Covered Business Method Patent Review
`United States Patent No. 8,794,516
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Petitioner: Apple Inc.
`
`Attorney Docket No.:
`
` 104677-5008-832
`Customer No. 28120
`
`§
`Inventor: Racz et al.
`United States Patent No.: 8,794,516 §
`Formerly Application No.: 13/438,754 §
`Issue Date: August 5, 2014
`§
`Filing Date: April 3, 2012
`§
`Former Group Art Unit: 2887
`§
`Former Examiner: Thien Minh Le
`§
`
`For: Data Storage and Access Systems
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 8,794,516 PURSUANT TO 35 U.S.C.
`§ 321, 37 C.F.R. § 42.304
`
`
`
`
`United States Patent No. 8,794,516
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Petitioner: Apple Inc.
`
`Attorney Docket No.:
`
` 104677-5008-832
`Customer No. 28120
`
`§
`Inventor: Racz et al.
`United States Patent No.: 8,794,516 §
`Formerly Application No.: 13/438,754 §
`Issue Date: August 5, 2014
`§
`Filing Date: April 3, 2012
`§
`Former Group Art Unit: 2887
`§
`Former Examiner: Thien Minh Le
`§
`
`For: Data Storage and Access Systems
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 8,794,516 PURSUANT TO 35 U.S.C.
`§ 321, 37 C.F.R. § 42.304
`
`
`
`
`
` Covered Business Method Patent Review
`United States Patent No. 8,794,516
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`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ....................................................................................................... 1
`I.
`II. OVERVIEW OF FIELD OF THE CLAIMED INVENTION ......................... 5
`III. OVERVIEW OF THE CHALLENGED CLAIMS ............................................ 18
`IV. PETITIONER HAS STANDING .......................................................................... 23
`A.
`The ’516 Patent Is A Covered Business Method (“CBM”) Patent .......... 23
`B.
`Related Matters And Mandatory Notice Information; Petitioner Is A
`Real Party In Interest Sued For And Charged With Infringement .......... 36
`V. DETAILED EXPLANATION OF REASONS FOR RELIEF REQUESTED,
`SHOWING IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE
`CHALLENGED CLAIM IS UNPATENTABLE ............................................... 37
`A.
`Claim Construction .......................................................................................... 37
`B.
`The Challenged Claims Are Unpatentable Under 35 U.S.C. § 101 .......... 41
`C.
`Claims 1-4 Lack Written Description And Are Unpatentable Under §
`112 ...................................................................................................................... 77
`VI. CONCLUSION........................................................................................................... 79
`
`
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`ii
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`
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`EXHIBIT LIST
`1001
`U.S. Patent No. 8,794,516
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`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
`
`1018
`
`1019
`
`1020
`
`Plaintiffs’ First Amended Complaint
`
`U.S. Patent No. 5,925,127
`
`U.S. Patent No. 5,940,805
`File History for U.S. Patent No. 7,334,720
`
`U.S. Patent No. 4,999,806
`
`U.S. Patent No. 5,675,734
`
`U.S. Patent No. 4,878,245
`
`File History for U.S. Patent No. 8,794,516
`
`U.S. Patent No. 7,942,317
`
`U.S. Patent No. 5,103,392
`
`U.S. Patent No. 5,530,235
`
`U.S. Patent No. 5,629,980
`
`U.S. Patent No. 5,915,019
`
`European Patent Application, Publication No. EP0809221A2
`
`International Application Publication No. WO 99/43136
`
`JP Patent Application Publication No. H11-164058 (translation)
`
`Eberhard von Faber, Robert Hammelrath, and Franz-Peter Heider,
`“The Secure Distribution of Digital Contents,” IEEE (1997)
`Declaration of John P. J. Kelly In Support of Apple Inc.’s Petition for
`Covered Business Method Patent Review
`U.S. Patent No. 8,033,458
`
`iii
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`United States Patent No. 8,794,516
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`
`EXHIBIT LIST
`Declaration of Michael P. Duffey In Support of Apple Inc.’s Petition
`1021
`for Covered Business Method Patent Review
`Declaration of Megan F. Raymond In Support of Apple Inc.’s Peti-
`tion for Covered Business Method Patent Review
`Claim Construction Memorandum Opinion from Smartflash LLC v.
