UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00123
`
`Patent 8,033,458
`
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00123
`
`Patent 8,033,458
`
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`
`PATENT OWNER’S LIST OF EXHIBITS ............................................................ iii
`
`I.
`
`II.
`
`III. APPLE’S REPETITIVE AND UNTIMELY § 101 and § 112
`CHALLENGES RESULT IN PIECEMEAL LITIGATION AND WILL
`NOT SECURE THE JUST, SPEEDY, AND INEXPENSIVE
`RESOLUTION OF THE BOARD’S PROCEEDINGS .................................. 6
`
`OVERVIEW OF U.S. PATENT NO. 8,033,458 ............................................ 3
`
`
`IV. THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT MATTER . 8
`A.
`The Two-Part Test for Statutory Subject Matter .................................. 8
`The Claims Are Statutory Under Mayo and Alice ................................ 9
`B.
`C.
`The Claims Do Not Result in Inappropriate Preemption .................... 29
`Preemption under DDR Holdings ............................................. 29
`1.
`Preemption under Mayo and Alice ............................................ 33
`2.
`3.
`Admitted Non-Infringing Alternatives Show a Lack of
`Preemption ................................................................................ 35
`4. The Challenged Claims are Distinguishable from the Claims in
`Ariosa Diagnostics .................................................................... 36
`
`PETITIONER HAS ALREADY LOST A CHALLENGE TO RELATED
`CLAIMS ON THE SAME STATUTORY GROUNDS IN ITS
`LITIGATION WITH PATENT OWNER BASED ON EVIDENCE THAT
`IT HAS NOT PROVIDED TO THE PTAB.................................................. 39
`
`
`
`
`
`- i -
`
`
`V.
`
`
`
`
`
`VI. CLAIMS 3-5 ARE DEFINITE ...................................................................... 41
`A.
`“The Code” is Definite ........................................................................ 41
`B.
`“The Content Data Memory” is Definite ............................................ 42
`C.
`Petitioner’s Expert is Uncrossed and Not Proven to be Reliable ........ 43
`
`
`VII. THE USPTO IS ESTOPPED FROM REVISITING THE ISSUE OF
`WHETHER THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT
`MATTER AND ARE DEFINITE ................................................................. 44
`
`
`VIII. INVALIDATING PATENT CLAIMS VIA CBM REVIEW IS
`UNCONSTITUTIONAL ............................................................................... 44
`
`
`IX. SECTION 101 IS NOT A GROUND THAT MAY BE RAISED IN
`COVERED BUSINESS METHOD PATENT REVIEW ............................. 46
`
`
`X.
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`FINANCIAL PRODUCT OR SERVICE ...................................................... 49
`
`
`XI. THE CHALLENGED CLAIMS OF THE ‘458 PATENT ARE
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW .... 53
`
`
`XII. CONCLUSION .............................................................................................. 55
`
`
`
`
`
`- ii -
`
`
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`
`
`Exhibit Number
`
`Exhibit Description
`
`2001
`
`2002
`
`Congressional Record - House, June 23, 2011, H4480-4505
`
`Congressional Record - Senate, Sep. 8, 2011, S5402-5443
`
`2003-2048
`
`Reserved
`
`2049
`
`2050
`
`Report and Recommendation (on Defendants’ Motions for
`Summary Judgment of Invalidity Pursuant to 35 U.S.C. 101),
`from Smartflash LLC et al. v. Apple, Inc., et al., Case No.
`6:13-CV-447 (E.D. Tex.) and Smartflash LLC et al. v.
`Samsung Electronics Co. Ltd, et al., Case No. 6:13-CV-448
`(E.D. Tex.), dated Jan. 21, 2015
`
`Order adopting Report and Recommendation (on
`Defendants’ Motions for Summary Judgment of Invalidity
`Pursuant to 35 U.S.C. 101), from Smartflash LLC et al. v.
