UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GOOGLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00129
`
`Patent 7,942,317 B2
`
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GOOGLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00129
`
`Patent 7,942,317 B2
`
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`
`PATENT OWNER’S LIST OF EXHIBITS ............................................................ iii
`
`I.
`
`II.
`
`III. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 325(d) AND DECLINE TO INSTITUTE COVERED BUSINESS
`METHOD PATENT REVIEW ....................................................................... 7
`
`OVERVIEW OF U.S. PATENT NO. 7,942,317 ............................................ 4
`
`
`IV. THE CLAIMS OF THE ‘317 PATENT ARE STATUTORY ........................ 8
`A.
`The Two-Part Test for Statutory Subject Matter .................................. 8
`
`B.
`
`C.
`
`The Claims Are Statutory Under Mayo and Alice ................................ 9
`
`The Claims Do Not Result in Inappropriate Preemption .................... 17
`Preemption under DDR Holdings ............................................. 17
`1.
`Preemption under Mayo and Alice ............................................ 21
`2.
`3.
`Non-Infringing Alternatives Confirm a Lack of Preemption ... 22
`4. The Challenged Claims are Distinguishable from the Claims in
`Ariosa Diagnostics .................................................................... 23
`
`
`V. A FEDERAL COURT HAS ALREADY FOUND RELATED CLAIMS OF
`THE ‘317 PATENT TO BE STATUTORY UNDER § 101 ........................ 26
`
`
`VI. SECTION 101 IS NOT A GROUND THAT MAY BE RAISED IN
`COVERED BUSINESS METHOD PATENT REVIEW ............................. 27
`
`
`
`
`
`- i -
`
`
`
`VII.
`
`THE USPTO IS ESTOPPED FROM REVISITING THE ISSUE OF
`
`VII. THE USPTO IS ESTOPPED FROM REVISITING THE ISSUE OF
`WHETHER THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT
`MATTER ....................................................................................................... 30
`
`WHETHER THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT
`
`MATTER ..................................................................................................... ..30
`
`
`VIII. INVALIDATING PATENT CLAIMS VIA CBM REVIEW IS
`UNCONSTITUTIONAL ............................................................................... 30
`
`VIII.
`
`INVALIDATING PATENT CLAIMS VIA CBM REVIEW IS
`
`UNCONSTITUTIONAL ............................................................................. . .30
`
`IX.
`
`DR. TYGAR’S DECLARATION SHOULD NOT BE CONSIDERED .... ..32
`
`
`IX. DR. TYGAR’S DECLARATION SHOULD NOT BE CONSIDERED ...... 32
`
`X.
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`FINANCIAL PRODUCT OR SERVICE ...................................................... 33
`
`FINANCIAL PRODUCT OR SERVICE .................................................... ..33
`
`
`XI. THE CHALLENGED CLAIMS OF THE ‘317 PATENT ARE
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW .... 38
`
`XI.
`
`THE CHALLENGED CLAIMS OF THE ‘317 PATENT ARE
`
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW....38
`
`
`XII. CONCLUSION .............................................................................................. 40
`
`CONCLUSION ............................................................................................ . .40
`
`XII.
`
`
`
`- ii -
`
`
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`
`
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`Exhibit Number
`
`Exhibit Description
`
`2001
`
`2002
`
`Congressional Record - House, June 23, 2011, H4480-4505
`
`Congressional Record - Senate, Sep. 8, 2011, S5402-5443
`
`2003-2048
`
`Reserved
`
`2049
`
`2050
`
`Report and Recommendation (on Defendants’ Motions for
`Summary Judgment of Invalidity Pursuant to 35 U.S.C. 101),
`from Smartflash LLC et al. v. Apple, Inc., et al., Case No.
`6:13-CV-447 (E.D. Tex.) and Smartflash LLC et al. v.
`Samsung Electronics Co. Ltd, et al., Case No. 6:13-CV-448
`(E.D. Tex.), dated Jan. 21, 2015
`
`Order adopting Report and Recommendation (on
`Defendants’ Motions for Summary Judgment of Invalidity
`Pursuant to 35 U.S.C. 101), from Smartflash LLC et al. v.
`Apple, Inc., et al., Case No. 6:13-CV-447 (E.D. Tex.) and
`Smartflash LLC et al. v. Samsung Electronics Co. Ltd, et al.,
`Case No. 6:13-CV-448 (E.D. Tex.), dated Feb. 13, 2015
`
`2051-2067
`
`Reserved
`
`2068
`
`Deposition Transcript of Anthony J. Wechselberger dated
`May 28, 2015 taken in CBM2015-00015, -00016, -00017
`and -00018
`
`2069-2074
`
`Reserved
`
`2075
`
`Order (on Defendants’ Renewed Motion for Judgment as a
`
`
`
`- iii -
`
`
`
`Exhibit Number
`
`Exhibit Description
`
`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.
