Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: November 10, 2015
`
`
`
`
`
`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 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, and GREGG I.
`ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: November 10, 2015
`
`
`
`
`
`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 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, and GREGG I.
`ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`CBM2015-00121
`Patent 8,794,516 B2
`
`A. Background
`
`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition requesting covered business
`
`method patent review of claims 1–28 (the “challenged claims”) of U.S.
`
`Patent No. 8,794,516 B2 (Ex. 1001, “the ’516 patent”) pursuant to § 18 of
`
`the Leahy-Smith America Invents Act (“AIA”).1 Paper 2 (“Pet.”).
`
`Smartflash LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
`
`(“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 324(a), which provides that a
`
`covered business method patent review may not be instituted “unless . . . it is
`
`more likely than not that at least 1 of the claims challenged in the petition is
`
`unpatentable.”
`
`Upon consideration of the Petition and Preliminary Response, we
`
`determine that that the ’516 patent is a covered business method patent and
`
`Petitioner has demonstrated that it is more likely than not that the challenged
`
`claims are unpatentable. Accordingly, we institute a covered business
`
`method review of claims 1–28 of the ’516 patent.
`
`B. Asserted Grounds
`
`Petitioner argues that: (1) claims 1–28 are unpatentable under 35
`
`U.S.C. § 101; and (2) that claims 1–4 are unpatentable under 35 U.S.C.
`
`§ 112. Pet. 1. Petitioner also provides the Declaration of Dr. John P. J.
`
`Kelly (“Kelly Declaration,” Ex. 1019).
`
`C. Related Matters
`
`Petitioner indicates that the ’516 patent has been asserted against it in
`
`Smartflash LLC v. Apple Inc., Case No. 6:15-cv-145 (E.D. Tex.). Pet. 36.
`
`1 Pub. L. No. 112–29, 125, Stat. 284, 296–07 (2011).
`
`2
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`CBM2015-00121
`Patent 8,794,516 B2
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`Petitioner advises that patents related to the ’516 patent has been asserted in
`
`other actions, including: Smartflash LLC v. Apple Inc., Case No. 6:13-cv-
`
`447 (E.D. Tex.); Smartflash LLC v. Samsung Electronics Co., Case No.
`
`6:13-cv-448 (E.D. Tex.); Smartflash LLC v. Google, Inc., Case No. 6:14-cv-
`
`435 (E.D. Tex.); and Smartflash LLC et al. v. Amazon.Com, Inc., et al., No.
`
`6:14-cv-992 (E.D. Tex.). Pet. 36, see Paper 4, 4–5.
`
`Petitioner previously filed petitions for covered business method
`
`patent review of several related patents. Pet. 36.
`
`D. The ’516 Patent
`
`The ’516 patent relates to “a portable data carrier for storing and
`
`paying for data and to computer systems for providing access to data to be
`
`stored,” and the “corresponding methods and computer programs.” Ex.
`
`1001, 1:24–28. Owners of proprietary data, especially audio recordings,
`
`have an urgent need to address the prevalence of “data pirates,” who make
`
`proprietary data available over the internet without authorization. Id. at
`
`1:32–58. The ’516 patent describes providing portable data storage together
`
`with a means for conditioning access to that data upon validated payment.
`
`Id. at 1:62–2:3. According to the ’516 patent, this combination of the
`
`payment validation means with the data storage means allows data owners to
`
`make their data available over the internet without fear of data pirates. Id. at
`
`2:8–19.
`
`As described, the portable data storage device is connected to a
`
`terminal for internet access. Id. at 1:62–2:3. The terminal reads payment
`
`information, validates that information, and downloads data into the portable
`
`storage device from a data supplier. Id. The data on the portable storage
`
`device can be retrieved and output from a mobile device. Id. at 2:4–7. The
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`3
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`CBM2015-00121
`Patent 8,794,516 B2
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`’516 patent makes clear that the actual implementation of these components
`
`is not critical and the alleged invention may be implemented in many ways.
`
`See, e.g., id. at 25:59–62 (“The skilled person will understand that many
`
`variants to the system are possible and the invention is not limited to the
`
`described embodiments.”).
