`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In re Covered Business Method Review
`of:
`
`
`U.S. Patent No. 7,942,317
`
`
`Issued: May 17, 2011
`
`Inventors: Patrick Racz and
` Hermen-ard Hulst
`
`
`Application No. 12/014,558
`
`Filed: January 15, 2008
`
`For: DATA STORAGE AND
`ACCESS SYSTEMS
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`Attorney Docket No:
`01980-00035-31701
`
`Petitioner: Google Inc.
`
`
`
`
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 7,942,317 PURSUANT TO 35 U.S.C. § 321
`AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
`
`PUBLIC REDACTED VERSION
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S.P.T.O.
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`PETITIONER HAS STANDING .................................................................... 2
`
`A.
`
`THE ’317 PATENT IS A COVERED BUSINESS METHOD
`PATENT ................................................................................................ 2
`
`1.
`
`2.
`
`The Board Has Already Found That Claim 18 Qualifies
`The ’317 Patent As A CBM Patent ............................................. 3
`
`Challenged Claim 12 Also Qualifies The ’317 Patent As
`A CBM Patent ............................................................................. 4
`
`(a) Claim 12 Covers Subject Matter That Is Financial
`In Nature ........................................................................... 5
`
`(b) Claim 12 Does Not Cover A Technological
`Invention ........................................................................... 7
`
`III. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ...................... 10
`
`A.
`
`B.
`
`C.
`
`PETITIONER IS A REAL PARTY IN INTEREST SUED FOR
`AND CHARGED WITH INFRINGEMENT ..................................... 10
`
`RELATED MATTERS UNDER 37 C.F.R. § 42.8(B)(2) .................. 10
`
`LEAD AND BACKUP COUNSEL UNDER 37 C.F.R. §
`42.8(B)(2) ............................................................................................ 11
`
`IV. PAYMENT OF FEES ................................................................................... 11
`
`V.
`
`CLAIM CONSTRUCTION .......................................................................... 11
`
`A.
`
`“DATA CARRIER” ............................................................................ 13
`
`B.
`
`C.
`
`“PAYMENT DATA” .......................................................................... 14
`
`“CONTENT SYNTHESIS CODE” .................................................... 15
`
`D.
`
`“PROGRAM STORE” ........................................................................ 16
`
`
`
`i
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`
`
`E.
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`F.
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`“ELECTRONIC PAYMENT SYSTEM” ........................................... 17
`
`“ACCESS RULE DATA” ................................................................... 18
`
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE UNDER 35
`U.S.C. § 101 ................................................................................................... 20
`
`A.
`
`THE CHALLENGED CLAIMS ARE DIRECTED TO
`PATENT-INELIGIBLE ABSTRACT IDEAS ................................... 22
`
`1.
`
`2.
`
`The Challenged Claims Are Directed To The Abstract
`Idea Of Controlling Access Based On Payment ....................... 23
`
`The Abstract Idea Of Controlling Access Based On
`Payment Is Not Patentable ........................................................ 26
`
`B.
`
`THE CHALLENGED CLAIMS DO NOT DISCLOSE AN
`“INVENTIVE CONCEPT” THAT IS “SIGNIFICANTLY
`MORE” THAN AN ABSTRACT IDEA ............................................ 27
`
`1.
`
`2.
`
`3.
`
`Field Of Use Limitations Cannot Transform An Abstract
`Idea Into A Patent Eligible Invention ....................................... 28
`
`Insignificant Pre- Or Post-Solution Activity Cannot
`Transform An Abstract Idea Into A Patent Eligible
`Invention ................................................................................... 29
`
`Tangential References To Generic Computer
`Implementation Cannot Transform An Abstract Idea Into
`A Patent Eligible Invention ....................................................... 31
`
`PREEMPTION CONCERNS CONFIRM PATENT
`INELIGIBILITY ................................................................................. 37
`
`THE MACHINE-OR-TRANSFORMATION TEST
`CONFIRMS PATENT INELIGIBILITY ........................................... 38
`
`C.
`
`D.