`Apple Inc., No. 6:13-cv-447 (Dkt. 229)
`File History for U.S. Patent No. 8,061,598
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`1037
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`1038
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`1039
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`1040
`
`U.S. Patent No. 4,337,483
`
`U.S. Patent No. 7,725,375
`
`International Publication No. WO 95/34857
`
`JP Patent Application Publication No. H10-269289 (translation)
`
`File History for U.S. Patent No. 7,942,317
`
`File History for U.S. Patent No. 8,033,458
`
`U.S. Patent No. 8,061,598
`
`U.S. Patent No. 8,118,221
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`File History for U.S. Patent No. 8,118,221
`
`U.S. Patent No. 8,336,772
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`File History for U.S. Patent No. 8,336,772
`
`U.S. Patent No. 5,646,992
`
`U.S. Patent No. 5,903,721
`
`International Publication No. WO99/13398
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`U.S. Patent No. 5,761,485
`
`Rakesh Mohan, John R. Smith and Chung-Sheng Li , “Adapting Mul-
`timedia Internet Content for Universal Access” IEEE (March 1999)
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`EXHIBIT LIST
`1041
`U.S. Patent No. 5,953,005
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`1042
`
`1043
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`1044
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`1045
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`1046
`
`Plaintiffs’ Complaint for Patent Infringement, Smartflash LLC, et al. v.
`Apple Inc., Civil Action No. 6:15-cv-145
`U.S. Patent No. 7,334,720
`
`Apr. 8-9, 2015 Deposition Transcript of Jonathan Katz, CBM2014-
`00102/106/108/112
`J. Taylor, “DVD-Video: Multimedia for the Masses,” IEEE Multime-
`dia, Vol. 6, No. 3, July-September 1999, pp. 86-92
`Excerpt of Transcript of Trial Afternoon Session, February 16, 2015
`from Smartflash LLC v. Apple Inc., No. 6:13-cv-447
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`v
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` Covered Business Method Patent Review
`United States Patent No. 8,794,516
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`I.
`
`INTRODUCTION
`
`Pursuant to § 321 and Rule § 42.304,1 the undersigned, on behalf of and acting
`
`in a representative capacity for Apple Inc. (“Petitioner”), petitions for review under
`
`the transitional program for covered business method patents of claims 1-28 (“chal-
`
`lenged claims”) of U.S. Pat. No. 8,794,516 (“the ’516 Patent” or “’516”), issued to
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`Smartflash Technologies Limited and assigned to Smartflash LLC (“Patent Owner”).
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`Petitioner asserts it is more likely than not that the challenged claims are unpatentable
`
`for the reasons herein and requests review of, and judgment against, claims 1-28 un-
`
`der § 101, and claims 1-4 under § 112, ¶ 1, as being unpatentable.
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`The challenged claims are merely directed to steps and corresponding systems
`
`well-known in the field of data storage and access, including a “handheld multimedia
`
`terminal,” a “content data supply server for providing an item of multimedia content
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`to a handheld multimedia terminal,” and “a computer system for providing multime-
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`dia data items to a handheld multimedia terminal.” See Ex. 1001 cls. 1-28; 4:7-8, 6:45-
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`47, 6:62-64, 13:30-31, 16:6-8, 16:47-52. And in fact, the ’516 Patent states that “[t]he
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`physical embodiment of the system is not critical and a skilled person will understand
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`that the terminals, data processing systems and the like can all take a variety of
`
`forms.” See, e.g., id. Fig 1; 12:37-40.
`
`Claim 14, for example, recites five rudimentary steps—(A) receiving a request
`
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`1 All section cites herein are to 35 U.S.C. or 37 C.F.R., as the context indicates.