`Apple, Inc., et al., Case No. 6:13-CV-447 (E.D. Tex.) and
`Smartflash LLC et al. v. Samsung Electronics Co. Ltd, et al.,
`Case No. 6:13-CV-448 (E.D. Tex.), dated Feb. 13, 2015
`
`2051-2067
`
`Reserved
`
`2068
`
`Deposition Transcript of Anthony J. Wechselberger dated
`May 28, 2015 in CBM2015-00015, CBM-2015-00016,
`CBM-2015-00017, CBM-2015-00018
`
`2069-2074
`
`Reserved
`
`
`
`- iii -
`
`
`
`2075
`
`2076
`
`Order (on Defendants’ Renewed Motion for Judgment as a
`Matter of Law on the Issue of § 101 under Rule 50(b)); Dkt.
`# 585; from Smartflash LLC, et al. v. Apple Inc., et al., Case
`No. 6:13-CV-447 (E.D. Tex.) dated July 8, 2015.
`
`Deposition Transcript of Anthony J. Wechselberger dated
`July 22, 2015 taken in CBM2015-00028, -00029, -00031, -
`00032 and -00033
`
`2077-2081
`
`Reserved
`
`2082
`
`2083
`
`2084
`
`
`
`Trial Transcript from Virnetx Inc. v. Apple Inc., Case No.
`6:10-cv-417 (E.D. Tex.) dated November 2, 2012.
`
`Reserved
`
`Declaration of Emily E. Toohey in Support of Patent
`Owner’s Preliminary Response
`
`
`
`- iv -
`
`
`
`Pursuant to 37 C.F.R. § 42.107, Smartflash LLC (“Patent Owner”) files this
`
`preliminary response to the petition, setting forth reasons why no new covered
`
`business method review of U.S. Patent 8,033,458 should be instituted as requested
`
`by Apple, Inc. (“Apple” or “Petitioner”). Arguments presented herein are
`
`presented without prejudice to presenting additional arguments in a later response
`
`should the Board institute a CBM review.
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Apple seeks covered business method (CBM) review of claims 2-
`
`5, 7, 9, and 12 of U.S. Patent No. 8,033,458 (“the ‘458 patent”). Petition, Paper 2
`
`at 1.
`
`On March 31, 2014, Apple filed two earlier petitions, in CBM2014-00106
`
`and -00107, seeking CBM review of claims 1, 6, 7, 8, 10, and 11 of the ‘458 patent
`
`on §§ 102 and 103 grounds. Claim 7, at issue here, was also put at issue in the
`
`00106/00107 petitions. The PTAB granted review of claim 1 on 35 U.S.C. § 103
`
`obviousness grounds but denied review of claims 6, 7, 8, 10, and 11. Apple Inc. v.
`
`Smartflash LLC, Cases CBM2014-00106 and -00107, Paper 8 at 25-26 (PTAB
`
`September 30, 2014) (hereinafter “00106/00107 Institution Decision”). On
`
`October 30, 2014, Apple filed another petition, CBM2015-00016, seeking CBM
`
`review of ‘458 patent claims 1, 6, 8, 10 and 11 as unpatentable under § 101, claims
`
`
`
`- 1 -
`
`
`
`6, 8, 10, and 11 as unpatentable under § 103, and claim 11 as unpatentable under
`
`§ 112. CBM2015-00016, Corrected Petition, Paper 9 at 1.
`
`In the instant petition, Apple’s fourth CBM petition against claims of the
`
`‘458 patent, Apple raises a 35 U.S.C. § 101 unpatentable subject matter challenge
`
`to claims 2-5, 7, 9, and 12 and a 35 U.S.C. § 112 indefiniteness / lack of antecedent
`
`basis challenge to claims 3-5. Petition at 1, 36.
`
`As the Board has already correctly noted in CBM2015-00016, “[t]he 2015
`
`set of petitions assert … challenges pursuant to 35 U.S.C. § 101, which raise
`
`purely legal issues.” CBM2015-00016, Paper 6 at 2. Challenges under 35 U.S.C.
`
`§ 112 similarly raise purely legal issues. The Board should decline to institute
`
`review of claims 2-5, 7, 9, and 12 on Apple’s § 101 unpatentable subject matter
`
`grounds and claims 3-5 on Apple’s § 112 indefiniteness / lack of antecedent basis
`
`grounds because Apple’s purely legal challenges are repetitive and untimely and
`
`thus do not “secure the just, speedy, and inexpensive resolution” of the Board’s
`
`proceedings reviewing the ‘458 patent claims. 37 C.F.R. § 42.1(b).