`
`VII. CONCLUSION .............................................................................................. 39
`
`
`
`
`
`ii
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`
`
`EXHIBIT LIST
`
`Description
`
`Exhibit No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
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`1010
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`1011
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`1012
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`1013
`
`1014
`
`1015
`
`U.S. Patent No. 7,942,317 to Racz et al. (“the ’317 patent”)
`
`Declaration of Dr. Justin Douglas Tygar Regarding the ’317
`Patent
`
`Curriculum Vitae of Dr. Justin Douglas Tygar
`
`PCT Publication No. WO 99/07121 (“Fetik”)
`
`U.S. Patent No. 5,790,423 to Lau et al. (“the ’423 patent”)
`
`SOFTBOOK PRESS—Secure Information Delivery to a
`Distributed Workforce, CIO Magazine, Aug. 1, 1999
`
`Kevin Maney, Electronic Books to Hit the Shelves, New Straits
`Times (Computimes), Aug. 24, 1998
`
`Liquid Audio, Music on the Net—A Topographic Tour of the
`Online Music World (1997)
`
`Liquid Audio Indie 1000 Program, http://www.liquidaudio.com
`(archived Feb. 11, 1998)
`
`Reserved
`
`Report and Recommendation Regarding Claim Construction,
`Smartflash LLC v. Samsung Elecs. Co., No. 6:13-cv-448, Dkt.
`274 (E.D. Tex. Sept. 24, 2014)
`
`Plaintiffs Smartflash LLC’s and Smartflash Technologies
`Limited’s Opening Claim Construction Brief, Smartflash LLC v.
`Samsung Elecs. Co., No. 6:13-cv-448, Dkt. 175 (E.D. Tex. June
`13, 2014)
`
`Reserved
`
`A.M. Turing, On Computable Numbers, with an Application to
`the Entscheidungsproblem, Proceedings of the London
`Mathematical Society, Vol. 42:2, pp. 230-265 (Nov. 12, 1936)
`
`Plaintiffs’ Original Complaint for Patent Infringement,
`Smartflash LLC v. Apple Inc., No. 6:13-cv-447, Dkt. 1 (E.D. Tex.
`May 29, 2013)
`
`iii
`
`
`
`
`
`
`
`Exhibit No.
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`
`
`Description
`
`U.S. Patent No. 7,942,317 Claim Chart—Google, Exhibit 12 to
`Plaintiffs Smartflash LLC and Smartflash Technologies
`Limited’s P.R. 3-1 and 3-2 Disclosure of Asserted Claims and
`Infringement Contentions, Smartflash LLC v. Google Inc., No.
`6:14-cv-435 (E.D. Tex. Aug. 22, 2014) (excerpted)
`
`U.S. Patent No. 8,118,221 to Racz et al. (“the ’221 patent”)
`
`U.S. Patent No. 8,336,772 to Racz et al. (“the ’772 patent”)
`
`U.S. Patent No. 8,033,458 to Hulst et al. (“the ’458 patent”)
`
`U.S. Patent No. 8,061,598 to Racz et al. (“the ’598 patent”)
`
`U.S. Patent No. 7,334,720 to Hulst et al. (“the ’720 patent”)
`
`Roger A. Cunningham et al., The Law of Property (2d ed. 1993)
`(excerpted)
`
`Michael H. Harris, History of Libraries in the Western World
`(4th ed. 1999) (excerpted)
`
`David Broderick, The First Toll Roads—Ireland’s Turnpike
`Roads 1729-1858 (2002) (excerpted)
`
`iv
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`
`
`I.
`
`INTRODUCTION
`
`
`
`Pursuant to 35 U.S.C. § 321 and 37 C.F.R. § 42.304, the undersigned, on
`
`behalf of and acting in a representative capacity for petitioner Google Inc., hereby
`
`petitions for review under the transitional program for covered business method
`
`patents of claims 7, 12, and 17 of U.S. Patent No. 7,942,317 (“challenged claims”),
`
`issued to Smartflash Technologies Limited and currently assigned to Smartflash
`
`LLC (“the patent holder”). Petitioner hereby asserts that it is more likely than not
`
`that the challenged claims are unpatentable for the reasons set forth herein and
`
`respectfully requests review of, and judgment against, claims 7, 12, and 17 as
`
`unpatentable under 35 U.S.C. § 101.
