this data available
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`essentially world-wide over the internet without authorization.” ‘458 at 1:31-33.
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`Within this context, the ‘458 Patent describes “combining digital right
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`management with content data storage,” and states that “[b]inding the data access
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`and payment together allows the legitimate owners of the data to make the data
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`available themselves over the internet without fear of loss of revenue, thus
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`undermining the position of data pirates.” ‘458 at 2:11-15, 5:29-33.
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`Specifically, the ‘458 Patent discloses a data supply system 120 (as shown in
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`FIG. 6) coupled to a content provision system 100 (as shown in FIG. 5). ‘458 at
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`13:22-27. The data supply system includes content access terminals, e-payment
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`systems, and a content access web server. See ‘458 at 13:22-62, FIG. 6. The
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`content provision system 100 includes content providers and content publishers
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`coupled to content databases. See ‘458 at 12:43-45; 14:63-65; and FIG. 5.
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`The ‘458 Patent also discloses a “portable data carrier for storing and paying
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`for data.” ‘458 at 1:20-25. In a parameter memory, the portable data carrier stores
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`use status data and use rules leveraged by the data supply system to control access
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`to content data, and, in a separate content memory, the portable data carrier stores
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`content data acquired through the content provision system. See ‘458 at 9:32-39
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`(“Use status data indicat[es] a use status of data stored on the carrier, and use rules
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`data indicat[es] permissible use of data stored on the carrier”). This disclosure is
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`reflected in the limitations of independent claim 6, which recites “use status data”
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`and “use rules” for “determin[ing] whether access is permitted to the stored data.”
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`Summary of the Prosecution History of the ‘458 Patent
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`B.
`U.S. 8,033,458 issued on Oct. 11, 2011 from the ‘847 Appln. (Exhibit-1024)
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`filed on Nov. 10, 2010 with 25 claims.
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`During prosecution of the ‘847 Appln., on Jan. 13, 2014, a Non-Final Office
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`Action rejected claims 1, 2, 5, 7-8,14-16, 24 and 25 under 35 U.S.C. §102(b) as
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`anticipated by U.S. Patent 4,697,073 to Hara (“Hara”). Claims 17-23 were allowed
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`but an objection was raised regarding claims 3-4, 6 and 9-13 based on their
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`dependency from a rejected base claim. See Non-Final Office Action of Jan. 13,
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`2014 at 3. The articulated reasons for allowing claims 17-23 included “[t]he prior
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`art fails to disclose a data access device comprising: a user interface, a data carrier
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`interface, a program store, a processor, a code having the functions and
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`characteristics as recited in claim 17. The prior art also fails to disclose a portable
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`data carrier as recited in claim 1 further including the limitations of claims 3-4,6
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`and 9-13.” Id.
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`In a response filed Feb. 10, 2014, Patent Owner cancelled the rejected claims
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`without addressing the rejection. Patent Owner also amended the objected to
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`claims to incorporate the subject matter of the rejected base claims. Patent Owner
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`further added claims 26 and 27.
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`In a Non-Final Office Action issued Apr. 29, 2014, claims 3, 4, 6, 9, 10, and
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`17-23 were allowed largely based on the reasoning expressed above. However,
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`claims 11-13, and 26 were rejected as anticipated by U.S. Patent 7,747,930 to
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`Weldon et al. (“Weldon”) and claim 27 was rejected as obvious over Weldon. See
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`Non-Final Office Action of Jan. 13, 2014 at 3-4.
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`On Jul. 7, 2011, Patent Owner cancelled claims 11-13, 26, and 27 without
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`addressing pending rejections. Subsequently, claims 3-4, 6, 9-10 and 17-23 were
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`allowed. See Notice of Allowance dated Aug. 9, 2014. In the reasons for
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`allowance, earlier reasoning was repeated. Namely, “[t]he prior art fails to disclose
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`a data access device comprising: a user interface, a data carrier interface, a
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`program store, a processor, a code having the functions and characteristics as
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`recited in claim 17. The prior art also fails to disclose a portable data carrier as
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`recited in claims 3-4,6 and 9-10. Id. at 2.
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`C. OMITTED
`V. DEMONSTRATION OF A REASONABLE LIKELIHOOD
`THAT AT LEAST ONE CLAIM OF THE ‘458 PATENT IS
`UNPATENTABLE
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`Claim 11 is challenged. Claim 11 depends from claim 6 and, therefore,
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`incorporates the subject matter of claim 6. As demonstrated below, claim 11 is
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`directed toward ineligible subject matter.
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`A. GROUND 1 - Claim 11 is Patent-Ineligible under 35 U.S.C.
`§ 101 For Abstractness
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`1.
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`Legal Standard
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`Laws of nature, abstract ideas and natural phenomena cannot be patented.
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`Mayo Collaborative Serv v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012).
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`Allowing patents on such matters would effectively grant impermissible
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`monopolies over entire concepts. See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71-
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`72 (1972). Thus, when claims of a patent recite abstract ideas, such as those that
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`“can be performed in the human mind, or by a human using a pen and paper,” and
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`those that preempt an entire concept or field, they must add “significantly more” to
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`be patent-eligible. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
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`1372 (Fed. Cir. 2011); See also Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 130 S.
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`Ct. 3218, 3230 (2010).
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`As the Supreme Court recently reiterated, mere recitation of “a particular
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`technological environment” does not make eligible a claim that is otherwise
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`improperly abstract. Alice Corp. v. CLS Bank Internationa1, 134 S. Ct. 2347,
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`2358 (2014) (quoting Bilski at 3230). Nor does addition of “insignificant post
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`solution activity” or “well-understood, routine, conventional activity.” Mayo at
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`1291 (quoting Bilski at 3230), 1294, 1297-98. Instead, a claim involving an
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`unpatentable abstract idea must contain “other elements or a combination of
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`elements, sometimes referred to as the inventive concept,” sufficient to prevent
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`patenting the underlying idea itself. Mayo at 1294 (internal quotations omitted).
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`One indication that a claim recites more than an abstract idea is that it is “tied to a
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`particular machine or apparatus” or “transform[s] a particular article into a
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`different state or thing.” Bilski at 3230.
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`An abstract claim is not salvaged, however, by “claiming only its
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`performance by computers, or by claiming the process embodied in program
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`instructions on a computer readable medium.” CyberSource at 1375. Instead, to
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`impart patent-eligibility to otherwise unpatentable subject matter “under the theory
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`that the [claimed subject matter] is linked to a machine, the use of the machine
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`must impose meaningful limits on the claim’s scope.” Id. at 1369 (internal
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`quotations omitted); see also Bancorp Serv., L.L.C. v. Sun Life Assur. Co. (U.S.),
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`687 F.3d 1266, 1278 (Fed. Cir. 2012) (“To salvage an otherwise patent-ineligible
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`process, a computer must be integral to the claimed invention, facilitating the
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`process in a way that a person making calculations or computations could not”).
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`Using a computer “for n