UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00124
`
`Patent 7,942,317
`
`____________
`
`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 .................................. 7
`
`OVERVIEW OF U.S. PATENT NO. 7,942,317 ............................................ 4
`
`
`IV. THE CLAIMS ARE STATUTORY ............................................................. 10
`A.
`The Two-Part Test for Statutory Subject Matter ................................ 10
`
`B.
`
`The Claims Are Statutory Under Mayo and Alice .............................. 10
`
`Preemption under DDR Holdings ............................................. 22
`1.
`Preemption under Mayo and Alice ............................................ 25
`2.
`Non-Infringing Alternatives Show a Lack of Preemption ........ 27
`3.
`4. The Challenged Claims are Distinguishable from the Claims in
`Ariosa Diagnostics .................................................................... 28
`
`
`V.
`
`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.................................................. 31
`
`
`VI. CLAIM 19 IS DEFINITE .............................................................................. 33
`A. Claim 19 .............................................................................................. 33
`
`B.
`
`Petitioner’s Expert is Uncrossed and Not Proven to be Reliable ........ 34
`
`
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`- i -
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`

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`
`
`VII.VII.
`
`
`
`THE USPTO IS ESTOPPED FROM REVISITING THE ISSUES OFTHE USPTO IS ESTOPPED FROM REVISITING THE ISSUES OF
`
`VII. THE USPTO IS ESTOPPED FROM REVISITING THE ISSUES OF
`WHETHER THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT
`MATTER AND ARE DEFINITE ................................................................. 34
`
`
`
`WHETHER THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECTWHETHER THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT
`
`
`
`MATTER AND ARE DEFINITE ............................................................... ..34MATTER AND ARE DEFINITE ............................................................... ..34
`
`
`VIII. INVALIDATING PATENT CLAIMS VIA CBM REVIEW IS
`UNCONSTITUTIONAL ............................................................................... 35
`
`
`
`VIII.VIII.
`
`
`
`INVALIDATING PATENT CLAIMS VIA CBM REVIEW ISINVALIDATING PATENT CLAIMS VIA CBM REVIEW IS
`
`
`
`UNCONSTITUTIONAL ............................................................................. . .3 5UNCONSTITUTIONAL ............................................................................. . .3 5
`
`
`IX. SECTION 101 IS NOT A GROUND THAT MAY BE RAISED IN
`COVERED BUSINESS METHOD PATENT REVIEW ............................. 37
`
`
`
`IX.IX.
`
`
`
`SECTION 101 IS NOT A GROUND THAT MAY BE RAISED INSECTION 101 IS NOT A GROUND THAT MAY BE RAISED IN
`
`
`
`COVERED BUSINESS METHOD PATENT REVIEW ........................... ..37COVERED BUSINESS METHOD PATENT REVIEW ........................... ..37
`
`
`X.
`
`
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO ATHE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`FINANCIAL PRODUCT OR SERVICE ...................................................... 39
`
`
`
`FINANCIAL PRODUCT OR SERVICE .................................................... ..39FINANCIAL PRODUCT OR SERVICE .................................................... ..39
`
`
`XI. THE CHALLENGED CLAIMS OF THE ‘317 PATENT ARE
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW .... 44
`
`
`
`XI.XI.
`
`
`
`THE CHALLENGED CLAIMS OF THE ‘317 PATENT ARETHE CHALLENGED CLAIMS OF THE ‘317 PATENT ARE
`
`
`
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW....44TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW....44
`
`
`XII. CONCLUSION .............................................................................................. 45
`
`
`
`XII.XII.
`
`
`
`CONCLUSION ............................................................................................ . .45CONCLUSION ............................................................................................ . .45
`
`
`
`- ii -
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`