`
`The subject matter of the challenged claims is ineligible for patenting
`
`pursuant to controlling precedents from the Supreme Court and the Federal Circuit.
`
`The challenged claims are explicitly drawn to the abstract idea of controlling
`
`access based on payment. The claims recite the most basic contours of that
`
`abstract idea, such as (i) receiving payment data relating to payment for an item
`
`and (ii) providing the item only after receiving the payment data and/or validation
`
`of the payment data. The challenged claims contain no inventive, technological
`
`limitations concerning how to implement the claimed idea; at most, the claims
`
`simply convey that controlling access based on payment—which has been a staple
`
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`1
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`of commerce for more than a century—could be performed using a generic
`
`computer system.
`
`For these reasons, among others, the Board has already determined that
`
`claim 18 of the ’317 patent is “more likely than not directed to patent-ineligible
`
`subject matter” and is thus “unpatentable under 35 U.S.C. § 101.” Apple Inc. v.
`
`Smartflash LLC, CBM2015-00018, Paper 15 at 2, 9 (P.T.A.B. Apr. 10, 2015). The
`
`claims challenged here recite the same basic limitations as claim 18, such as
`
`receiving a request for data (claims 7 and 17), receiving data related to a payment
`
`(claims 7, 12, and 17), and transmitting, forwarding, and/or outputting the
`
`requested data only after payment data has been received or validated (claims 7,
`
`12, and 17). For the same reasons the Board found claim 18 more likely than not
`
`invalid for failing to claim patentable subject matter, the Board should find the
`
`claims challenged here invalid under Section 101.
`
`II.
`
`PETITIONER HAS STANDING
`
`A. THE ’317 PATENT IS A COVERED BUSINESS METHOD
`PATENT
`
`The ’317 patent is a “covered business method patent” under Section
`
`18(d)(1) of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`
`125 Stat. 284, 329-31 (2011), and petitioner certifies that it is available for review
`
`under Section 42.304(a).
`
`
`
`2
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`
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`A “covered business method patent” is “a patent that claims a method or
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`corresponding apparatus for performing data processing or other operations used in
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`the practice, administration, or management of a financial product or service,
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`except that the term does not include patents for technological inventions.”
`
`AIA § 18(d)(1); 37 C.F.R. § 42.301(a). “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.’” Transitional Program for Covered
`
`Business Method Patents—Definitions of Covered Business Method Patent and
`
`Technological Invention (“CBM Definitions”), 77 Fed. Reg. 48,734, 48,735 (Aug.
`
`14, 2012) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of
`
`Sen. Schumer)). “Financial product or service” is interpreted broadly: for
`
`example, the term “financial . . . simply means relating to monetary matters” and
`
`does not require any link to traditional financial industries such as banks. E.g.,
`
`SAP Am., Inc. v. Versata Dev. Grp., Inc., CBM2012-00001, Paper 36 at 23
`
`(P.T.A.B. Jan. 9, 2013).
`
`1.
`
`The Board Has Already Found That Claim 18 Qualifies The
`’317 Patent As A CBM Patent
`
`The Board has repeatedly determined “that the ’317 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.” Apple, CBM2015-00018,
`
`
`
`3
`
`
`
`
`
`
`
`Paper 15 at 9; Apple Inc. v. Smartflash LLC, CBM2014-00112, Paper 7 at 12
`
`(P.T.A.B. Sept. 30, 2014). In so finding, the Board focused on claim 18 of the
`
`’317 patent. Specifically, the Board found that claim 18 satisfies “the financial in
`
`nature requirement of § 18(d)(1)” because “payment data” is recited in the claim,
`
`Apple, CBM2015-00018, Paper 15 at 7, and “because payment is required” by the
`
`claim, Apple, CBM2014-00112, Paper 7 at 10. The Board also has found that
`
`“claim 18 is merely the recitation of a combination of known technologies, which
`
`indicates that it is not a patent for a technological invention.” Apple, CBM2015-
`
`00018, Paper 15 at 8; Apple, CBM2014-00112, Paper 7 at 11. Based on the
`
`Board’s prior conclusions with respect to claim 18, the ’317 patent should be found
`
`eligible for review under the transitional covered business method patent program.