`
`E. Illustrative Claims
`
`As noted above, Petitioner challenges claims 1–28. Claims 1, 5, and
`
`14, 21, and 25 are independent and claims. Claims 1 and 14, respectively,
`
`an apparatus (“handheld multimedia terminal”) claim and method claim, are
`
`illustrative of the claimed subject matter and reproduced below:
`
`1. A handheld multimedia terminal, comprising:
`a wireless interface configured to interface with a
`wireless network for accessing a remote computer system;
`non-volatile memory configured to store multimedia
`content, wherein said multimedia content comprises one or
`more of music data, video data and computer game data;
`a program store storing processor control code;
`a processor coupled to said non-volatile memory, said
`program store, said wireless interface and a user interface to
`allow a user to select and play said multimedia content;
`a display for displaying one or both of said played
`multimedia content and data relating to said played multimedia
`content;
`wherein the processor control code comprises:
`code to request identifier data identifying one or more
`items of multimedia content stored in the non-volatile memory;
`code to receive said identifier data;
`code to present to a user on said display said identified
`one or more items of multimedia content available from the
`non-volatile memory;
`code to receive a user selection to select at least one of
`said one or more of said stored items of multimedia content;
`code responsive to said user selection of said at least one
`selected item of multimedia content to transmit payment data
`
`4
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`CBM2015-00121
`Patent 8,794,516 B2
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`relating to payment for said at least one selected item of
`multimedia content via said wireless interface for validation by
`a payment validation system,
`wherein said payment data comprises user identification
`data identifying said user to said payment validation system;
`code to receive payment validation data via said wireless
`interface defining if said payment validation system has
`validated payment for said at least one selected item of
`multimedia content; and
`code to control access to said at least one selected item of
`multimedia content on said terminal responsive to said payment
`validation data,
`wherein said user interface is operable to enable a user to
`select said at least one item of multimedia content available
`from said non-volatile memory; and
`wherein said user interface is operable to enable a user to
`access said at least one selected item of multimedia content
`responsive to said code to control access permitting access to
`said at least one selected item of multimedia content.
`
`Ex. 1001, 25:65–26:45.
`
`14. A method of providing an item of multimedia
`content to a handheld multimedia terminal, the method
`comprising:
`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;
`retrieving the identifier data from a data store;
`transmitting
`the
`identifier data
`to
`the handheld
`multimedia terminal;
`receiving payment validation data validating a user
`purchase of an item of multimedia content; and
`responsive to the payment validation data validating the
`user purchase, retrieving 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.
`
`
`5
`
`
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`CBM2015-00121
`Patent 8,794,516 B2
`
`Ex. 1001, 27:61–28:9.
`
`A. Claim Construction
`
`II. ANALYSIS
`
`While Petitioner presents constructions for several claim terms (Pet.
`
`37–41), Patent Owner does not identify any term for construction. We
`
`determine that no terms require express construction for purposes of this
`
`Decision.
`
`B. Covered Business Method Patent
`
`Section 18 of the AIA provides for the creation of a transitional
`
`program for reviewing covered business method patents. A “covered
`
`business method patent” is 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,
`
`except that the term does not include patents for technological inventions.”
`
`AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have only one
`
`claim directed to a covered business method to be eligible for review. See
`
`Transitional Program for Covered Business Method Patents—Definitions of
`
`Covered Business Method Patent and Technological Invention; Final Rule,
`
`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”) (Comment 8).
`
`1. Financial Product or Service
`
`Petitioner asserts that claim 14 “explicitly describes performing data
`
`processing and other operations, and transmitting the requested data in
`
`connection with payment validation, and thus clearly relates to a financial
`
`activity and providing a financial service.” Pet. 29 (citation omitted). Based
`
`on this record, we agree with Petitioner that the subject matter recited by
`
`6
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`CBM2015-00121
`Patent 8,794,516 B2
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`claim 14 is directed to activities that are financial in nature, namely data
`
`access conditioned on payment validation.
`
`Claim 14 recites “receiving payment validation data validating a user
`
`purchase of an item of multimedia content” and “responsive to the payment
`
`validation data validating the user purchase, retrieving the purchased item of
`
`multimedia content data.” We are persuaded that payment validation is a
`
`financial activity, and retrieving a purchased item based on payment
`
`validation amounts to a financial service. This is consistent with the
`
`Specification of the ’516 patent, which confirms claim 14’s connection to
`
`financial activities by stating that the invention “relates to a portable data
`
`carrier for storing and paying for data.” Ex. 1001, 1:24–25. The
`
`Specification also states repeatedly that the disclosed invention involves
`
`managing access to data based on payment validation. See, e.g., Ex. 1001,
`
`1:62–2:3, 6:64–7:1, and 20:59–63.
