Case CBM2015-00126
`Patent 8,118,221 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________________
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`GOOGLE INC.,
`Petitioner
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`v.
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`SMARTFLASH LLC,
`Patent Owner
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`____________________________
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`Case CBM2015-00126
`Patent 8,118,221 B2
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`____________________________
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`PETITIONER’S RESPONSE TO PATENT OWNER’S NOTICE OF
`SUPPLEMENTAL AUTHORITY
`
`
`
`
`
`
`Patent 8,118,221 B2
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`GOOGLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`
`____________________________
`
`Case CBM2015-00126
`Patent 8,118,221 B2
`
`____________________________
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S NOTICE OF
`SUPPLEMENTAL AUTHORITY
`
`
`
`
`
`
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`Case CBM2015-00126
`Patent 8,118,221 B2
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`
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`Petitioner submits this Response to Patent Owner’s Notice of Supplemental
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`Authority. Neither of the two decisions cited by Patent Owner overrule any prior
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`authority or purport to change the Alice patentability analysis. Instead, these cases
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`are fully consistent with the Board’s previous analysis of Smartflash’s patent
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`claims (including those of U.S. Patent No. 8,118,221 (“the ’221 patent”)) and
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`confirms their unpatentability.
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`Patent Owner relies on Enfish, LLC v. Microsoft Corp., No. 2015-1244,
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`2016 WL 2756255 (Fed. Cir. May 12, 2016), but that decision does not support
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`Patent Owner’s argument that the ’221 patent satisfies Alice step one. In Enfish,
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`the claims were “directed to a self-referential table for a computer database,” id. at
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`*6 (emphasis in original), that was a “data structure designed to improve the way a
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`computer stores and retrieves data in memory,” id. at *8. The self-referential table
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`“functions differently than conventional database structures.” Id. at *6. The patent
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`performed this different function using an algorithm. Id. at *1, *5. The self-
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`referential database also offered technological improvements, including “smaller
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`memory requirements.” Id. at *6. The claims were specifically not focused “on
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`economic or other tasks for which a computer is used in its ordinary capacity.” Id.
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`at *5.
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`The ’221 patent, by contrast, is focused “on economic or other tasks for
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`which a computer is used in its ordinary capacity.” Id. at *5. Specifically, the
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`01980-00035/8147776.3
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`Case CBM2015-00126
`Patent 8,118,221 B2
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`claims are directed to the economic idea of conditioning and controlling access to
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`content based on payment. The claims do not contain anything analogous to the
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`“innovative logical model” or “self-referential table” that “functions differently
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`than conventional database structures” in Enfish. Nor do they offer any
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`“technological improvements” like the “smaller memory requirements” that the
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`Enfish invention offered. Patent Owner instead points to “generalized steps to be
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`performed on a computer using conventional computer activity,” id. at *7, such as
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`“storing content data,” “receiv[ing] a user selection,” “transmit[ting] payment
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`data” using “non-volatile memory” and a “handheld multimedia terminal” (Notice
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`at 2). The claims do not purport to improve how these generic computer
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`components operate, and the claims are therefore similar to those found
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`unpatentable in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), as
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`the Board previously found in related proceedings. See CBM2015-00032, Pap. 46
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`at 21; CBM2015-00033, Pap. 40 at 20-21.
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`Notably, the Federal Circuit distinguished Enfish in TLI Communications
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`LLC v. AV Automotive, L.L.C., No. 2015-1372, 2016 WL 2865693 (Fed. Cir. May
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`17, 2016), which, like the ’221 patent, involved claims that were “directed to the
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`use of conventional or generic technology.” Id. at *3. The ’221 patent implements
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`on computers the fundamental economic concept of controlling access based on
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`payment. As in TLI, the “recited physical components” of the ’221 patent “merely
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`01980-00035/8147776.3
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`Case CBM2015-00126
`Patent 8,118,221 B2
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`provide a generic environment in which to carry out [an] abstract idea.” See id. at
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`*3. The hardware components “behave exactly as expected according to their
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`ordinary use” and are “merely . . . conduit[s] for the abstract idea.” Id. at *4. And
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`like the claims in TLI, the ’221 patent calls for performing “generic computer
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`functions such as storing, receiving, and extracting data” using conventional
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`hardware. Id. The ’221 patent does not satisfy Alice step one.