`
`See CBM Definitions, 77 Fed. Reg. at 48,736 (noting that a patent qualifies as a
`
`CBM patent if even one claim is directed to a covered business method).
`
`2.
`
`Challenged Claim 12 Also Qualifies The ’317 Patent As A
`CBM Patent
`
`Although the Board’s previous findings with respect to claim 18 are
`
`sufficient to establish the ’317 patent as a CBM patent here, challenged claim 12
`
`further supports the same conclusion. Claim 12 recites:
`
`12. A data access system comprising:
`
`a data supply computer system for forwarding data from
`
`a data provider to a data access terminal;
`
`
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`4
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`
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`an electronic payment system for confirming an
`
`electronic payment;
`
`a data access terminal for communicating with the data
`
`supply system to write data from the data supply system
`
`onto a data carrier; and
`
`a data carrier for storing data from the data supply
`
`system and payment data;
`
`wherein data is forwarded from the data provider to the
`
`data carrier on validation of payment data provided
`
`from the data carrier to the electronic payment
`
`system.1
`
`Because claim 12 is directed to subject matter that is both financial in nature and
`
`devoid of any technological invention, the ’317 patent is eligible for review under
`
`the transitional covered business method patent program.
`
`(a) Claim 12 Covers Subject Matter That Is Financial In
`Nature
`
`The ’317 patent relates to the idea of providing data in exchange for
`
`payment and controlling access to data based on payment. Ex. 1001 at 2:1-11.
`
`Indeed, the specification of the ’317 patent emphasizes payment in describing the
`
`purported invention. Id. at 1:59-63 (“According to the present invention there is
`
`therefore provided a method of providing portable data comprising . . . payment
`
`
`1 All emphasis in this petition is added unless otherwise indicated.
`
`
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`5
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`
`
`
`
`
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`validation means; . . . reading payment information from the payment validation
`
`means using the terminal; validating the payment information; . . . .”); see also id.
`
`at 6:57-61 (noting that the “payment data” forwarded to the “payment validation
`
`system” “may either be data relating to an actual payment made to the data
`
`supplier, or it may be a record of a payment made to an e-payment system . . . .”);
`
`id. at 20:50-52 (“Payment for the data item or items requested may either be made
`
`directly to the system owner or may be made to an e-payment system . . . .”); id. at
`
`13:35-47 (explaining that “[e]-payment systems . . . are coupled to banks” and may
`
`be provided in accordance with “MONDEX, Proton, and/or Visa cash compliant
`
`standards”); id. at 2:12-25, 3:22-30, 3:51-56, 7:62-8:9, 8:18-31 (emphasizing that
`
`the purported invention involves controlling access to data based on payment
`
`validation). In seeking to enforce the ’317 patent in litigation, the patent holder
`
`conceded that the alleged invention relates to a financial activity or transaction,
`
`stating that “the patents-in-suit generally cover a portable data carrier for storing
`
`data and managing access to the data via payment information and/or use status
`
`rules.” Ex. 1015 at ¶ 1.
`
`Claim 12 explicitly describes storing payment data, an electronic payment
`
`system for confirming an electronic payment, and providing purchased data only
`
`once payment data provided to the electronic payment system is validated. Claim
`
`12 thus clearly claims activities that are “financial in nature, incidental to a
`
`
`
`6
`
`
`
`
`
`
`
`financial activity or complementary to a financial activity,” CBM Definitions, 77
`
`Fed. Reg. at 48,735 (quoting 157 Cong. Rec. S5432 (statement of Sen. Schumer)).
`
`Apple, CBM2015-00018, Paper 15 at 5 (“Electronic transfer of money is a
`
`financial activity, and providing for such a transfer amounts to a financial
`
`service.”); Apple, CBM2014-00112, Paper 7 at 8 (“‘Receiving payment data from
`
`the requester relating to payment for the requested data’ and ‘reading payment
`
`distribution information from a data store’ are financial activities.”); id. at 8-9
`
`(finding that “‘outputting payment data to a payment system for distributing the
`
`payment for the requested data’ amounts to a financial service”); Samsung Elecs.