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`for identifier data; (B) retrieving the identifier data; (C) transmitting the identifier
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`data; (D) receiving payment validation data; and (E) retrieving and transmitting the
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`item of multimedia content in response to payment validation data. Claim 14 provides:
`
`14. A method of providing an item of multimedia content to a handheld mul-
`timedia terminal, the method comprising:
`[A] receiving a request from the handheld multimedia terminal for identifier
`data identifying one or more items of multimedia content data available to the
`handheld multimedia terminal;
`[B] retrieving the identifier data from a data store;
`[C] transmitting the identifier data to the handheld multimedia terminal;
`[D] receiving payment validation data validating a user purchase of an item of
`multimedia content; and
`[E] responsive to the payment validation data validating the user purchase, re-
`trieving the purchased item of multimedia content data from a multimedia
`content store and transmitting the purchased item of multimedia content to
`the handheld multimedia terminal.
`Ex. 1001 cl. 14. 2 But at the patent’s earliest claimed priority date, these simple ele-
`
`ments and their combination were well known. See Section II; Ex. 1019 ¶¶ 82-86,
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`§ VI.3 The patent acknowledges that the idea of providing access to data in exchange
`
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`2 All emphasis herein added unless otherwise noted.
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`3 In further support of the Petitioner’s grounds, the Declaration of technical expert
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`John P.J. Kelly, Ph.D., is attached as Exhibit 1019. Dr. Kelly qualifies as a person of
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`ordinary skill in the art (Ex. 1019 §§ I, III) and has analyzed whether the challenged
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`2
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`for a payment (e.g., purchase of music on a CD) was already well known, as were e-
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`payment systems. E.g., Ex. 1001 5:13-16 (“the purchase outright option may be equiv-
`
`alent to the purchase of a compact disc (CD)”); 8:26-30; 9:1-11; 13:43-63. It is thus no sur-
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`prise that the prior art was teeming with disclosures of this basic concept and its
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`straightforward implementation in physical systems. See, e.g., Section II.
`
`Moreover, as its language makes clear, claim 14 involves no “technology” at all
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`other than, at most, a “handheld multimedia terminal” and a “data store”—both of
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`which were well known and entirely commonplace at the time. E.g., Ex. 1001 3:39-40,
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`8:64-66, 11:34-50, 13:43-58, 14:1-2, 17:15-18:13, 18:28, Figures 2, 9; Ex. 1014 Figures
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`71, 228:36-44; Ex. 1039 Figures 1, 4:34-39, 5:47-53, 6:22-7:15, 9:39-67; Ex. 1015 Fig-
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`ures 3A-B, 6:37-7:39; Ex. 1016 2-3, 5-6; Ex. 1017 ¶¶ 5-6; Ex. 1013 Figures 12, 14:28-
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`36, Ex. 1019 ¶¶ 82-86, § VI. Thus, as the intrinsic record reflects, claim 14 recites
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`nothing more than a method for retrieving and transmitting data from a data store
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`while receiving and responding to payment validation.
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`The other challenged claims are nothing but variations on this same simple and
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`well-known theme, with the addition of, in other challenged claims, equally generic
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`components (e.g., handheld multimedia terminals with wireless interfaces, non-volatile
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`memories, program stores, processors, displays, and code; content data supply servers
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`claims are unpatentable based on the grounds in this petition (Ex. 1019 §§ I-II and
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`IV-VIII).
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`3
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`with communications interfaces, program stores, data stores, multimedia content
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`stores, processors, and code; computer systems with communications interfaces, data
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`stores, program stores, processors, and code) and steps. E.g., Ex. 1001 12:37-40 (“The
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`physical embodiment of the system is not critical and a skilled person will understand that the termi-
`
`nals, data processing systems and the like can all take a variety of forms.”), Figure 4b.
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`As confirmed in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014),
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`the challenged claims are directed to patent-ineligible subject matter under § 101. As
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`the Board has noted in connection with similar claims of related patents, “the . . . pa-
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`tent makes clear that the asserted novelty of the invention is not in any specific im-
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`provement of software or hardware, but in the method of controlling access to data.”