`
`Patent Owner disagrees that claim 14 satisfies the financial in nature
`
`requirement of AIA § 18(d)(1), arguing that that section should be
`
`interpreted narrowly to cover only technology used specifically in the
`
`financial or banking industry. Prelim. Resp. 45–47. Patent Owner cites to
`
`various portions of the legislative history as support for its proposed
`
`interpretation. Id.
`
`The Federal Circuit has expressly determined, however, that “the
`
`definition of ‘covered business method patent’ is not limited to products and
`
`services of only the financial industry, or to patents owned by or directly
`
`affecting the activities of financial institutions, such as banks and brokerage
`
`houses.” Versata Dev. Grp., Inc. v. SAP America, Inc., 793 F.3d 1306, 1325
`
`(Fed. Cir. 2015). Rather, it “covers a wide range of finance-related
`
`7
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`CBM2015-00121
`Patent 8,794,516 B2
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`activities.” Id. Further, contrary to Patent Owner’s view of the legislative
`
`history, the legislative history overall indicates that the phrase “financial
`
`product or service” is not limited to the products or services of the “financial
`
`services industry” and is to be interpreted broadly. CBM Rules, 77 Fed.
`
`Reg. at 48,735–36. For example, the “legislative history explains that the
`
`definition of covered business method patent was drafted to encompass
`
`patents ‘claiming activities that are financial in nature, incidental to a
`
`financial activity or complementary to a financial activity.’” Id. (citing 157
`
`Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)).
`
`In addition, Patent Owner asserts that claim 14 is not directed to an
`
`apparatus or method that is financial in nature because claim 14 “omits the
`
`specifics of how payment is made.” Prelim. Resp. 47. We are not
`
`persuaded by this argument because § 18(d)(1) of the AIA does not include
`
`such a requirement, nor does Patent Owner point to any other authority that
`
`makes such a requirement. Id. We determine that because claim 14 recites
`
`receiving payment validation data and controlling access to content based on
`
`such payment data, as Patent Owner acknowledges (id.), the financial in
`
`nature requirement of § 18(d)(1) is satisfied.
`
`For the reasons stated above, and based on the particular facts of this
`
`proceeding, we conclude that the ’516 patent includes at least one claim that
`
`meets the financial in nature requirement of § 18(d)(1) of the AIA.
`
`2. Exclusion for Technological Inventions
`
`Petitioner asserts that claim 14 does not fall within § 18(d)(1)’s
`
`exclusion for “technological inventions.” Pet. 30–35. In particular,
`
`Petitioner argues that claim 14 “does not claim ‘subject matter as a whole
`
`[that] recites a technological feature that is novel and unobvious over the
`
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`CBM2015-00121
`Patent 8,794,516 B2
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`prior art[] and solves a technical problem using a technical solution.’”
`
`Pet. 30 (quoting 37 C.F.R. § 42.301(b)). Patent Owner disagrees and argues
`
`that claim 14, as a whole, recites at least one technological feature that is
`
`novel and unobvious over the prior art. Prelim. Resp. 48.
`
`We are persuaded that claim 14 as a whole does not recite a
`
`technological feature that is novel and unobvious over the prior art. For
`
`example, claim 14 recites only features such as “handheld multimedia
`
`terminal” and “data store.” The ’516 patent makes clear that the asserted
`
`novelty of the invention is not in any specific improvement of software or
`
`hardware, but in the method of retrieving and controlling access to data. For
`
`example, the ’516 patent states that “there is an urgent need to find a way to
`
`address the problem of data piracy” (Ex. 1001, 1:55–58), and provides the
`
`example of a “smart Flash card” for a data carrier, referring to “the ISO
`
`(International Standards Organization) series of standards, including ISO
`
`7810, ISO 7811, ISO 7812, ISO 7813, ISO 7816, ISO 9992 and ISO 10102”
`
`(id. at 17:15–17, 21–24) for further details on smart cards. Thus, we
`
`determine that claim 14 recites merely known technological features, which
`
`indicates that it is not a patent for a technological invention. See Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012).