`
`Am., Inc. v. Smartflash LLC, CBM2014-00190, Paper 9 at 7 (P.T.A.B. Apr. 2,
`
`2015) (finding that “data access conditioned on payment validation” is an activity
`
`that is “financial in nature”); Apple Inc. v. Smartflash LLC, CBM2015-00015,
`
`Paper 23 at 11 (P.T.A.B. Apr. 10, 2015) (same).
`
`(b) Claim 12 Does Not Cover A Technological Invention
`
`Claim 12 of the ’317 patent does not describe a “technological invention,”
`
`because it does not claim “subject matter as a whole [that] recites a technological
`
`feature that is novel and unobvious over the prior art[] and solves a technical
`
`problem using a technical solution.” 37 C.F.R. § 42.301(b). Accordingly, the ’317
`
`patent does not fall into the sole statutory exception that would remove it from the
`
`definition of a covered business method patent. AIA § 18(d)(1).
`
`
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`7
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`
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`As an initial matter, no “technological feature” of claim 12 is “novel and
`
`unobvious.” See Ex. 1002 at ¶¶ 57-63. “Mere recitation of known technologies,
`
`such as computer hardware, communication or computer networks, software,
`
`memory, computer-readable storage medium, scanners, display devices or
`
`databases, or specialized machines, such as an ATM or point of sale device” will
`
`“not typically render a patent a technological invention.” Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012). Claim 12 recites just
`
`such known technologies—i.e., a data supply computer system, a data provider, a
`
`data access terminal, an electronic payment system, and a data carrier.
`
`The ’317 patent specification confirms that the recited computer components
`
`are in no way novel or unobvious, explaining, for example, that a “data access
`
`terminal may be a conventional computer”; that a “data carrier” may be a “standard
`
`smart card,” an “electronic memory card,” or “an IC card . . . incorporating a
`
`processor and Flash data memory”; and that an electronic payment system may be
`
`provided in accordance with cash compliant standards such as MONDEX, Proton,
`
`and/or Visa. Ex. 1001 at 3:32, 4:6-7, 11:28-29, 13:35-38, 17:8-11; see Ex. 1002 at
`
`¶ 58. Indeed, the Board previously found that the payment system of the ’317
`
`patent “may be one that is already in use or otherwise commercially available” and
`
`“‘may be part of the data supplier’s computer systems or it may be a separate
`
`system such as an e-payment system.’” Apple, CBM2014-00112, Paper 7 at 11
`
`
`
`8
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`
`
`
`
`
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`(citing Ex. 1001 at 8:18-22, 8:60-63). Similarly, the Board has already found that
`
`the claimed “data access terminal” and “data carrier” are “generic hardware
`
`device[s] known in the prior art.” Apple Inc. v. Smartflash LLC, CBM2014-00110,
`
`Paper 7 at 12 (P.T.A.B. Sept. 30, 2014) (citing the ’772 patent specification (Ex.
`
`1018)—which is identical to the ’317 patent specification—at 4:8-9); Apple,
`
`CBM2015-00015, Paper 23 at 13 (citing the ’221 patent specification (Ex. 1017)—
`
`which is also identical to the ’317 patent specification—at 11:28-29).
`
`Moreover, the subject matter of claim 12 does not solve “a technical
`
`problem using a technical solution.” 37 C.F.R. § 42.301(b). The ’317 patent
`
`purportedly solves a business problem—namely, the problem of consumers
`
`accessing content (like videos and music) without paying for it. Ex. 1001 at 1:38-
`
`51. The ’317 patent states that “there is an urgent need to find a way to address the
`
`problem of data piracy” (i.e., a business problem), while simultaneously
`
`acknowledging that the “physical embodiment of the system” for solving that
`
`problem “is not critical” (i.e., the solution is not a technical one). Id. at 1:50-51,
`
`12:29-33; see also Apple, CBM2015-00018, Paper 15 at 9 (finding “that the
`
`problem being solved by claim 18 [of the ’317 patent] is a business problem”);
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`Apple, CBM2014-00112, Paper 7 at 12 (same).