`
`On July 8, 2015 the District Court “decline[d] to revise or revisit its Rule 56
`
`Order” on post-trial motion, finding that “[t]he § 101 issue has already received
`
`full and fair treatment.” See Exhibit 2075, Order (on Defendants’ Renewed
`
`Motion for Judgment as a Matter of Law on the Issue of § 101 under Rule 50(b));
`
`
`
`- 2 -
`
`
`
`Dkt. # 585; Smartflash LLC, et al. v. Apple Inc., et al., Case No. 6:13-CV-447
`
`(E.D. Tex. July 8, 2015) (emphasis added).
`
`Patent Owner submits that the USPTO has already adjudicated the threshold
`
`question of whether the challenged claims comport with 35 U.S.C. § 101 and 35
`
`U.S.C. § 112 ¶ 1 during the prosecution of the ‘458 patent. The USPTO is
`
`estopped from re-litigating these purely legal issues already considered and
`
`adjudicated by the USPTO.
`
`Patent Owner further submits that the CBM review process is an
`
`unconstitutional violation of Separation of Powers principles.
`
`Finally, Patent Owner submits that § 101 is not a ground on which CBM
`
`review may be instituted.
`
`
`
`II. OVERVIEW OF U.S. PATENT NO. 8,033,458
`
`Although the claims define the actual scope of coverage of the patent, as
`
`described in the first paragraph of the BACKGROUND OF THE INVENTION,
`
`the patent-at-issue, U.S. Patent No. 8,033,458 (hereinafter “the ‘458 patent”)
`
`generally describes “data storage and access systems ... [and] is particularly useful
`
`for managing stored audio and video data, but may also be applied to storage and
`
`access of text and software, including games, as well as other types of data.” Col.
`
`1, lines 23-31.
`
`
`
`- 3 -
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`
`
`Preferred embodiments described in the paragraph crossing cols. 15 and 16
`
`illustrate this further: “FIG. 7 ... shows a variety of content access terminals for
`
`accessing data supply computer system 120 over internet 142. The terminals are
`
`provided with an interface to a portable data carrier or ‘smart Flash card’ (SFC) as
`
`generally described with reference to FIG. 2 and as described in more detail below.
`
`In most embodiments of the terminal the SFC interface allows the smart Flash card
`
`data carrier to be inserted into and removed from the terminal, but in some
`
`embodiments the data carrier may be integral with the terminal.” Exemplary
`
`terminals include, but are not limited to, set-top boxes 154, CD/DVD Players 170
`
`and mobile communications devices 152. Col. 16, lines 7-26.
`
`Referring to preferred embodiments, the ‘458 patent discloses that a data
`
`supply system may provide users with a seamless purchase and content delivery
`
`experience. Col. 24, lines 5-10. Users are able to purchase content from a variety
`
`of different content providers even if they do not know where the content providers
`
`are located or how the content is delivered. See id. The exemplary system is
`
`operated by a “content data supply ‘system owner,’” who may act as an
`
`intermediary between a user seeking to purchase content and content providers,
`
`such as record labels, movie studios, and software providers. See col. 14, lines 1-8.
`
`When a user accesses the system, he or she is able to select content to purchase or
`
`rent from a variety of different content providers. See col. 5, lines 1-12. If the user
`
`
`
`- 4 -
`
`
`
`finds a content item to buy, his or her device will transmit stored “payment data” to
`
`a “payment validation system” to validate the payment data. See col. 8, lines 7-11.
`
`The payment validation system returns proof that the payment data has been
`
`validated, in the form of “payment validation data,” and the user is able to retrieve
`
`the purchased content from the content provider. See col. 8, lines 11-14.