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`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
`
`2051-2057
`
`Reserved
`
`2058
`
`
`
`Memorandum Opinion and Order (on Defendants’ Motions
`for Stay Pending the Outcome of CBMs) from Smartflash
`LLC, et al. v. Apple Inc., et al., Case No. 6:13-CV-447 (E.D.
`Tex.), Smartflash LLC, et al. v. Samsung Electronics Co. Ltd,
`et al., Case No. 6:13-CV-448 (E.D. Tex.), Smartflash LLC, et
`
`- iii -
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`

`
`al. v. Google, Inc., et al., Case No. 6:14-CV-435 (E.D. Tex.),
`and Smartflash LLC, et al. v. Amazon, Inc., et al., Case No.
`6:14-CV-992 (E.D. Tex.) dated May 29, 2015
`
`2059-2067
`
`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
`
`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
`
`Trial Transcript from Virnetx Inc. v. Apple Inc., Case No.
`6:10-cv-417 (E.D. Tex.) dated November 2, 2012.
`
`2083-2084
`
`Reserved
`
`2085
`
`Declaration of Emily E. Toohey in Support of Patent
`Owner’s Preliminary Response
`
`
`
`
`
`- iv -
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`

`
`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 7,942,317 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 1-
`
`17 and 19 of U.S. Patent No. 7,942,317 (“the ‘317 Patent”). Petition, Paper 2 at 1.
`
`On April 3, 2014, Apple filed two earlier petitions, in CBM2014-00112 and
`
`-00113, seeking CBM review of claims of claims 1, 6- 8, 12-14, 16, and 18 of the
`
`‘317 Patent on §§ 102 and 103 grounds. Claims 1, 6-8, 12-14, and 16, at issue
`
`here, were also put at issue in the 00112/00113 petitions. The PTAB granted
`
`review of claims 1, 6–8, 12, 13, 16, and 18 on 35 U.S.C. § 103 obviousness
`
`grounds but denied review of claim 14. Apple Inc. v. Smartflash LLC, Cases
`
`CBM2014-00112 and -00113, Paper 7 at 22-23 (PTAB September 30, 2014)
`
`(hereinafter “00112/00113 Institution Decision”). On November 3, 2014, Apple
`
`filed another petition, CBM2015-00018, seeking CBM review of ‘317 Patent claim
`
`18 as unpatentable under § 101. CBM2015-00018, Petition, Paper 1 at 1.
`
`
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`- 1 -
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`

`
`In the instant petition, Apple’s fourth CBM petition against claims of the
`
`‘317 Patent, Apple raises a 35 U.S.C. § 101 unpatentable subject matter challenge
`
`to claims 1-17 and 19 and a 35 U.S.C. § 112 indefiniteness / lack of antecedent
`
`basis challenge to claims 13 and 19. Petition at 1, 34.
`
`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 1-17 and 19 on Apple’s § 101 unpatentable subject matter
`
`grounds and claims 13 and 19 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 ‘317 Patent claims. 37 C.F.R. § 42.1(b).
`
`The challenged claims of the ‘317 patent are directed to statutory subject
`
`matter because they claim a solution “necessarily rooted in computer technology in
`
`order to overcome a problem specifically arising in the realm of computer
`
`networks.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
`
`Cir. 2014). As demonstrated below, the challenged claims do not result in
`
`inappropriate preemption nor is there any credible evidence that a disproportionate
`
`
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`- 2 -
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`amount of future innovation is foreclosed by the challenged claims of the ‘317
`
`patent.
`
`Additionally, in February 2015, Petitioner lost in Federal Court the purely
`
`legal issue of whether claim 18 is directed to statutory subject matter under 35
`
`U.S.C. § 101. See Exhibit 2049, Report and Recommendation (on Defendants’
`
`Motions for Summary Judgment of Invalidity Pursuant to 35 U.S.C. § 101)
`
`(hereinafter “Report and Recommendation”), 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, and Exhibit 2050, 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.
`
`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));
`
`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).
`
`
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`- 3 -
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`
`Patent Owner submits that the USPTO has already adjudicated the threshold
`
`question of whether the challenged claims comport with 35 U.S.C. § 101, which is
`
`a question of law, during the prosecution of the ‘317 patent. The USPTO is
`
`estopped from re-litigating this purely legal issue 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. 7,942,317
`
`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, the ‘317 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.” Ex. 1201, ‘317 Patent at 1:18-26.
`
`Preferred embodiments described in the ‘317 Patent at 15:53-62 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
`
`
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`- 4 -
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`
`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. Id. at 15:65-16:17.
`
`Referring to preferred embodiments, the ‘317 Patent discloses that a data
`
`supply system may provide users with a seamless purchase and content delivery
`
`experience. Id. at 23: 63-24:1. 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 id. at 13:60-67.
`
`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 id. at 4:63-5:3. If the user
`
`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 id. at 8:1-3. The
`
`payment validation system returns proof that the payment data has been validated,
`
`
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`- 5 -
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`
`in the form of “payment validation data,” and the user is able to retrieve the
`
`purchased content from the content provider. See id. at 8:4-6.
`
`The ’317 Patent 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.” Id. at 24:16-18. “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.” Id. at 9:17-20. “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.” Id. at 4:62-5:3. Further, “use status data [is retrieved] from
`
`the data carrier [to] indicat[e] past use of the stored data.” Id. at 9:29-32.
`
`Thus, as described in the ‘317 Patent at 5:24-28, “[b]y combining digital
`
`rights management with content data storage using a single carrier, the stored
`
`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
`
`
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`- 6 -
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`