`
`Patent Owner also argues that claim 14 falls within § 18(d)(1)’s
`
`exclusion for “technological invention” because it is directed towards
`
`solving the technological problem of “obtaining access to multimedia
`
`content stored in a data store, e.g., as part of a convenient, legitimate
`
`acquisition of multimedia content from a multimedia content supplier.”
`
`Prelim. Resp. 48. We are not persuaded by this argument because, as
`
`Petitioner argues, the problem being solved by claim 14 is a business
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`9
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`CBM2015-00121
`Patent 8,794,516 B2
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`problem—data piracy. Pet. 34–35. For example, the Specification states
`
`that “[b]inding the data access and payment together allows the legitimate
`
`owners of the data to make the data available themselves over the internet
`
`without fear of loss of revenue, thus undermining the position of data
`
`pirates.” Ex. 1001, 2:14–19. Therefore, based on the particular facts of this
`
`proceeding, we conclude that claim 14 does not recite a technological
`
`invention.
`
`3. Conclusion
`
`In view of the foregoing, we conclude that the ’516 patent is a covered
`
`business method patent under AIA § 18(d)(1) and is eligible for review
`
`under the transitional covered business method patent program.
`
`C. Section 101 Patent-Eligible Subject Matter
`
`Petitioner challenges claims 1–28 as being directed to patent-
`
`ineligible subject matter under 35 U.S.C. § 101. Pet. 1, 41–77; see Ex. 1019
`
`¶¶ 10–13, 74–92. Analyzing the challenged claims using the two-step
`
`framework applied in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct.
`
`2347 (2014), Petitioner asserts that all the challenged claims are directed to
`
`an abstract idea. Id. at 43–51. Specifically, Petitioner argues that the
`
`challenged claims are directed to the abstract idea of paying for and
`
`controlling access to content. Id. at 44 (citing Ex. 1019 ¶ 75). According to
`
`Petitioner, the claims lack any additional elements that transform them into
`
`patent-eligible applications of that idea. Id. at 51–61.
`
`Patent Owner argues that the challenged claims are analogous to
`
`claims found patent eligible by the Federal Circuit. See Prelim. Resp. 6–21
`
`(citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
`
`Cir. 2014) (claims patent eligible under § 101 where they are “necessarily
`
`10
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`CBM2015-00121
`Patent 8,794,516 B2
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`rooted in computer technology in order to overcome a problem specifically
`
`arising in the realm of computer networks”). Patent Owner also contends
`
`the claims do not result in inappropriate preemption. Prelim. Resp. 21–34.
`
`Patent Owner asserts additional arguments that are addressed below. Id. at
`
`35–43.
`
`We agree with Petitioner that the challenged claims of the ’516 patent
`
`are more likely than not directed to patent-ineligible subject matter.
`
`1. Abstract Idea
`
`Under § 101, we must first identify whether an invention fits within
`
`one of the four statutorily provided categories of patent-eligibility:
`
`“processes, machines, manufactures, and compositions of matter.”
`
`Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713–714 (Fed. Cir. 2014)
`
`(citation omitted). Here, one set of the challenged claims recites a
`
`“machine,” i.e., a “handheld multimedia terminal” (claims 1–4), a “content
`
`data supply server” (claims 5–13), a “computer system” (claims 14–24). A
`
`second set of claims recites a method or “process” (Claims 25–29). Both
`
`sets of claims fall within the broad categories of § 101. Section 101,
`
`however, “contains an important implicit exception [to subject matter
`
`eligibility]: Laws of nature, natural phenomena, and abstract ideas are not
`
`patentable.” Alice, 134 S. Ct. at 2354 (citing Assoc. for Molecular
`
`Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal
`
`quotation marks and brackets omitted)).
`
`In Alice, the Supreme Court reiterated the framework set forth
`
`previously in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
`
`Ct. 1289, 1293 (2012) “for distinguishing patents that claim laws of nature,
`
`natural phenomena, and abstract ideas from those that claim patent-eligible
`
`11
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`CBM2015-00121
`Patent 8,794,516 B2
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`applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
`
`the analysis is to “determine whether the claims at issue are directed to one
`
`of those patent-ineligible concepts.” Id. (citation omitted).