`
`
`
`Col. 24, lines 25-27, discloses that “FIG. 13 ... shows a flow chart for user
`
`access of stored data on a smart Flash card using a data access device such as the
`
`MP3 player of FIG. 1.” Col. 9, lines 26-28, discloses “The data access device uses
`
`the use status data and use rules to determine what access is permitted to data
`
`stored on the data carrier.” Col. 5, lines 4-12, discloses “The carrier may ... store
`
`content use rules pertaining to allowed use of stored data items. These use rules
`
`may be linked to payments made from the card to provide payment options such as
`
`access to buy content data outright; rental access to content data for a time period
`
`or for a specified number of access events; and/or rental/purchase, for example
`
`where rental use is provided together with an option to purchase content data at the
`
`reduced price after rental access has expired.” Further, as described in col. 9, lines
`
`39-41, “use status data [is retrieved] from the data carrier [to] indicat[e] past use of
`
`the stored data.” Thus, as described in col. 5, lines 33-37, “[b]y combining digital
`
`rights management with content data storage using a single carrier, the stored
`
`
`
`- 5 -
`
`
`
`content data becomes mobile and can be accessed anywhere while retaining control
`
`over the stored data for the data content provider or data copyright owner.”
`
`By using a system that combines on the data carrier both the digital content
`
`and the use rules/use status data, access control to the digital content can be
`
`continuously enforced prior to access to the digital content. By comparison, unlike
`
`a system that uses use rules/use status data as claimed, when a DVD was
`
`physically rented for a rental period, the renter could continue to play the DVD,
`
`even if the renter kept the DVD past the rental period because the use rules were
`
`not associated with the DVD. Similarly, there was no way to track a use of the
`
`DVD such that a system could limit its playback to specific number of times (e.g.,
`
`three times) or determine that the DVD had only been partially used.
`
`
`
`III. APPLE’S REPETITIVE AND UNTIMELY § 101 and § 112
`CHALLENGES RESULT IN PIECEMEAL LITIGATION AND WILL
`NOT SECURE THE JUST, SPEEDY, AND INEXPENSIVE
`RESOLUTION OF THE BOARD’S PROCEEDINGS
`Petitioner Apple seeks covered business method review of claims 2-5, 7, 9,
`
`and 12 of the ‘458 patent as being directed to ineligible subject matter under 35
`
`U.S.C. § 101 and claims 3-5 as being indefinite under 35 U.S.C. § 112. This is
`
`
`
`- 6 -
`
`
`
`Apple’s fourth1 covered business review petition filed against the ‘458 patent.
`
`Apple filed CBM2014-00106 on March 31, 2014, CBM2014-00107 on March 31,
`
`2014, and CBM2015-00016 on October 30, 2014. CBM2015-00016 also raises
`
`challenges to the ‘458 patent under § 101 and § 112. The Board should exercise
`
`its discretion under 35 U.S.C. § 325(d) and deny the petition here because it raises
`
`substantially the same § 101 and § 112 arguments previously presented to the
`
`Board, is repetitive, untimely, and results in expensive and inefficient piecemeal
`
`proceedings. Instituting covered business method review here will not secure the
`
`just, speedy, and inexpensive resolution of Apple’s challenges to the ‘458 patent.
`
`“[T]he Board is charged with securing the just, speedy, and inexpensive
`
`resolution of every proceeding.” EMC Corporation, et al. v. Personal Web
`
`Technologies, LLC, Case IPR2013-00082, Paper 33 at 4 (PTAB June 5,
`
`2013)(Decision, Denying Request for Rehearing)(citing 37 C.F.R. § 42.1(b)).
`
`“Rules for inter partes review proceedings were promulgated to take into account
`
`the ‘regulation on the economy, the integrity of the patent system, the efficient
`
`administration of the Office, and the ability of the Office to timely complete
`
`proceedings.’” Id. at 2 (citing 35 U.S.C. § 316(b)).
`
`
`1 Apple subsequently filed another Petition against claims of the ‘458 Patent;
`
`CBM2015-00119 on April 30, 2015.