`
`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, there was no mechanism to write partial use
`
`status data to the DVD when only part of the DVD had been accessed (e.g., to
`
`track whether a renter had “finished with” the DVD yet).
`
`
`
`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 1-17 and
`
`19 of the ‘317 Patent as being directed to ineligible subject matter under 35 U.S.C.
`
`§ 101 and claims 13 and 19 as being indefinite under 35 U.S.C. § 112. This is
`
`Apple’s fourth covered business review petition filed against the ‘317 Patent.
`
`Apple filed CBM2014-00112 on April 3, 2014, CBM2014-00113 on April 3, 2014,
`
`and CBM2015-00018 on November 3, 2014. CBM2015-00018 also raises
`
`challenges to the ‘317 Patent under § 101. 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 arguments previously presented to the Board and § 112 arguments
`
`that should have been brought earlier, is repetitive, untimely, and results in
`
`expensive and inefficient piecemeal proceedings. Instituting covered business
`
`
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`- 7 -
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`
`method review here will not secure the just, speedy, and inexpensive resolution of
`
`Apple’s challenges to the ‘317 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)).
`
`Apple’s § 101 unpatentable subject matter ground asserted here constitutes
`
`Apple’s second § 101 subject matter attack against the ‘317 Patent. CBM2015-
`
`00018 also challenges the ‘317 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 1-17 and 19
`
`when it filed CBM2015-00018 on November 3, 2014.
`
`Similarly, there is no reason why Apple could not have brought its § 112
`
`indefiniteness / lack of antecedent basis challenge asserted here when it filed its
`
`prior petitions. This is a claim construction issue, and thus a purely legal issue.
`
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`- 8 -
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`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 CBM2015-00018, was not raised in that prior
`
`petition.
`
`Apple’s multiple duplicative petitions are resulting in inefficient and
`
`expensive proceedings. In fact in the current petition, Apple relies on a declaration
`
`from a different supporting witness than in any of its prior petitions, including
`
`CBM2015-00018. Instituting review will require Smartflash to undertake
`
`discovery based on the new declaration and take the deposition of a completely
`
`new witness. Smartflash will not even enjoy any efficiencies from previously
`
`having taken the deposition of Apple’s prior § 101 declarant.
`
`Here, allowing Apple to raise grounds for review that it could have and
`
`should have raised in its November 3, 2014 CBM2015-00018 petition, if not
`
`sooner, encourages Apple’s piecemeal challenges to Patent Owner’s patent claims
`
`and runs afoul of the Board’s charge to “secure the just, speedy, and inexpensive
`
`resolution” of Apple’s covered business method challenges to the ‘317 Patent.
`
`Patent Owner respectfully requests that the Board deny review on Apple’s
`
`repetitive § 101 unpatentable subject matter grounds and § 112 indefiniteness
`
`grounds.
`
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`
`IV. THE CLAIMS ARE STATUTORY
`
`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),
`
`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 ‘317 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
`
`
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`- 10 -
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`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
`
`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. Independent claims 1, 8, 12, 16, 17 and 19 of the
`
`‘317 patent are not directed to mental processes or processes performed using pen
`
`and paper, rather those claims are directed to particular systems and methods for
`
`controlled data distribution. For example, by using systems and/or methods that
`
`combine on the data carrier both the digital content and at least one access rule
`
`
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`- 11 -
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`

