CBM2015-00121
`Patent 8,794,516 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00121
`Patent 8,794,516
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, and GREGG I.
`ANDERSON, Administrative Patent Judges.
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S NOTICE OF
`SUPPLEMENTAL AUTHORITY
`
`
`Patent 8,794,516 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00121
`Patent 8,794,516
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, and GREGG I.
`ANDERSON, Administrative Patent Judges.
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S NOTICE OF
`SUPPLEMENTAL AUTHORITY
`
`
`
`CBM2015-00121
`Patent 8,794,516 B2
`
`
`The cases cited in PO’s Notice (Pap. 29) support Petitioner, not PO.1 These
`
`decisions confirm, under the analysis required by, e.g., Alice Corp. Pty. Ltd. v. CLS
`
`Bank Int’l, 134 S. Ct. 2347 (2014), that the Claims are patent-ineligible. The
`
`Claims are directed to “economic or other tasks for which a computer is used in its
`
`ordinary capacity,” not a “specific improvement to the way computers operate.”
`
`See Enfish, LLC v. Microsoft Corp., ___ F.3d ___, No. 2015-1244, 2016 WL
`
`2756255, at *5 (Fed. Cir. May 12, 2016). And the Board does not face the “limited
`
`record” of a motion to dismiss “construed in favor of the nonmovant” as in BAS-
`
`COM Global Internet Services, Inc. v. AT&T Mobility, LLC., ___ F.3d ___, No.
`
`2015-1763, 2016 WL 3514158, at *6-8 (Fed. Cir. June 27, 2016). To the contrary,
`
`the detailed record here confirms the Claims do not improve “‘the performance of
`
`the computer system itself,’” and provide no inventive concept. Id. at *7-8.
`
`1. Unlike Enfish’s claims to “a specific improvement to the way computers
`
`operate,” these Claims are indisputably directed to “economic or other tasks for
`
`which a computer is used in its ordinary capacity.” Enfish, 2016 WL 2756255, at
`
`*5. They merely recite “general-purpose computer components [that were] added
`
`post-hoc to a fundamental economic practice,” id. at *8, as this Board found in de-
`
`ciding that related claims were “directed to performing the fundamental economic
`
`
`1 Unless noted, all emphasis is added, and abbreviations are those from Paper 21
`(“Reply”).
`
`
`
`1
`
`
`
`CBM2015-00121
`Patent 8,794,516 B2
`
`practice of [conditioning and] controlling access to content [based on payment].”
`
`See, e.g., 00017FWD at 7-8; 00016FWD/00194FWD/00193FWD at 8; CBM2014-
`
`00190, Pap.47 (“00190FWD”) at 8; CBM2015-00028, Pap. 44 (“00028FWD”) at 8;
`
`CBM2015-00029, Pap. 43 (“00029FWD”) at 9; see also 00192FWD at 8;
`
`CBM2015-00031, Pap. 45 (“00031FWD”) at 12; CBM2015-00032, Pap. 46
`
`(“00032FWD”) at 13-14; CBM2015-00033, Pap. 40 (“00033FWD”) at 13; Notice
`
`3 (PO admitting Claims directed to “digital commerce”).
`
`PO’s reliance on generic components underscores this point. See Notice 2-3.
`
`While PO argues its generic hardware and software “carry out their functions in a
`
`specific manner” (see id. 3), it does not and cannot state its Claims are “directed to
`
`an improvement in the functioning of a computer.” Cf. Enfish, 2016 WL 2756255,
`
`at *7. Rather, PO’s Claims are like “the claims at issue in Alice and Versata,”
`
`“simply adding conventional computer components to well-known business prac-
`
`tices.” Id.
`
`Indeed, in In re TLI Communications LLC Patent Litigation, No. 2015-1372,
`
`2016 WL 2865693 (Fed. Cir. May 17, 2016), the Federal Circuit similarly distin-
`
`guished Enfish on the ground that the TLI claims, like the Claims here, “are di-
`
`rected to the use of conventional or generic technology.” TLI, 2016 WL 2865693,
`
`at *3. Just as in TLI, the Claims here “perform[] generic computer functions such
`
`as storing, receiving, and extracting data” using “physical components” (e.g., wire-
`
`
`
`2
`
`
`
`CBM2015-00121
`Patent 8,794,516 B2
`
`less interface, non-volatile memory, processor, display) that “behave exactly as ex-
`
`pected according to their ordinary use” and “merely provide a generic environment
`
`in which to carry out the abstract idea” of controlling access to content based on
`
`payment and/or rules. Id. at *3, *4, *7; see also Paper 27 (“Opp. to Mot. to Ex-
`
`clude”) at 7-9.