`
`
`
`- 7 -
`
`
`
`Apple’s § 101 unpatentable subject matter ground asserted here constitutes
`
`Apple’s second § 101 subject matter attack against the ‘458 patent. CBM2015-
`
`00016 also challenges the ‘458 patent under § 101. As the Board acknowledged in
`
`CBM2015-00016, “challenges pursuant to 35 U.S.C. § 101 … raise purely legal
`
`issues.” CBM2015-00016, Paper 6 at 2. Apple provides no valid reason why it
`
`did not raise this purely legal issue as grounds for review of claims 2-5, 7, 9, and
`
`12 when it filed CBM2015-00016 on October 30, 2014.
`
`Similarly, Apple’s § 112 indefiniteness challenge asserted here constitutes
`
`Apple’s second indefiniteness attack against the ‘458 patent. CBM2015-00016
`
`also challenges the ‘458 patent under § 112. This is a claim construction issue, and
`
`thus a purely legal issue. Markman v. Westview Instruments, 517 U.S. 370, 372
`
`(U.S. 1996)(construction of patent claim exclusively within the province of the
`
`court). Apple provides no explanation for why this purely legal issue, based solely
`
`on claim language that was available to Apple when it filed CBM2015-00016, was
`
`not raised in that prior petition.
`
`
`
`IV. THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT MATTER
`
`A.
`
`The Two-Part Test for Statutory Subject Matter
`
`The Supreme Court articulated a two-part test for patentability in Mayo
`
`Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012),
`
`
`
`- 8 -
`
`
`
`which has been followed by Alice Corp. Pty. v. CLS Bank Int'l, 134 S. Ct. 2347
`
`(2014). The first step in the analysis is to determine whether the claims at issue are
`
`directed to patent-ineligible concepts. If the claims at issue are directed to a
`
`patent-ineligible concept, the second step of the analysis is to determine whether
`
`the limitations of the claims, individually and as ordered combinations, contain an
`
`inventive concept that transforms the nature of the claims into patent-eligible
`
`subject matter. Mayo, 132 S. Ct. at 1294.
`
`B.
`
`The Claims Are Statutory Under Mayo and Alice
`
`
`
`Post Mayo and Alice, the Federal Circuit has provided guidance on how to
`
`distinguish statutory claims, like those of the ‘458 patent, from non-statutory
`
`claims. In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
`
`2014), the Federal Circuit analyzed claims, such as the ones at issue here, that have
`
`technological solutions to technological problems created by the nature of digital
`
`content and the Internet. In DDR Holdings the system of exemplary claim 19
`
`included (a) a computer store containing the data needed to support operation of
`
`the system and (b) a computer server (or processor) that was coupled to the
`
`computer store, where the claimed system was programmed to (by having code
`
`configured to) perform the solution to a network-specific problem. The computer
`
`server was “programmed to” perform four steps. The first two steps are “(i)
`
`receive from the web browser of a computer user a signal indicating activation of
`
`
`
`- 9 -
`
`
`
`one of the links displayed by one of the first web pages; [and] (ii) automatically
`
`identify as the source page the one of the first web pages on which the link has
`
`been activated.” The third and fourth steps were “(iii) in response to identification
`
`of the source page, automatically retrieve the stored data corresponding to the
`
`source page; and (iv) using the data retrieved, automatically generate and transmit
`
`to the web browser a second web page that displays: (A) information associated
`
`with the commerce object associated with the link that has been activated, and (B)
`
`the plurality of visually perceptible elements visually corresponding to the source
`
`page.” The Court found the claims to be statutory because “the claimed solution is
`
`necessarily rooted in computer technology in order to overcome a problem
`
`specifically arising in the realm of computer networks.” Id. at 1257.
`
`Such is the case here, too. Here, the claims are directed to particular
`
`portable data carriers including non-volatile payment memories and data access
`
`devices including use status data, use rules and/or code to evaluate the use status
`
`data using the use rules data to determine whether access is permitted to the stored
`
`data. Like in DDR Holdings, this is not a problem that arises in a “brick and
`
`mortar” context as brick and mortar stores do not include portable data carriers
`
`with non-volatile payment memories and data access devices including use status
`
`data, use rules and/or code to evaluate the use status data using the use rules data to
`
`determine whether access is permitted to the stored data. The devices and methods
`
`
`
`- 10 -
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`
`
`provide additional advantages over “brick and mortar” facilities. For example, by
`
`using portable data carriers with non-volatile payment memories, the data carriers
`
`can be used to acquire additional content. Similarly, by using data access devices
`
`that use use rules/use status data, access control to the digital content can be
`
`continuously enforced prior to access to the digital content.