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`CBM2014-00110, Pap. 7, at 13; see also CBM2014-00102/103, Pap. 8; 11; CBM2014-
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`00104, Pap. 9, 12; CBM2014-00106, Pap. 8, 12; CBM2014-00108, Pap. 8, 10;
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`CBM2014-00112, Pap. 8, at 11; CBM2014-00190, Pap. 9, 10; CBM2014-00192, Pap. 7,
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`10-11; CBM2014-00194, Pap. 9, 10-11; CBM2015-00015, Pap. 23, 14; CBM2015-
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`00016, Pap. 23, 15. Further, the challenged claims are directed to nothing more than
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`the unpatentable abstract idea of payment for and controlling access to data, with at
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`most the addition of well-known, routine and conventional features—in particular,
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`generic computer implementation that cannot confer patentability on these patent-
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`ineligible abstractions. See, e.g., Alice, 134 S. Ct. at 2359-60. In summary, each chal-
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`lenged claim recites ineligible subject matter and is thus unpatentable. Further, claim 1
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`4
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`(and thus, dependent claims 2-4) lacks a proper written description under § 112.
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`II. OVERVIEW OF FIELD OF THE CLAIMED INVENTION
`By October 25, 1999, the sale, distribution, and protection of digital content
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`were well-known to a person of ordinary skill (“POSA”).4 See, e.g., Ex. 1019 ¶¶ 23-25,
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`29-30, 46, 75. A POSA would have been aware of computer-based systems for
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`providing digital content, including software, audio, and video content, for a fee. See,
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`e.g., id. ¶¶ 25-30, 34, 43, 46, 48-50, 53-56, 58, 61, 75; see also Ex. 1044 14:21-15:15,
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`16:6-17:9; Ex. 1008 at 4:27-35, 6:49-7:6.5 Such systems included servers, computers, e-
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`payment systems, and user devices connected over known wired and wireless com-
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`munications networks to distribute content from content owners to users. See, e.g., Ex.
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`1019 ¶¶ 23-25, 29, 30, 34-38, 43-46, 48, 71-73, 75. Ex. 1044 19:3-18; see also Ex. 1025
`
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`4 All references to a POSA refer to the knowledge or understanding of a person of
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`ordinary skill in the art as of October 25, 1999, unless specifically noted. A POSA
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`would have at least a B.S. in E.E., computer science or a telecommunications related
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`field, and at least three years of industry experience that included client-server
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`data/information distribution and management architectures. See Ex. 1019 ¶¶ 15-17.
`
` Exhibit 1044 is April 8-9, 2015 Deposition Transcript of Jonathan Katz, Patent
`
` 5
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`Owner’s expert, for CBM2014-00102/106/108/112 regarding related patents in the
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`same family as the ’516 Patent (see Section IV.B infra describing related matters).
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`5
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`
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`at Figure 1, 9:50-68.
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`United States Patent No. 8,794,516
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`Indeed, the ’516 Patent explains that the physical embodiment of the system is
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`“not critical and a skilled person will understand that the terminals, data processing
`
`systems and the like can all take a variety of forms.” Ex. 1001 12:34-40. For example,
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`the patent concedes that various claimed components and functionalities were con-
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`ventional and well-known in the art (see Ex. 1019 ¶ 22), such as:
`
` Internet users paying for goods and/or services by credit card transaction (id.
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`2:21-22; 19:13-17)
`
` Encrypting/decrypting content for security (id. 3:1-11)
`
` Data access terminal or content access terminal hardware: “conventional com-
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`puter” or “mobile phone,” “home personal computer,” “mobile communica-
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`tions device,” “set top box” (id. 4:7-8, 16:4-13)
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` WAP and i-mode allowing mobile phones to access the Internet and download
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`data (id. 4:8-12)
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` SIM cards including a user identification means (id. 4:12-16)
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` Non-volatile memory, including EEPROM, Flash memory, optical memory (id.