`
`Petitioner contends that each challenged claim is drawn to the concept
`
`of controlling access based on payment. Pet. 44–45 (citing Ex. 1019 ¶ 75).
`
`Petitioner further contends the concept is a “well-known ‘building block of
`
`the modern economy’ and a longstanding ‘method of organizing human
`
`activity’ long pre-dating the ’516 patent.” Id. at 47 (citations omitted).
`
`Petitioner asserts that all 28 claims include the concept of payment for
`
`and controlling access to data. Pet. 44. Specifically, Petitioner identifies
`
`claims 1–4 as reciting the concept in the context of “code to” receive
`
`payment validation and control access to content. Id. at 44–45 (citing Ex.
`
`1001 cls. 1–4). With respect to remaining claims 5–28, Petitioner argues
`
`that they “are drawn to the concepts of payment and controlling access,
`
`reciting steps or ‘code to’ (e.g. id. cls. 5–28), receive payment validation,
`
`transmit or write content, and/or transmit access rules specifying conditions
`
`for access.” Id. at 45 (citing Ex. 1001, cls. 1, 5, 10, 14, 18–21, 24–25).
`
`We agree with Petitioner. The ’516 patent discusses addressing
`
`recording industry concerns of data pirates offering unauthorized access to
`
`widely available compressed audio recordings. Ex. 1001, 1:33–58. The
`
`’516 patent proposes to solve this problem by restricting access to data on a
`
`portable data carrier based upon payment validation. Id. at 1:62–2:7. The
`
`’516 patent makes clear that the heart of the claimed subject matter is
`
`restricting access to stored data based on supplier-defined access rules and
`
`validation of payment. Id. at 2:8–19.
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`Petitioner contends that several of our recent decisions regarding
`
`patents related to the ’516 patent support its assertion that the claims of the
`
`’516 patent are directed to an abstract idea. Pet. 45. While our decisions in
`
`other cases are not controlling here, neither can we turn a blind eye to the
`
`similarities between the issues under review. For example, we determined in
`
`CBM2015-00031 that the challenged claims of US Patent 8,336,772 (“’772
`
`patent”) were directed to an abstract idea. Apple Inc. v. Smartflash LLC,
`
`Case CBM2015-00031, slip. op. at 13 (PTAB May 28, 2015) (Paper 11).
`
`The ’516 patent is a continuation of the ’772 patent (Ex. 1001 (63)) and,
`
`save an additional wherein clause in claim 1 of the ’516 patent, claim 1 is all
`
`but identical to claim 1 (CBM2015-00031, Paper 11 at 5–6) of the ’772
`
`patent.
`
`We are persuaded, on this record, that the challenged claims are
`
`directed to an abstract idea. See Alice, 134 S. Ct. at 2356 (holding that the
`
`concept of intermediated settlement at issue in Alice was an abstract idea);
`
`Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
`
`1344 (Fed. Cir. 2013) (holding the abstract idea at the heart of a system
`
`claim to be “generating tasks [based on] rules . . . to be completed upon the
`
`occurrence of an event” (citation omitted)).
`
`2. Inventive Concept
`
`Turning to the second step of the analysis, we consider the elements
`
`of the claims “individually and ‘as an ordered combination’” to determine
`
`whether there are additional elements that “‘transform the nature of the
`
`claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at
`
`1297–98). In other words, the second step is to “search for an ‘inventive
`
`concept’—i.e., an element or combination of elements that is ‘sufficient to
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`ensure that the patent in practice amounts to significantly more than a patent
`
`on the [ineligible concept] itself.’” Id. (quoting Mayo, 132 S. Ct. at 1294).
`
`We look for additional elements that can “transform the nature of the claim”
`
`into a patent-eligible application of an abstract idea. Mayo, 132 S. Ct. at
`
`1297. On this record, we are not persuaded that the challenged claims of the
`
`’516 patent add an inventive concept sufficient to ensure that the patent in
`
`practice amounts to significantly more than a patent on the abstract idea
`
`itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d
`
`at 1345 (holding claims directed to the abstract idea of “generating tasks
`
`[based on] rules . . . to be completed upon the occurrence of an event” to be
`
`unpatentable even when applied in a computer environment and within the
`
`insurance industry).