`
`conditioned on the amount of payment to control access to the digital content when
`
`obtaining digital content, digital content can be obtained effectively and
`
`legitimately, including, for example, by allowing or prohibiting access to the
`
`downloaded or stored content in accordance with use rule data.
`
`Thus, independent claims 1, 8, 12, 16, 17 and 19 of the ‘317 Patent 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.” DDR
`
`Holdings, 773 F.3d at 1257. The Report and Recommendation also acknowledged
`
`this distinction, finding:
`
`As in DDR Holdings, the patents here 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).
`
`- 12 -
`
`
`
`
`
`

`
`
`
`
`
`
`
`1.
`
`Claims 1-7
`
`Independent claim 1 of the ‘317 patent meets the requisites of § 101 under
`
`DDR Holdings, as do claims 2-7 which depend from claim 1. Claim 1 recites a
`
`computer system for providing data to a data requester that parallels the structure
`
`of the statutory claim 19 in DDR Holdings. The table below sets forth a mapping
`
`of claim 1 of the ‘317 patent to claim 19 of the patent in DDR Holdings and shows
`
`that claim 1 is directed to statutory subject matter.
`
`Claim element from DDR Holdings
`
`Similar claim element from claim 1
`
`19. A system useful in an outsource
`
`1. A computer system for providing data
`
`provider serving web pages offering
`
`to a data requester, the system
`
`commercial opportunities, the system
`
`comprising:
`
`comprising:
`
`(a) a computer store containing data, for
`
`a data access data store for storing
`
`each of a plurality of first web pages,
`
`records of data items available from the
`
`defining a plurality of visually
`
`system, each record comprising a data
`
`perceptible elements, which visually
`
`item description and a pointer to a data
`
`perceptible elements correspond to the
`
`provider for the data item;
`
`plurality of first web pages; (i) wherein
`
`each of the first web pages belongs to
`
`one of a plurality of web page owners;
`
`
`
`- 13 -
`
`

`
`Claim element from DDR Holdings
`
`Similar claim element from claim 1
`
`(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
`
`provider, which computer server is
`
`communications interface, to the data
`
`coupled to the computer store and
`
`access data store, and to the program
`
`programmed to:
`
`store for implementing the stored code,
`
`the code comprising:
`
`(i) receive from the web browser of a
`
`code to receive a request for a data item
`
`computer user a signal indicating
`
`from the requester;
`
`activation of one of the links displayed
`
`
`
`by one of the first web pages;
`
`(ii) automatically identify as the source
`
`code to receive from the
`
`page the one of the first web pages on
`
`communications interface payment data
`
`which the link has been activated;
`
`comprising data relating to payment for
`
`the requested data item;
`
`- 14 -
`
`
`
`