`
`As the Board previously found, “the ’317 patent makes clear that the
`
`asserted novelty of the [alleged] invention is not in any specific improvement of
`
`
`
`9
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`
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`software or hardware.” Apple, CBM2015-00018, Paper 15 at 8. Consistent with
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`that finding, claim 12 does not recite any technological feature that is novel and
`
`unobvious over the prior art or solve a technical problem using a technical
`
`solution. Accordingly, the ’317 patent is eligible for a covered business method
`
`patent review.
`
`III. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`
`A.
`
`PETITIONER IS A REAL PARTY IN INTEREST SUED FOR
`AND CHARGED WITH INFRINGEMENT
`
`Petitioner Google is a real party-in-interest. The patent holder’s complaint
`
`in Smartflash LLC, et al. v. Google Inc., et al., No. 6:14-cv-435, pending in the
`
`Eastern District of Texas, asserts the ’317 patent against the petitioner.
`
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(B)(2)
`
`The patent holder has also asserted the ’317 patent in the following cases to
`
`which petitioner is not a party: Smartflash LLC, et al. v. Apple Inc., et al., No.
`
`6:13-cv-447 (E.D. Tex.), Smartflash LLC, et al. v. Samsung Electronics Corp.,
`
`Ltd., et al., No. 6:13-cv-448 (E.D. Tex.), Smartflash LLC, et al. v. Amazon.com,
`
`Inc., No. 6:14-cv-992 (E.D. Tex.), and Smartflash LLC, et al. v. Apple Inc., No.
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`6:15-cv-145 (E.D. Tex.). Petitioner identifies the following administrative matters,
`
`including patent applications to which the ’317 patent claims the benefit of
`
`priority: App’n No. 10/111,716 (filed as No. PCT/GB00/4110); App’n No.
`
`
`
`10
`
`
`
`
`
`
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`11/336,758; App’n No. 12/014,558; CBM Nos. CBM2014-00112, CBM2014-
`
`00113, CBM2015-00018, and CBM2015-00124 filed by Apple Inc.
`
`C. LEAD AND BACKUP COUNSEL UNDER 37 C.F.R. § 42.8(B)(2)
`
`Petitioner designates Raymond N. Nimrod (Reg. No. 31,987) as Lead
`
`Counsel and Charles K. Verhoeven (pro hac vice motion to be filed), Melissa J.
`
`Baily (pro hac vice motion to be filed), and Andrew M. Holmes (Reg. No. 64,718)
`
`as Backup Counsel. Petitioner may be served at Quinn Emanuel Urquhart &
`
`Sullivan, LLP, 50 California Street, 22nd Floor, San Francisco, California 94111
`
`(Tel: 415-875-6600; Fax: 415-875-6700) or by electronic service at the address
`
`QE-SF-PTAB-Service@quinnemanuel.com.
`
`IV. PAYMENT OF FEES
`
`Petitioner authorizes charges to Deposit Account No. 505708 for the fee set
`
`in 37 C.F.R. § 42.15(b) for this petition and any related additional fees.
`
`V. CLAIM CONSTRUCTION
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`The challenged claims must be given their broadest reasonable
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`interpretations (“BRI”). 37 C.F.R. § 42.300(b). When there is co-pending
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`litigation regarding the challenged claims, the patent holder’s litigation positions
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`regarding claim scope are instructive, especially where those positions support a
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`broad reading of the claims. See, e.g., SAP Am., Inc. v. Versata Dev. Grp., Inc.,
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`CBM2012-00001, Paper 70 at 19-24 (P.T.A.B. June 11, 2013). Any constructions
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`adopted by a district court are also highly relevant because it would be
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`11
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`“incongruous to adopt a narrower construction in [a post-grant proceeding],
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`wherein the claims are construed using the broadest reasonable interpretation
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`standard, than was adopted in [a district court], in which a narrower, Phillips
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`construction standard applied.” Ariosa Diagnostics v. Isis Innovation Ltd.,
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`IPR2012-00022, Paper 166 at 24 (P.T.A.B. Sept. 2, 2014); Foursquare Labs Inc. v.
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`Silver State Intellectual Techs., Inc., IPR2014-00159, Paper 13 at 3-4 (P.T.A.B.