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`4:45-51, 17:31-38)
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` Purchasing digital music equivalent to the purchase of a CD (id. 5:13-16)
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` Data carrier hardware: “IC card,” “smart card,” “memory stick,” “standard
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`smart card” (id. 6:32-34, 11:34-37, 17:17-38)
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` Electronics Point of Sale Systems (EPoSS) functionality for smart cards (id.
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`11:43-47)
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` E-payment systems and standards (id. 13:43-46)
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` Data access terminal as a “general purpose computer” with standard compo-
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`nents (id. Figure 8, 16:40-62)
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` Data access device hardware: “portable audio/video player,” “conventional
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`dedicated computer system” with standard components (id. 18:14-34)
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` Use control routines including digital watermarking and content protection
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`from the SDMI specification (id. 18:37-43)
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` “Standard transmission protocols” used to transmit content data items (id.
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`21:53-56)
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` Communication network, whose detailed implementation is “not essential,”
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`and can be the “Internet,” “web-based technology,” “any electronic communi-
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`cations network,” “wide area network,” “local area network,” “wireless net-
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`work,” “conventional land line network,” “extranet” (id. 25:51-58)
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`In addition, a POSA would have known, for example, multiple systems for sell-
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`ing and distributing digital content to remote user devices. See Ex. 1044 14:21-15:15,
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`16:6-17:9; see, e.g., Ex. 1019 ¶¶ 25-30, 34-44, 48-50, 53-54, 61, 64-65, 67-69. For exam-
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`7
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`ple, U.S. Patent No. 5,675,734 (“Hair,” published October 7, 1997) disclosed a system
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`for selling digital video or audio content. Ex. 1007 Abstract. Hair described a distribu-
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`tion system that transmits digital video or audio signals stored on a first memory be-
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`longing to a first party to a second memory belonging to a second party for a fee. Id.
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`5:41-44. In a first step, money is transferred from the second party to the first party
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`via telecommunications line for an electronic sale. Id. 5:44-47. Then, the memory of
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`the second party is connected to the memory of the first party over a telecommunica-
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`tions line, and the digital or audio signals are transmitted from the first memory to the
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`second memory. Id. 5:47-56. See, e.g., Ex. 1019 ¶ 29.
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`U.S. Patent No. 4,999,806 (“Chernow,” published March 12, 1991) also dis-
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`closed a system for digital content sales. Chernow described a software distribution
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`system in which a seller computer communicates with buyers over a telephone line for
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`the buyers to browse through software products available from the remote seller
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`computer for leasing or purchasing. Ex. 1006 2:22-36. The seller computer answers
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`calls from buyers, verifies credit card information, transmits purchased software to
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`buyers, and performs accounting functions to ensure proper billing and record keep-
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`ing. Id. 2:37-47. A POSA would have understood that delivery of the purchased con-
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`tent could be conditioned on successful payment, as the system described in Chernow
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`ensures that the customer is able to pay for the purchase, for example by verifying
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`credit card approval for the sale amount, before providing requested software. Id.
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`6:48-65; 7:53-63; see also Ex. 1044 24:2-11, 27:4-9. A POSA also would have appreciat-
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`ed the need to limit leased software to a period of time or a number of runs, in view
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`of Chernow’s description of software that renders itself unusable or erases itself at the
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`conclusion of the leased use. Ex. 1006 5:10-18. See, e.g., Ex. 1019 ¶¶ 25-28.
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`A POSA would have known that a central vending system could be used to
`
`provide multiple vendors with a mechanism to market, distribute, and receive pay-
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`ment for electronic data, as described for example in EP Patent Application Publica-
`
`tion No. 0809221 (“Poggio,” published November 26, 1997). Ex. 1015 Figure 1; 2:32-
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`36; see also Ex. 1044 9:3-18. Poggio described a vending machine that manages distri-
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`bution of electronic data on a variety of license terms by providing information about
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`the products for a purchaser to browse, obtaining payment for a product, and distrib-
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`uting purchased products to users’ computers. Ex. 1015 4:35-49. The vending ma-
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`chine includes a library of vendor products with a vending information database that
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`maintains product information for each vendor product, including product identifiers,
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`pointers to the products in the library, and information identifying the particular ven-
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`dor and category of the product. Id. Figure 3, 6:37-7:39. The vending machine also in-
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`cludes “a digital cash interface 116 for obtaining point-of-sale electronic payment for
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`the license fee associated with a particular vendor product.” Id. Figure 1, 6:13-16. The
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`digital cash interface confirms successful payment of the required license fee with an
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`electronic banking network before the virtual vending machine provides a product to
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`9
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`a user. Id. Figure 7, 10:7-20. See, e.g., Ex. 1019 ¶¶ 34-42.