`
`By comparison, unlike a system that uses use rules/use status data as
`
`claimed, when a DVD was physically rented for a rental period, the renter could
`
`continue to play the DVD, even if the renter kept the DVD past the rental period
`
`because the use rules were not associated with the DVD. Similarly, there was no
`
`way to track a use of the DVD such that a system could limit its playback to
`
`specific number of times (e.g., three times) or determine that the DVD had only
`
`been partially used. Thus, contrary to the assertion of the Petition, the claims are
`
`not directed to a “‘brick and mortar’ context” nor are they directed to “an age-old
`
`business practice that is performed even prior to and outside the context of the
`
`Internet.” Petition at 48. Thus, the claims are rooted in computer technology in
`
`order to overcome a problem specifically arising in the realm of computer
`
`networks – that of digital data piracy, and, like in DDR Holdings, “address … a
`
`challenge particular to the Internet.” Id. at 1257. The Report and
`
`Recommendation in the District Court litigation also acknowledged this distinction
`
`with respect to other claims in patents in the same patent family, finding:
`
`
`
`- 11 -
`
`
`
`As in DDR Holdings, the [claims in related] patents ... do not simply
`
`apply a known business practice from the pre-Internet world to
`
`computers or the Internet. “The claimed solution is necessarily rooted
`
`in computer technology in order to overcome a problem specifically
`
`arising in the realm of computer networks.” ... Digital Rights
`
`Management is a technology that was developed after widespread use
`
`of the Internet. Entry into the Internet Era presented new and unique
`
`problems for digital content providers in combatting unauthorized use
`
`and reproduction of protected media content.
`
`Report and Recommendation at 19, lines 7-12 (quoting DDR Holdings, 773 F.3d at
`
`1257) (internal citation omitted).
`
`
`
`1.
`
`Claim 5
`
`Claim 5 recites a system that parallels the structure found to be statutory in
`
`DDR Holdings as set forth in greater detail in the chart below. As in DDR
`
`Holdings, plural data sources are combined to provide a synthesized output that is
`
`unique to the computer problem being addressed.
`
`Claim element from DDR Holding
`
`Similar claim element from claim 5
`
`19. A system useful in an outsource
`
`“5. A portable data carrier, comprising:”
`
`provider serving web pages offering
`
`
`
`- 12 -
`
`
`
`Claim element from DDR Holding
`
`Similar claim element from claim 5
`
`commercial opportunities, the system
`
`comprising:
`
`(a) a computer store containing data, for
`
`“an interface for reading and writing
`
`each of a plurality of first web pages,
`
`data from and to the carrier;
`
`defining a plurality of visually
`
`non-volatile payment data memory,
`
`perceptible elements, which visually
`
`coupled to the interface, for providing
`
`perceptible elements correspond to the
`
`payment data to an external device;
`
`plurality of first web pages; (i) wherein
`
`a program store storing code
`
`each of the first web pages belongs to
`
`implementable by a processor;”
`
`one of a plurality of web page owners;
`
`(ii) wherein each of the first web pages
`
`displays at least one active link
`
`associated with a commerce object
`
`associated with a buying opportunity of
`
`a selected one of a plurality of
`
`merchants; and (iii) …
`
`(b) a computer server at the outsource
`
`“a processor, coupled to the content data
`
`provider, which computer server is
`
`memory, the payment data memory, the
`
`coupled to the computer store and
`
`interface and to the program store for
`
`
`
`- 13 -
`
`
`
`Claim element from DDR Holding
`
`Similar claim element from claim 5
`
`programmed to:
`
`implementing code in the program
`
`store”
`
`(i) receive from the web browser of a
`
`“code to output payment data from the
`
`computer user a signal indicating
`
`payment data memory to the interface”
`
`activation of one of the links displayed
`
`by one of the first web pages;
`
`(ii) automatically identify as the source
`
`“code to provide external access to the
`
`page the one of the first web pages on
`
`data memory”
`
`which the link has been activated;
`
`(iii) in response to identification of the
`
`“synthesis code to receive a first portion
`
`source page, automatically retrieve the
`
`of data from the interface...”