`
`Unlike Enfish’s summary judgment inferences, here the full record—inclu-
`
`ding PO’s admissions (see, e.g., Reply 7, 11-13) and Petitioner’s unrebutted expert
`
`testimony about what was routine and conventional (see, e.g., Reply 12-13, 16, 20-
`
`22; Ex. 1019 §§ VI, VII; Ex. 1013 9:34-42)—indisputably confirms the Claims of-
`
`fer no “specific asserted improvement in computer capabilities,” such as Enfish’s
`
`“innovative” means for configuring memory with a self-referential table. See En-
`
`fish, 2016 WL 2756255, at *3, *5. Instead they are directed to the abstract idea of
`
`controlling access to content based on payment/rules “for which computers are in-
`
`voked merely as a tool.” Id. at *5.
`
`2. In BASCOM, pointing to DDR’s “technical solution to a problem unique
`
`to the Internet,” the court accepted BASCOM’s allegations that its “specific meth-
`
`od of filtering Internet content”—which “associate[d] individual accounts with
`
`their own filtering scheme and elements while locating the filtering system on an
`
`ISP server”—claimed “a technology-based solution (not an abstract-idea-based so-
`
`lution implemented with generic technical components in a conventional way) to
`
`
`
`3
`
`
`
`CBM2015-00121
`Patent 8,794,516 B2
`
`filter content on the Internet that overcomes existing problems with other Internet
`
`filtering systems,” and “represent[ed] a ‘software-based invention[ ] that im-
`
`prove[s] the performance of the computer system itself.’” BASCOM, 2016 WL
`
`3514158, at *6, *7. “[T]aking the allegations of the complaint to be true” on this
`
`“limited record,” the Court found the claims improved “‘an existing technological
`
`process.’” Id. at *4, *6, *7.
`
`Here, PO has not shown and cannot show the Claims are “a technology-
`
`based solution” “‘that improve[s] the performance of the computer system itself’”
`
`as in BASCOM. Id. at *7. While PO argues its Claims, by storing payment data
`
`and content data on a handheld multimedia terminal, are “‘improv[ing] an existing
`
`technological process’” (see Notice 5), PO has failed to rebut Petitioner’s showing
`
`that this neither was inventive nor improved “the performance of the computer sys-
`
`tem itself.” BASCOM, 2016 WL 3514158, at *7; Ex. 1019 §§ VI, VII (citing prior
`
`art). Unlike BASCOM’s claims, which were directed to improvements in filtering
`
`technology, PO’s Claims are drawn to carrying out existing economic transactions
`
`using existing and generic components in a conventional way that provides no in-
`
`ventive concept. The problem is a business problem (data piracy) (see, e.g., Dec9-
`
`10), and as the Board already found in related proceedings any solution here is “not
`
`rooted in specific computer technology” and does not “override[] the routine and
`
`conventional use of the recited devices and functions.” See, e.g.,
`
`
`
`4
`
`
`
`CBM2015-00121
`Patent 8,794,516 B2
`
`00016FWD/00028FWD at 16; 000190FWD/000192FWD at 16-17; 00194FWD at
`
`16; 00017FWD/00193FWD at 14-15; 00029FWD at 18;
`
`00031FWD/00032FWD/00033FWD at 19-20. And PO argues its Claims do not
`
`“‘preempt all ways’ of paying for and controlling access to digital content,” but ig-
`
`nores that, even according to its own cited case,2 “pre-emption is not the test . . .”
`
`See CellzDirect, 2016 WL 3606624, at *7; Ariosa Diagnostics, Inc. v. Sequenom,
`
`Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (where “claims are deemed only to dis-
`
`close patent ineligible subject matter under the Mayo framework, . . . preemption
`
`concerns are fully addressed and made moot”).
`
`For the reasons above, Enfish and BASCOM support Petitioner, not PO.
`
`And neither case is nearly as analogous as Ultramercial, whose claims, like the
`
`Claims here, apply rules to control access to paid-for digital content.
`
`Respectfully submitted, by /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`
`
`
`
`
`July 14, 2016
`
`
`2 PO also cited Rapid Litigation Management Ltd. v. CellzDirect, Inc., No. 2015-
`
`1570, 2016 WL 3606624 (Fed. Cir. July 5, 2016). Unsurprisingly, PO provides no
`
`analysis of CellzDirect since its facts are inapposite. See id. at *7 (claims to new
`
`technique for hepatocyte cryopreservation “far from routine and conventional”).
`
`
`
`5
`
`
`
`CBM2015-00121
`Patent 8,794,516 B2
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PETITIONER’S
`
`RESPONSE TO PATENT OWNER’S NOTICE OF SUPPLEMENTAL
`
`AUTHORITY was served on July 14, 2016, to the following Counsel for Patent
`
`Owner via e-mail, pursuant to the parties’ agreement concerning service:
`
`Michael R. Casey
`Wayne M. Helge
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Facsimile: (571) 765-7200
`mcasey@dbjg.com
`whelge@davidsonberquist.com
`SmartFlash-CBM@dbjg.com
`
`Attorneys for Patent Owner
`Smartflash, LLC
`
` /s/ Lauren N. Robinson
`
`
`
`
`
`ROPES & GRAY LLP
`
`6
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