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`Poggio disclosed a variety of existing payment schemes for purchasing a vendor
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`product that would have been known to a POSA, including “credit card payment
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`transactions,” “digital cash,” “debit transactions,” and “electronic funds transfer.” Ex.
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`1015 6:25-36. Poggio also disclosed payment methods in which payment information
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`is sent directly to an e-payment system instead of to the virtual vending machine, with
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`the e-payment system forwarding a confirmation that the payment has been made to
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`the vending machine. Ex. 1015 10:41-53. A POSA would have also known additional
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`methods for executing electronic payments beyond those explicitly discussed in
`
`Poggio. See Ex. 1044 16:6-19:2. For example, U.S. Patent No. 5,903,721 (“Sixtus,”
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`published May 11, 1999) disclosed an electronic payment system in which a “user’s
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`credit card number or other like sensitive information is not transmitted between enti-
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`ties as part of the transaction approval process.” Ex. 1037 7:37-40. The system instead
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`securely registers a user’s payment information, such as a credit card, in an initial
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`transaction and then later uses that information for checking credit approval without
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`requiring the user to transmit the sensitive payment information. Id. 7:40-53; 8:21-31.
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`The user sends only user identification information that is used to locate and check the regis-
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`tered payment information. Id. 10:19-31. See, e.g., Ex. 1019 ¶¶ 64-65.
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`In addition to systems for providing purchased content to users from remote
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`stores, a POSA would have also been aware of systems allowing users to purchase
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`content that is locally stored, but not yet accessible, on the user’s computer or on a
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`secondary storage device in the user’s possession. For example, The Secure Distribu-
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`tion of Digital Contents (“von Faber,” published 1997) disclosed a “system for distri-
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`bution of encrypted digital contents via freely accessible distribution media.” Ex. 1018
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`Abstract. A POSA would have appreciated the importance of ensuring that goods
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`were paid for, as von Faber acknowledged the need to “couple the use of the provid-
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`ed digital goods with a prior payment for the goods in a way which cannot be by-
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`passed.” Id. 7; see also Ex. 1044 27:4-9. The solution proposed by von Faber was to
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`freely distribute encrypted digital contents and focus on key management, to “have
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`the customer pay for the key which he needs to transform the encrypted content in an
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`usable form.” Ex. 1018 at 7. The content in such a distribution scheme is in the user’s
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`possession before any purchase, but the decryption key required to gain access to the
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`digital content is sent to a customer only after it is “guaranteed that payment has been
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`authorised.” Id. 8. See, e.g., Ex. 1019 ¶¶ 43-47. International Application Publication
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`No. WO99/13398 (“Peterson,” published March 18, 1999) also disclosed a system for
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`purchasing access to locally-stored content. As in claims 1-4 of the ’516 Patent, Peter-
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`son disclosed a digital content vending machine run on a personal computer that al-
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`lows a user to purchase products from inventory stored either in a hard drive of the
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`computer or on removable media, such as a CD, DVD, or tape in the user’s posses-
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`sion. Ex. 1038 Abstract, 8:11-15. The digital assets stored in the inventory “are pro-
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` Covered Business Method Patent Review
`United States Patent No. 8,794,516
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`tected from unauthorized use by a digital wrapper requiring at least one key for un-
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`wrapping.” Id. 4:14-16. The vending software displays information about the invento-
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`ry to the user for browsing and selecting a product, then “transmits money represent-
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`ing payment for the selection and an identifier for it to the clearing house, which
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`transmits back to the client a key associated with the selected asset.” Id. 4:18-20; see
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`also 9:18-10:6. The data displayed to a user in the browsing interface includes adver-
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`tisements and Internet links. Id. 15:24-29. The keys in Peterson provide security for
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`the content, including “protecting the asset 22 once it has been paid for” and “sup-
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`press[ing] unauthorized copying of [vendors’] intellectual property.” Id. 10:17-23. See,
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`e.g., Ex. 1019 ¶¶ 46-47.