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`Aug. 1, 2014) (revisiting and broadening a previous construction to be at least as
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`broad as the district court’s construction).
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`In light of these principles, any constructions adopted in this proceeding
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`should be at least as broad as those adopted by the district court in Smartflash LLC,
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`et al. v. Samsung Electronics Co., Ltd., et al., No. 6:13-cv-448 (E.D. Tex.) and
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`Smartflash LLC, et al. v. Apple Inc., et al., No. 6:13-cv-447 (E.D. Tex.).2 Ariosa,
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`IPR2012-00022, Paper 166 at 24; Foursquare, IPR2014-00159, Paper 13 at 3-4.
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`Moreover, any constructions adopted in this proceeding should be heavily
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`informed by the patent holder’s positions in its various district court actions, as the
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`2 Because the standard for claim construction here is different than the
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`standard used in litigation, Google expressly reserves the right to argue in litigation
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`a different claim construction for any term in the ’317 patent, as appropriate to that
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`proceeding. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 1369
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`(Fed. Cir. 2004); MPEP § 2111.
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`12
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`patent holder should not be permitted to both wield broad constructions in an
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`attempt to establish infringement in the district court and simultaneously seek to
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`establish validity using narrower constructions here. See SAP, CBM2012-00001,
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`Paper 70 at 20 n.16, 23; Ariosa, IPR2012-00022, Paper 166 at 24; Foursquare,
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`IPR2014-00159, Paper 13 at 3-4. For these reasons and those noted below, the
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`Board should adopt the following constructions for the terms “data carrier,”
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`“payment data,” “content synthesis code,” “program store,” “electronic payment
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`system,” and “access rule data.”
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`A.
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`“DATA CARRIER”
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`
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`The Board did not find it necessary to expressly construe “data carrier” in
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`connection with its previous finding that certain claims of patents sharing the same
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`specification as the ’317 patent are more likely than not invalid under Section 101.
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`E.g., Samsung Elecs. Am., Inc. v. Smartflash LLC, CBM2014-00194, Paper 9 at 6-
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`7 (P.T.A.B. Mar. 30, 2015). Nevertheless, the Board has previously found that the
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`“data carrier” claimed in patents sharing an identical specification with the ’317
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`patent “is a generic hardware device known in the prior art.” Id. at 10 (noting that
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`the specification of the related ’221 patent—which is identical to the ’317 patent
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`specification—discloses that “a data carrier may be a ‘standard smart card’”)
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`(citing Ex. 1017 at 11:28-29); Apple, CBM2015-00015, Paper 23 at 13 (same).
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`13
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`Moreover, in the Samsung and Apple district court proceedings, the patent
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`
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`holder contended that the “data carrier” claimed in the ’317 patent encompasses
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`any “medium capable of storing information.” Ex. 1012 at 17-22. The district
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`court agreed, noting that a “data carrier” need not be limited to any particular
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`physical structure. Ex. 1011 at 19-22. And in the Google district court action, the
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`patent holder has continued to assert that
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` E.g., Ex. 1016 at 935.
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`
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`In light of the Board’s previous observations, the district court’s construction
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`in the Samsung and Apple actions, the patent holder’s litigation position vis-à-vis
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`the petitioner in the Google action, and the BRI standard applicable here, the Board
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`should construe “data carrier” to mean: “any medium, regardless of structure, that
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`is capable of storing information.” See Ex. 1002 at ¶¶ 33-36.
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`B.
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`“PAYMENT DATA”
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`The Board has not found it necessary to expressly construe “payment data”
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`in connection with its previous finding that claim 18 of the ’317 patent is more
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`likely than not invalid under Section 101. Apple, CBM2015-00018, Paper 15 at 4.
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`Nonetheless, the breadth of the patent holder’s and the district court’s construction
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`of the term “payment data” is worth noting here.