`
`2076
`
`Deposition Transcript of Anthony J. Wechselberger dated
`July 22, 2015 taken in CBM2015-00028, -00029, -00031, -
`00032 and -00033
`
`2077-2091
`
`Reserved
`
`2092
`
`Declaration of Emily E. Toohey in Support of Patent
`Owner’s Preliminary Response
`
`
`
`
`
`- iv -
`
`
`
`Pursuant to 37 C.F.R. § 42.107, Smartflash LLC (“Patent Owner”) files this
`
`preliminary response to the petition, setting forth reasons why no new covered
`
`business method review of U.S. Patent 7,942,317 should be instituted as requested
`
`by Google Inc. (“Google” 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 Google seeks covered business method (CBM) review of claims 7,
`
`12, and 17 of U.S. Patent No. 7,942,317 (“the ‘317 Patent”) as being unpatentable
`
`under 35 U.S.C. § 101. Redacted Petition, Paper 3 at 1.
`
`This case constitutes the fifth Petition seeking CBM review of the ‘317
`
`Patent, and the third arguing that the ‘317 Patent is directed to ineligible subject
`
`matter under § 101. On April 3, 2014 another petitioner, Apple Inc. (“Apple”)
`
`filed two petitions, in CBM2014-00112 and -00113, seeking review of the ‘317
`
`Patent under 35 U.S.C. §§ 102 and 103. CBM2014-00112, Decision, Institution of
`
`Covered Business Method Patent Review 37 C.F.R. § 42.208, Paper 7 at 3 (PTAB
`
`September 30, 2014). On November 3, 2014 Apple filed another petition in
`
`CBM2015-00018, seeking review of ‘317 Patent claim 18 as unpatentable under
`
`§ 101. CBM2015-00018, Corrected Petition, Paper 1 at 1. On May 7, 2015, Apple
`
`
`
`- 1 -
`
`
`
`filed yet another petition, in CBM2015-00124, seeking CBM review of claims 1-
`
`17 and 19 as unpatentable under 35 U.S.C. § 101. CBM2015-00124, Petition,
`
`Paper 2 at 1. Review of claim 18 was instituted. CBM2015-00018, Decision,
`
`Institution of Covered Business Method Patent Review 37 C.F.R. § 42.208, Paper
`
`15 at 13 (PTAB April 10, 2015. Thus, at the time the instant Petition was filed on
`
`May 16, 2015, Apple was already seeking review of each and every claim of the
`
`‘317 Patent under § 101, including the same claims as Google (claims 7, 12, and
`
`17) on the same grounds as Google (§ 101). The Board should exercise its
`
`discretion under 35 U.S.C. § 325(d) to decline to institute a covered business
`
`method patent review of claims 7, 12, and 17 of the ‘317 Patent given that they are
`
`duplicative of claims for which review was requested in CBM2015-00124.
`
`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
`
`amount of future innovation is foreclosed by the challenged claims of the ‘317
`
`Patent.
`
`
`
`- 2 -
`
`
`
`Additionally, in February 2015, The United States District Court for the
`
`Eastern District of Texas examined the purely legal issue of whether claim 18 of
`
`the ‘317 Patent is directed to statutory subject matter under 35 U.S.C. § 101, and
`
`found the claim to be statutory. 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 same 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).
`
`
`
`- 3 -
`
`
`
`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. 1001, ‘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
`
`
`
`- 4 -
`
`
`
`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,
`
`
`
`- 5 -
`
`
`
`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
`
`
`
`- 6 -
`
`
`
`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. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 325(d) AND DECLINE TO INSTITUTE COVERED BUSINESS
`METHOD PATENT REVIEW
`
`Google’s § 101 unpatentable subject matter ground asserted here against
`
`claims 7, 12, and 17 of the ‘317 Patent is duplicative of grounds already asserted
`
`by Apple in CBM2015-00018 and CBM2015-00124.
`
`Here, the Board should exercise its discretion under 35 U.S.C. § 325(d) and
`
`decline to institute a covered business method patent review of claims 7, 12, and
`
`17 of the ‘317 Patent on 35 U.S.C. § 101 grounds in CBM2015-00129 because it
`
`has already instituted covered business method review of claim 18 in CBM2015-
`
`00018 and Google’s petition overlaps with Apple’s request for review of the
`
`balance of the ‘317 Patent claims on the same purely legal § 101 grounds in
`
`CBM2015-00124.
`
`“[T]he Board is charged with securing the just, speedy, and inexpensive
`
`resolution of every proceeding.” EMC Corporation, et al. v. Personal Web
`
`
`
`- 7 -
`
`
`
`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)).
`
`Here, instituting a repetitive action runs afoul of the Board’s charge to
`
`“secure the just, speedy, and inexpensive resolution” of the covered business
`
`method challenges to the ‘317 Patent. Patent Owner respectfully requests that the
`
`Board deny review on Google’s § 101 unpatentable subject matter grounds that are
`
`repetitive of the reviews requested in CBM2015-00018 and CBM2015-00124.