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`A POSA would have appreciated that the available systems for providing pur-
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`chased digital content to users, or for allowing users to access local content after a
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`purchase was completed, could be implemented on a wide array of user devices. In
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`addition to well-known personal computers, a POSA would have been familiar with
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`mobile and handheld devices, for example devices the size of a book, for accessing
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`such content, as disclosed for example in U.S. Patent No. 5,761,485 (“Munyan,” pub-
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`lished June 2, 1998). Munyan disclosed a handheld “Personal Electronic Book” device
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`including a cellular modem or other high-speed modem for wireless communication.
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`Ex. 1039 Figure 1; 5:47-50; 6:41-45; 7:49-52. The device allows a user to “initiate and
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`establish communications with the remote bookstore’s database library and services”
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`12
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`to locate and download content. Id. 7:33-42; 8:1-13. The bookstore is “an on-line elec-
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`United States Patent No. 8,794,516
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`tronic archive of multimedia products” that the user browses to select products, to
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`buy licenses to use the products, and to download the products to the personal device.
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`Id. 9:39-54. See, e.g., Ex. 1019 ¶¶ 71-73.
`
`A POSA also would have known that content could be provided to, and played
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`on, mobile phones, for example mobile phones disclosed in Japanese Patent Applica-
`
`tion Publication No. H11-164058 (“Sato,” published June 18, 1999). Sato disclosed a
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`mobile phone connected to a music distribution center server via “a wireless public
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`communications network.” Ex. 1017 Figure 1, Abstract, ¶ 3. The mobile phone in-
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`cludes, among other components, “a transmitting and receiving control unit, a trans-
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`mitter and a receiver, a radio wave transmitting and receiving control unit, [and] an
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`antenna” for communication with the distribution center. Id. ¶ 4. Using the phone, a
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`user accesses a distribution center, enters a song selection, and receives the selected
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`music on the mobile phone. Id. ¶¶ 12, 14. Sato also discloses performing a billing pro-
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`cess after transmission from the distribution center. Id. ¶ 15. In order to provide mul-
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`timedia data to diverse client devices, including handheld devices and cellular phones,
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`a POSA would have recognized a need to address the different capabilities of the di-
`
`verse platforms to which content is being delivered, as disclosed in Adapting Multi-
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`media Internet Content for Universal Access (“Mohan,” published March 1999). Ex.
`
`1040 Abstract. A POSA would have understood multiple approaches to adapting mul-
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`13
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` Covered Business Method Patent Review
`United States Patent No. 8,794,516
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`timedia to optimally match the resources and capabilities of diverse clients, for exam-
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`ple using known compression and transcoding techniques. Ex.1040 1-2. See, e.g., Ex.
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`1019 ¶¶ 66, 73.
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`A POSA also would have known that different product options could be pro-
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`vided for a buyer to choose from, with different limits on the buyer’s access associat-
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`ed with each choice. For example, Poggio discloses providing a purchaser with a
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`choice between purchasing a permanent license for a vendor product or renting the
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`product with a license limited to rental a time period. Ex. 1015 Figure 6, 9:25-33.
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`Rented products are “formatted to include a time bomb or other disabling device
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`which will disable the product at the end of the rental period” before being transmit-
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`ted to the user. Id. 10:25-28. U.S. Patent No. 5,915,019 (“Ginter,” published June 22,
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`1999) disclosed a system distributing content with a set of “rules and controls” to
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`prevent unauthorized use of protected information and specify how much usage is to
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`be paid for. Ex. 1014 56:25-57:16. See, e.g., Ex. 1019 ¶¶ 34-42, 48-51.