`
`stored data corresponding to the source
`
`page; and
`
`(iv) using the data retrieved,
`
`“synthesis code ... to combine the first
`
`automatically generate and transmit to
`
`portion with a second portion of data
`
`the web browser a second web page that
`
`stored in the data memory and to store
`
`displays: (A) information associated
`
`the result in the data memory”
`
`with the commerce object associated
`
`with the link that has been activated, and
`
`
`
`- 14 -
`
`
`
`Claim element from DDR Holding
`
`Similar claim element from claim 5
`
`(B) the plurality of visually perceptible
`
`elements visually corresponding to the
`
`source page.
`
`
`
`Thus, like in DDR Holdings, when “the limitations of the … claims are
`
`taken as [a] … combination, the claims recite[] an invention that is not merely the
`
`routine or conventional use of the Internet.” DDR Holdings, 773 F.3d at 1259.
`
`Such a finding was further echoed by the Report and Recommendation when it
`
`held with respect to related claims that the related claims “recite specific ways of
`
`using distinct memories, data types, and use rules that amount to significantly more
`
`than the underlying abstract idea. Although in some claims the language is
`
`functional and somewhat generic, the claims contain significant limitations on the
`
`scope of the inventions.” Report and Recommendation at 19, lines 1-4. Thus,
`
`claim 5 is statutory under at least the second step of the Mayo and Alice
`
`framework.
`
`2.
`
`Claim 4
`
`Like claim 5, claim 4 recites a system that parallels the structure found to be
`
`statutory in DDR Holdings as set forth in greater detail in the chart below. The
`
`
`
`- 15 -
`
`
`
`portable data carrier of claim 4 combines supplemental data with stored data to
`
`provide a combined output that is unique to the computer problem being addressed.
`
`
`
`Claim element from DDR Holding
`
`Similar claim element from claim 4
`
`19. A system useful in an outsource
`
`“4. A portable data carrier, comprising:”
`
`provider serving web pages offering
`
`commercial opportunities, the system
`
`comprising:
`
`(a) a computer store containing data, for
`
`“an interface for reading and writing
`
`each of a plurality of first web pages,
`
`data from and to the carrier;
`
`defining a plurality of visually
`
`non-volatile payment data memory,
`
`perceptible elements, which visually
`
`coupled to the interface, for providing
`
`perceptible elements correspond to the
`
`payment data to an external device;
`
`plurality of first web pages; (i) wherein
`
`a program store storing code
`
`each of the first web pages belongs to
`
`implementable by a processor;”
`
`one of a plurality of web page owners;
`
`(ii) wherein each of the first web pages
`
`displays at least one active link
`
`associated with a commerce object
`
`associated with a buying opportunity of
`
`
`
`- 16 -
`
`
`
`Claim element from DDR Holding
`
`Similar claim element from claim 4
`
`a selected one of a plurality of
`
`merchants; and (iii) …
`
`(b) a computer server at the outsource
`
`“a processor, coupled to the content data
`
`provider, which computer server is
`
`memory, the payment data memory, the
`
`coupled to the computer store and
`
`interface and to the program store for
`
`programmed to:
`
`implementing code in the program
`
`store”
`
`(i) receive from the web browser of a
`
`“code to output payment data from the
`
`computer user a signal indicating
`
`payment data memory to the interface”
`
`activation of one of the links displayed
`
`by one of the first web pages;
`
`(ii) automatically identify as the source
`
`“code to provide external access to the
`
`page the one of the first web pages on
`
`data memory”
`
`which the link has been activated;
`
`(iii) in response to identification of the
`
`“wherein the portable data carrier is
`
`source page, automatically retrieve the
`
`configured for storing supplementary
`
`stored data corresponding to the source
`
`data in said data memory”
`
`page; and
`
`(iv) using the data retrieved,
`
`“code to output the supplementary data
`
`
`
`- 17 -
`
`
`
`Claim element from DDR Holding
`
`Similar claim element from claim 4
`
`automatically generate and transmit to
`
`from the interface in addition to the
`
`the web browser a second web page that
`
`stored data, in response to an external
`
`displays: (A) information associated
`
`request to read the data memory”
`
`with the commerce object associated
`
`with the link that has been activated, and
`
`(B) the plurality of visually perceptible
`
`elements visually corresponding to the
`
`source page.