`
`Claim element from DDR Holdings
`
`Similar claim element from claim 1
`
`
`
`(iii) in response to identification of the
`
`code responsive to the request and to the
`
`source page, automatically retrieve the
`
`received payment data, to read data for
`
`stored data corresponding to the source
`
`the requested data item from a content
`
`page; and
`
`provider;
`
`(iv) using the data retrieved,
`
`code to transmit the read data to the
`
`automatically generate and transmit to
`
`requester over the communications
`
`the web browser a second web page that
`
`interface.
`
`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.
`
`
`
`
`
`2.
`
`Claim 16
`
`
`
`Independent claim 16 of the ‘317 patent meets the requisites of § 101 under
`
`DDR Holdings. Claim 16, like claim 1, recites a computer system for providing
`
`data to a data requester that parallels the structure of the statutory claim 19 in DDR
`
`Holdings. The table below sets forth a mapping of claim 16 of the ‘317 patent to
`- 15 -
`
`
`
`

`
`claim 19 of the patent in DDR Holdings and shows that claim 16 is directed to
`
`statutory subject matter.
`
`Claim element from DDR Holdings
`
`Similar claim element from claim 16
`
`19. A system useful in an outsource
`
`16. A computer system for providing
`
`provider serving web pages offering
`
`data to a data requester, the system
`
`commercial opportunities, the system
`
`comprising:
`
`comprising:
`
`(a) a computer store containing data, for
`
`a data access data store for storing
`
`each of a plurality of first web pages,
`
`records of data items available from the
`
`defining a plurality of visually
`
`system, each record comprising a data
`
`perceptible elements, which visually
`
`item description and a resource locator
`
`perceptible elements correspond to the
`
`identifying a data provider for the data
`
`plurality of first web pages; (i) wherein
`
`item; 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
`
`
`
`- 16 -
`
`

`
`Claim element from DDR Holdings
`
`Similar claim element from claim 16
`
`merchants; and (iii) …
`
`(b) a computer server at the outsource
`
`a processor coupled to the
`
`provider, which computer server is
`
`communications interface, to the data
`
`coupled to the computer store and
`
`access data store, and to the program
`
`programmed to:
`
`store for implementing the stored code,
`
`the code comprising:
`
`(i) receive from the web browser of a
`
`code to receive a request for a data item
`
`computer user a signal indicating
`
`from the requester;
`
`activation of one of the links displayed
`
`by one of the first web pages;
`
`(ii) automatically identify as the source
`
`code to receive from the
`
`page the one of the first web pages on
`
`communications interface payment data
`
`which the link has been activated;
`
`comprising data relating to payment for
`
`the requested data item;
`
`(iii) in response to identification of the
`
`code, responsive to the request and to
`
`source page, automatically retrieve the
`
`the received payment data to output the
`
`stored data corresponding to the source
`
`item data to the requester over the
`
`page; and
`
`
`
`communication interface; wherein said
`
`data access data store further comprises
`
`- 17 -
`
`

`
`Claim element from DDR Holdings
`
`Similar claim element from claim 16
`
`payment distribution information
`
`indicating to whom payments should be
`
`made for a data item;
`
`(iv) using the data retrieved,
`
`code to output payment data for a data
`
`automatically generate and transmit to
`
`item for making payments for the item
`
`the web browser a second web page that
`
`when the item is supplied to a said
`
`displays: (A) information associated
`
`requester.
`
`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.
`
`
`
`3.
`
`Claim 17
`
`Independent claim 17 of the ‘317 patent meets the requisites of § 101 under
`
`DDR Holdings. Claim 17, like claims 1 and 16, recites a computer system for
`
`providing data to a data requester that parallels the structure of the statutory claim
`
`19 in DDR Holdings. The table below sets forth a mapping of claim 17 of the ‘317
`
`patent to claim 19 of the patent in DDR Holdings and shows that claim 17 is
`
`directed to statutory subject matter.
`
`
`
`- 18 -
`
`

`
`
`
`Claim element from DDR Holdings
`
`Similar claim element from claim 17
`
`19. A system useful in an outsource
`
`17. A computer system for providing
`
`provider serving web pages offering
`
`data to a data requester, the system
`
`commercial opportunities, the system
`
`comprising:
`
`comprising:
`
`(a) a compu