`
`Petitioner contends that the challenged claims do not recite an
`
`“inventive concept” that is “significantly more” than the abstract idea
`
`identified above. Pet. 51 (citing Alice, 134 S. Ct. at 2355). Further,
`
`Petitioner argues the challenged claims add only “well-understood, routine,
`
`conventional activity,” and are unpatentable. Id. (citing Mayo Collaborative
`
`Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 1294 (2012).
`
`Petitioner also argues that limiting the abstract idea, as the claims here
`
`purport to do, to a field of use, e.g., “multimedia content/data,” does not
`
`make the claims patentable. Pet. 51–52 (citing Bilski v. Kappos, 130 S.Ct.
`
`3218, 3230–31 (2010); Parker v. Flook, 98 S.Ct. 2522, 2528–29 (1978)).
`
`Petitioner further asserts that the claim recitations of “code to,” followed by
`
`a function, e. g., “requesting identifier data,” is likewise insufficient to do
`
`any more than have the functions implemented in software. Id. at 54.
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`14
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`CBM2015-00121
`Patent 8,794,516 B2
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`Petitioner argues all of the claims include limitations directed to
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`“generic computer hardware,” which is insufficient to make the claim
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`significantly more than a claim to an abstract idea. Pet. 57–61. With respect
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`to claims 1–4, Petitioner identifies the recitations of “handheld multimedia
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`terminal, including an interface, non-volatile memory, program store,
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`processor, display, and payment validation system are well-understood,
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`conventional, and generic components being used for their well-known,
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`conventional, and routine purpose.” Id. at 58 (citations omitted). Petitioner
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`identifies similar recitations in claims 5– 28, citing evidentiary support for
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`each. Id. at 59–60.
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`Patent Owner asserts that claims 1–28 are directed to statutory subject
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`matter under Mayo and Alice, principally relying on the Federal Circuit’s
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`decision in DDR Holdings. Prelim. Resp. 6–21. In DDR Holdings, the
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`Federal Circuit found the claims under consideration were directed to
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`statutory subject matter because the “claimed []solution [is] ‘necessarily
`
`rooted in computer technology in order to overcome a problem specifically
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`arising in the realm of computer networks.’” See Prelim. Resp. 1 (quoting
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`DDR Holdings, 773 F.3d at 1257). According to Patent Owner, the claims at
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`issue here meet the standard articulated in DDR Holdings. Prelim. Resp. 7–
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`8. More specifically, Patent Owner contends the claims here “are directed to
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`particular devices and methods that can download and store digital content,
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`and such devices and methods can utilize use rules and/or use status data
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`stored to control access to the downloaded and stored digital content.” Id. at
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`8.
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`We are not persuaded that claims here are like the claims at issue in
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`DDR Holdings. In DDR Holdings, the Federal Circuit found that the
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`15
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`CBM2015-00121
`Patent 8,794,516 B2
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`challenged claims were directed to patentable subject matter because they
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`“specif[ied] how interactions with the Internet are manipulated to yield a
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`desired result—a result that overrides the routine and conventional” aspects
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`of the technology. DDR Holdings, 773 F.3d at 1258. We are not persuaded
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`that the challenged claims specify interactions that depart from the routine
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`use of the recited devices. Instead, we determine, based on the current
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`record, that the claims merely apply conventional computer processes to
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`restrict access to data based on payment.
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`The differences between the challenged claims and those at issue in
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`DDR Holdings are made clear by Patent Owner in its tables mapping the
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`challenged claims of the ’516 patent to claim 19 of the patent at issue in
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`DDR Holdings. Prelim. Resp. 10–20. For example, claim 1 of the ’516
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`patent recites “code to control access to said at least one selected item of
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`multimedia content on said terminal responsive to said payment validation
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`data.” There is no language in this, or any other, limitation of claim 1, any
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`of the other challenged claims, or the specification of the ’516 patent, that
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`demonstrates that these generic computer components function in an
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`unconventional manner or employ sufficiently specific programming.
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`Instead, the “code to control access,” “terminal” and “payment validation
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`data” limitations, for example, like all the other limitations of the challenged
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`claims, are “specified at a high level of generality,” which the Federal
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`Circuit has found to be “insufficient to supply an inventive concept.”