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`14
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`In the Samsung and Apple actions, at the patent holder’s urging, the district
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`
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`court construed “payment data” to mean “data that can be used to make a payment
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`for content.” Ex. 1011 at 11. In arriving at this construction, the district court
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`stated that “[t]he specification and cited claim language use payment data broadly
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`to refer to whatever data is being used ‘for making a payment.’” Id. (citing the
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`’720 patent specification (Ex. 1021)—which is identical to the ’317 patent
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`specification—at 21:15). In the Google district court action, the patent holder has
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`asserted that
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` E.g., Ex. 1016 at 80-81.
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`
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`In light of the district court’s construction in the Samsung and Apple actions,
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`the patent holder’s litigation position vis-à-vis the petitioner in the Google district
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`court proceedings, and the BRI standard applicable here, the Board should construe
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`“payment data” to mean: “any information that can be used in connection with the
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`process of making a payment for content.” See Ex. 1002 at ¶¶ 37-39.
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`C.
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`“CONTENT SYNTHESIS CODE”
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`According to the ’317 patent specification, “content synthesis code” may
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`combine “partial content information from two or more sources to provide content
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`data items for storage and/or output.” Ex. 1001 at 5:54-56. For instance, “a first
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`percentage of a content data item could be provided by a content retailer, while a
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`15
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`remaining percentage could be provided by an on-line data supplier.” Id. at 5:57-
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`60. In another example, “[t]he two portions of data combined to provide a content
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`data item could comprise encryption data and a key.” Id. at 5:64-66.
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`In the Google district court action, the patent holder has asserted
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`1016 at 439. The patent holder has also alleged that
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`Ex.
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`In light of the specification, the patent holder’s litigation position vis-à-vis
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`the petitioner, and the BRI standard applicable here, the Board should construe
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`“content synthesis code” to mean: “code for combining data.” See Ex. 1002 at
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`¶¶ 44-45.
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`D.
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`“PROGRAM STORE”
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`The Board has not found it necessary to expressly construe “program store”
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`in connection with its previous findings that certain claims of patents sharing the
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`same specification as the ’317 patent are more likely than not invalid under Section
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`16
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`101. E.g., Samsung, CBM2014-00194, Paper 9 at 12-15; Apple, CBM2015-00015,
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`Paper 23 at 15-19. Nonetheless, the breadth of the term “program store” as
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`described by the ’317 patent and as interpreted by the patent holder is worth noting
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`here.
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`The ’317 patent’s specification and claims teach that a “program store”
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`stores code that is implementable by a processor. E.g., Ex. 1001, 4:45-52, claim 1,
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`claim 17. In the Google district court action, the patent holder has asserted
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`Ex. 1016 at 42, 1189.
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`In light of the specification, the claims, the patent holder’s litigation position
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`vis-à-vis the petitioner, and the BRI standard applicable here, the Board should
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`construe “program store” to mean: “any generic component capable of storing
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`code/programs.” Ex. 1002 at ¶¶ 40-41.
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`E.
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`“ELECTRONIC PAYMENT SYSTEM”
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`The Board previously noted that the payment system of the ’317 patent
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`“may be one that is already in use or otherwise commercially available” and “may
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`be part of the data supplier’s computer systems or it may be a separate system such
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`as an e-payment system.” Apple, CBM2014-00112, Paper 7 at 11 (citing Ex. 1001
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`at 8:18-22, 8:60-63). The ’317 patent discloses that an “electronic payment
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`17
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`system” can be used to perform any one of numerous generic functions related to
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`payment, such as “verif[ying] payment data,” Ex. 1001 at Fig. 11b at S25;
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`receiving “payment,” id. at Fig. 12c, S54; generating “payment record data,” id. at
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`Fig. 12c, S55; validating payment record data, id. at Fig. 12d, S67; receiving
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`“payment distribution instruction,” id. at Fig. 12e, S69; confirming payments, id. at
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`9:40-41, claim 12; transferring payments, id. at 7:14-16; or distributing payments,
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`id. at 15:31-32.
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`In the Google district court action, the patent holder has
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`In light of the specification, the patent holder’s litigation position vis-à-vis
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`the petitioner, and the BRI standard applicable here, the Board should construe
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`“electronic payment system” to mean: “a system related to processing and/or
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`distributing a payment.” See Ex. 1002 at ¶¶ 42-43.
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`F.
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`“ACCESS RULE DATA”
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`Although the Boar
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