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`A POSA would have understood that the user’s rights to purchased content
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`could be “attached” such that the rights and fee specifications remain with the con-
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`tent, as disclosed in U.S. Patent No. 5,629,980 (“Stefik,” published May 13, 1997). Ex.
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`1013 6:51-56. Stefik disclosed attaching usage rights to content to “define how that
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`digital work may be transferred, used, performed, or played.” Id. 19:14-15. Usage
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`rights also define fee specifications including discounts, incentives paid to users, or
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`14
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` Covered Business Method Patent Review
`United States Patent No. 8,794,516
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`best price specifications that “accommodate special deals, rebates, and pricing that
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`depends on information that is not available to the repository.” Id. 23:60-24:25, 24:34-
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`57. The fee specifications “can be combined with tickets or authorizations that could
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`indicate that the consumer is a wholesaler or that he is a preferred customer” in which
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`case when the transaction is reconciled “any excess amount will be returned to the
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`consumer in a separate transaction.” Id. 24:39-47. Stefik also disclosed a digital work
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`having multiple versions of a right attached with different prices, such that a purchas-
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`er may choose which option best fits the rights he or she needs. Id. 18:9-16. A POSA
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`would have known that a user could also be provided with an option to specify the
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`extent of utilization needed, so only that usage is paid for and the content is released
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`only to that extent of utilization, as disclosed in U.S. Patent No. 5,940,805 (“Kopp,”
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`published August 17, 1999). Ex. 1004 2:61-3:2; 5:47-55. See, e.g., Ex. 1019 ¶¶ 30-33,
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`58-60.
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`A POSA would have known how to monitor and enforce limits on purchased
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`or rented content when the amount of allowed content usage was limited. For exam-
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`ple, a POSA would have known that rented content could be monitored to ensure
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`that a licensed amount of use time or licensed number of uses is not exceeded, as dis-
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`closed in U.S. Patent No. 5,925,127 (“Ahmad,” published July 20, 1999). Ex. 1003
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`2:62-3:19; see also Ex. 1011 at Abstract, 2:52-61, 3:1-24. Ahmad disclosed a monitor
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`that could be provided from a content server along with content, or could be already
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` Covered Business Method Patent Review
`United States Patent No. 8,794,516
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`stored on the user’s computer before the content is purchased. Ex. 1003 Figure 3,
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`11:4-13. When the user uses the licensed content, the monitor tracks the usage and
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`ensures that usage is cut off when the licensed amount is reached, for example when
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`the licensed usage time or number of uses has been expended. Id. Figures 5A-B,
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`13:65-14:9, 14:20-48. In addition to limiting use with a monitor, a POSA also would
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`have known that usage could be controlled by providing a user with limited-use de-
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`cryption keys after authenticating a user, for example by verifying payment data, as
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`disclosed in U.S. Patent No. 5,953,005 (“Liu,” published September 14, 1999). Ex.
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`1041 5:9-17. Liu disclosed limiting the key provided to the user to a single use, a pre-
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`determined number of plays, or a time period, after which the key expires and is no
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`longer usable. Ex. 1041 5:33-49. See, e.g., Ex. 1019 ¶¶ 56-57, 61.
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`In addition to the purchased content itself, a POSA would have known that
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`additional data could be provided to the user along with the content. For example,
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`Sato disclosed transmitting lyrics and images along with a song that are then displayed
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`to the user when the song is played. Ex. 1017 ¶¶ 14-15. A POSA also would have un-
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`derstood that promotional materials, including materials selected based on the charac-
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`ter of usage exhibited by a particular user, could be included in a container in which
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`the content is transmitted to an end user, as disclosed in Ginter. Ex. 1014 286:57-
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`287:6. See, e.g., Ex. 1019 ¶¶ 48, 51, 73.
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`Ginter also disclosed providing promotional data a
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