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`Patent Owner next relies on Bascom Global Internet Services, Inc. v. AT&T
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`Mobility, LLC, --F.3d--, 2016 WL 3514158 (Fed. Cir. June 27, 2016), which it
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`contends demonstrates that the ’221 patent contains an inventive concept. The
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`patent in Bascom was directed to a technological improvement in Internet filtering.
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`In particular, the Bascom patent improved internet filtering by “taking advantage
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`of the technical capability of certain communication networks,” including the
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`TCP/IP protocol. Id. at *2. The patent thereby “improved the performance of the
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`computer system itself.” Id. at *7.
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`The ’221 patent does not take advantage of a “technical capability” unique
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`to the Internet or any other communication network. Patent Holder identifies
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`nothing comparable to the technical improvement in internet filtering technology at
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`issue in Bascom. The claims of the ’221 patent are not even limited to the Internet.
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`Instead, Patent Holder contends that the “technical improvement” the patent offers
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`is “configuring a handheld multimedia terminal to store both payment data and
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`01980-00035/8147776.3
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`Case CBM2015-00126
`Patent 8,118,221 B2
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`multimedia data” (Notice at 5 (emphasis in original).) But the storage of different
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`types of data is the routine and conventional operation of a data carrier. Storing
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`two types of data on the same carrier is not inventive, as the Board has previously
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`found in related proceedings. CBM2014-00190, Pap. 47 at 19 (“The concept of
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`storing two different types of information in the same place or on the same device
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`is an age old practice.”). Similar to Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
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`715-16 (Fed. Cir. 2014), this is simply “the abstract concept of offering media
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`content in exchange for” payment. Bascom provides no reason to reach a different
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`result.
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`Nor is Patent Holder correct when it argues that storing two types of data on
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`a data carrier improves “an existing technological process.” (Notice at 5.) Unlike
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`the patent in Bascom, the ’221 patent is not directed to a “technological process”
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`such as internet filtering or even improving data storage technology. Instead, the
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`’221 patent is directed to the sale of data, which is a commercial, not technological,
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`process. And the “data” that is supplied is not even stored in unique way—it is
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`simply stored in, e.g., a data carrier, which is a generic medium for storing
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`information. Nothing about the function of the computer or networking or
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`“existing technology” is altered or improved by the ’221 patent.
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`Patent Owner’s argument that the ’221 patent satisfies Alice step two
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`because the patent does not “‘preempt all ways’ of paying for and controlling
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`01980-00035/8147776.3
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`Case CBM2015-00126
`Patent 8,118,221 B2
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`access to digital content” is misplaced. Bascom specifically affirms prior holdings
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`that adding “‘conventional’ steps for performing the abstract idea,” though those
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`steps may narrow the scope of the claim and avoid total preemption, “did not make
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`those claims any less abstract.” 2016 WL 3514158, at *8. The claims of the ’221
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`patent add only “conventional” functions and components to the abstract idea,
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`which even under Bascom is not sufficient. Further, even under Bascom, “the
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`absence of complete preemption does not demonstrate patent eligibility.” Ariosa
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`Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also
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`OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015)
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`(“[T]hat the claims do not preempt all price optimization or may be limited to price
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`optimization in the e-commerce setting do not make them any less abstract.”). The
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`’221 patent does not satisfy Alice step two.
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`Dated: July 14, 2016
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`Respectfully submitted,
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`/Andrew M. Holmes/
`
`Andrew M. Holmes (Reg. No. 64,718)
`Charles K. Verhoeven
`Melissa J. Baily
`Kevin A. Smith
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Telephone: 415-875-6000
`Fax: 415-875-6700
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`01980-00035/8147776.3
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`Case CBM2015-00126
`Patent 8,118,221 B2
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`Raymond N. Nimrod (Reg. No. 31,987)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Telephone: 202-849-7100
`Fax: 212-849-7100
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`Counsel for Petitioner Google Inc.
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`01980-00035/8147776.3
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`Case CBM2015-00126
`Patent 8,118,221 B2
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`CERTIFICATE OF SERVICE
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`I hereby certify that on July 14, 2016 I served the foregoing by email to:
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`SmartFlash-CBM@dbjg.com
`Michael R. Casey (mcasey@dbjg.com)
`J. Scott Davidson (jsd@dbjg.com)
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`Date: July 14, 2016
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`
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`/Andrew Holmes/
`Andrew Holmes
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`01980-00035/8147776.3
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