`
`
`
`Thus, like in DDR Holdings, when “the limitations of the … claims are
`
`taken as [a] … combination, the claims recite[] an invention that is not merely the
`
`routine or conventional use of the Internet.” DDR Holdings, 773 F.3d at 1259.
`
`Such a finding was further echoed by the Report and Recommendation when it
`
`held with respect to related claims that the related claims “recite specific ways of
`
`using distinct memories, data types, and use rules that amount to significantly more
`
`than the underlying abstract idea. Although in some claims the language is
`
`functional and somewhat generic, the claims contain significant limitations on the
`
`scope of the inventions.” Report and Recommendation at 19, lines 1-4. Thus,
`
`
`
`- 18 -
`
`
`
`claim 4 is statutory under at least the second step of the Mayo and Alice
`
`framework.
`
`3.
`
`Claim 3
`
`Like claims 4 and 5, claim 3 recites a system that parallels the structure
`
`found to be statutory in DDR Holdings as set forth in greater detail in the chart
`
`below.
`
`Claim element from DDR Holding
`
`Similar claim element from claim 3
`
`19. A system useful in an outsource
`
`“3. A portable data carrier, comprising:”
`
`provider serving web pages offering
`
`commercial opportunities, the system
`
`comprising:
`
`(a) a computer store containing data, for
`
`“an interface for reading and writing
`
`each of a plurality of first web pages,
`
`data from and to the carrier;
`
`defining a plurality of visually
`
`non-volatile payment data memory,
`
`perceptible elements, which visually
`
`coupled to the interface, for providing
`
`perceptible elements correspond to the
`
`payment data to an external device;
`
`plurality of first web pages; (i) wherein
`
`a program store storing code
`
`each of the first web pages belongs to
`
`implementable by a processor;”
`
`one of a plurality of web page owners;
`
`(ii) wherein each of the first web pages
`
`
`
`- 19 -
`
`
`
`Claim element from DDR Holding
`
`Similar claim element from claim 3
`
`displays at least one active link
`
`associated with a commerce object
`
`associated with a buying opportunity of
`
`a selected one of a plurality of
`
`merchants; and (iii) …
`
`(b) a computer server at the outsource
`
`“a processor, coupled to the content data
`
`provider, which computer server is
`
`memory, the payment data memory, the
`
`coupled to the computer store and
`
`interface and to the program store for
`
`programmed to:
`
`implementing code in the program
`
`store”
`
`(i) receive from the web browser of a
`
`“code to output payment data from the
`
`computer user a signal indicating
`
`payment data memory to the interface”
`
`activation of one of the links displayed
`
`by one of the first web pages;
`
`(ii) automatically identify as the source
`
`“code to provide external access to the
`
`page the one of the first web pages on
`
`data memory”
`
`which the link has been activated;
`
`
`
`(iii) in response to identification of the
`
`“non-volatile use rule memory, coupled
`
`source page, automatically retrieve the
`
`to the processor, for storing data use
`
`
`
`- 20 -
`
`
`
`Claim element from DDR Holding
`
`Similar claim element from claim 3
`
`stored data corresponding to the source
`
`rules, and wherein the code comprises
`
`page; and
`
`code for storing at least one data item in
`
`the data memory and at least one
`
`corresponding use rule in the use rule
`
`memory”
`
`(iv) using the data retrieved,
`
`“non-volatile use record memory,
`
`automatically generate and transmit to
`
`coupled to the processor, for storing a
`
`the web browser a second web page that
`
`record of access made to the data
`
`displays: (A) info
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