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`Ultramercial, 772 F.3d at 716.
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`The limitation of claim 19 in DDR Holdings, that Patent Owner
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`contends corresponds to the “code to control access” limitation from claim 1
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`of the ’516 patent, recites “using the data retrieved, automatically generate
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`16
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`Patent 8,794,516 B2
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`and transmit to the web browser a second web page that displays:
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`(A) information associated with the commerce object associated with the
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`link that has been activated, and (B) the plurality of visually perceptible
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`elements visually corresponding to the source page.” Prelim. Resp. 13. It
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`was this limitation from claim 19 in DDR Holdings, according to the Federal
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`Circuit, that specifies “how interactions with the Internet are manipulated to
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`yield a desired result—a result that overrides the routine and conventional
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`sequence of events ordinarily triggered by the click of a hyperlink.” DDR
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`Holidngs, 773 F.3d at 1258. Importantly, the Federal Circuit identified this
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`limitation as differentiating the DDR Holdings claims from those held to be
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`unpatentable in Ultramercial, which “broadly and generically claim ‘use of
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`the Internet’ to perform an abstract business practice (with insignificant
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`added activity).” Id.
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`On this record, we are persuaded that the challenged claims are closer
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`to the claims at issue in Ultramercial than to those at issue in DDR
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`Holdings. The claims at issue in Ultramercial, like the challenged claims of
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`the ’516 patent, were also directed to a method for distributing media
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`products. Similar to conditioning and controlling access to restricting data
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`based on payment, as in the challenged claims, the Ultramercial claims
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`condition and control restricted access based on viewing an
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`advertisement. Ultramercial, 772 F.3d at 712.
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`Patent Owner does not raise any additional issue for our consideration
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`in its arguments directed to claims 5 and 21. Prelim. Resp. 15–21. Rather,
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`Patent Owner recreates the table of comparison to DDR Holdings’ claim 19
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`and concludes the claims are directed to “an invention that is not merely the
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`routine or conventional use of the Internet.” See, e.g., Prelim. Resp. 17
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`17
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`(citing DDR Holdings, 773 F.3d at 1259). Patent Owner does not argue
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`specifically any of the remaining claims of the ’516 patent.
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`On this record, we are persuaded that Petitioner has shown that it is
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`more likely than not that claims 1–28 of the ’516 patent do not add an
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`inventive concept sufficient to ensure that the patent in practice amounts to
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`significantly more than a patent on the abstract idea itself. Alice, 134 S.Ct.
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`at 2355; see also Accenture, 728 F.3d at 1345 (holding claims directed to the
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`abstract idea of “generating tasks [based on] rules . . . to be completed upon
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`the occurrence of an event” to be unpatentable even when applied in a
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`computer environment and within the insurance industry).
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`3. Preemption
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`Patent Owner also argues that the challenged claims do not result in
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`inappropriate preemption (Prelim. Resp. 21–25), based in part on the
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`allegation that there are “a large number of non-infringing alternatives.”
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`Prelim. Resp. 25–31. The Federal Circuit, however, has recently explained
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`that “questions on preemption are inherent in and resolved by the § 101
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`analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
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`(Fed. Cir. 2015). Patent Owner attempts to distinguish the present facts
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`from Ariosa. Specifically, Patent Owner argues the availability of non-
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`infringing alternatives in the present case, while contending the Ariosa
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`claims covered “the only commercially viable way of detecting that
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`phenomenon.” Prelim. Resp. 32 (citing Ariosa, 788 F.3d at 1371).
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`Patent Owner’s preemption argument does not alter our § 101
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`analysis. The Supreme Court has described the “pre-emption concern” as
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`“undergird[ing] our § 101 jurisprudence.” Alice, 134 S.Ct. at 2358. The
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`concern “is a relative one: how much future innovation is foreclosed relative
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`to the contribution of the inventor.” Mayo, 132 S.Ct. at 1303. “While
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`preemption may signal patent ineligible subject matter, the absence of
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`complete preemption does not demonstrate patent eligibility.” See Ariosa
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`Diagnostics, 788 F.3d at1379. Importantly, the preemption concern is
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`addressed by the two part test considered above. After all,
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