`
`
`
`IV. THE CLAIMS OF THE ‘317 PATENT 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
`
`
`
`- 8 -
`
`
`
`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
`
`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
`
`
`
`- 9 -
`
`
`
`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 (from which claim 7
`
`depends), 12, and 17 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 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 (from which claim 7 depends), 12, and 17 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
`
`
`
`- 10 -
`
`
`
`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).
`
`
`
`
`
`
`
`1.
`
`Claim 7
`
`Independent claim 1 of the ‘317 Patent meets the requisites of § 101 under
`
`DDR Holdings. Challenged claim 7 depends from claim 1, and if claim 1 is
`
`statutory, then so is challenged claim 7. 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
`
`
`
`- 11 -
`
`
`
`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;
`
`(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
`
`
`
`- 12 -
`
`
`
`Claim element from DDR Holdings
`
`Similar claim element from claim 1
`
`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 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
`
`
`
`- 13 -
`
`
`
`Claim element from DDR Holdings
`
`Similar claim element from claim 1
`
`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 17
`
`Independent claim 17 of the ‘317 Patent meets the requisites of § 101 under
`
`DDR Holdings. Claim 17 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.
`
`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:
`
`
`
`- 14 -
`
`
`
`Claim element from DDR Holdings
`
`Similar claim element from claim 17
`
`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 location data
`
`perceptible elements correspond to the
`
`identifying an electronic address for a
`
`plurality of first web pages; (i) wherein
`
`provider for the data item;
`
`each of the first web pages belongs to
`
`...
`
`one of a plurality of web page owners;
`
`wherein said data access data store
`
`(ii) wherein each of the first web pages
`
`further comprises data item access rule
`
`displays at least one active link
`
`data for output to the requester with a
`
`associated with a commerce object
`
`said data item;
`
`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,
`
`
`
`- 15 -
`
`
`
`Claim element from DDR Holdings
`
`Similar claim element from claim 17
`
`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 the
`
`source page, automatically retrieve the
`
`received payment data to output the item
`
`stored data corresponding to the source
`
`data to the requester over the
`
`page; and
`
`communication interface
`
`(iv) using the data retrieved,
`
`code to select access rule data for output
`
`automatically generate and transmit to
`
`with a data item in response to said
`
`the web browser a second web page that
`
`payment data.
`
`displays: (A) information associated
`
`with the commerce object associated
`
`with the link that has been activated, and
`
`
`
`- 16 -
`
`
`
`Claim element from DDR Holdings
`
`Similar claim element from claim 17
`
`(B) the plurality of visually perceptible
`
`elements visually corresponding to the
`
`source page.
`
`
`
`Thus, like in DDR Holdings, when “the limitations of the … claims are
`
`taken as [a] combination, the claims recite[] an invention that is not merely the
`
`routine or conventional use of the Internet.” DDR Holdings, 773 F.3d at 1259.
`
`Such a finding was further echoed by the Report and Recommendation when it
`
`held that the “asserted claims … recite specific ways of using distinct
`
`memories, data types, and use rules that amount to significantly more than
`
`the underlying abstract idea. Although in some claims the language is functional
`
`and somewhat generic, the claims contain significant limitations on the scope of
`
`the inventions.” Report and Recommendation at 19, lines 1-4.
`
`C.
`
`The Claims Do Not Result in Inappropriate Preemption
`
`1.
`
`Preemption under DDR Holdings
`
`The Petition alleges that “[t]he challenged claims are explicitly drawn to the
`
`abstract idea of controlling access based on payment.” Redacted Petition, Paper 3
`
`at 1. The Petition further alleges in a conclusory manner that “[h]ere, the
`
`challenged claims firmly trigger preemption concerns. The challenged claims
`
`disclose only an ultimate objective: using a generic computer to implement the
`
`
`
`- 17 -
`
`
`
`steps inherent in the abstract idea of providing access to content based on
`
`payment.” Id. at 37. However, the challenged claims of the ‘317 Patent do not
`
`result in inappropriate preemption under DDR Holdings, Mayo and Alice. Using
`
`the analysis of the Federal Circuit in DDR Holdings, claims are statutory when
`
`“the claims ... do not attempt to preempt every application of the idea [relating to
`
`the field of the invention]. Rather, they recite a specific way … that incorporates
`
`elements from multiple sources in order to solve a problem faced by [servers] on
`
`the Internet.” DDR Holdings, 773 F.3d at 1259. Such a standard is consistent with
`
`other Supreme Court precedent as well. As cited in Mayo, in “Bilski, the Court
`
`pointed out that to allow ‘petitioners to patent risk hedging would [inappropriately]
`
`preempt use of this approach in all fields.” Mayo, 132 S. Ct. at 1301 (citing Bilski
`
`v. Kappos, 561 U.S. 612 (2010)).
`
`Because the challenged claims have similar structures and/or elements to the
`
`claims of DDR Holdings, as discussed above, and because all of the claims are
`
`limited to the elements of or the use of specific claimed structures, the result of the
`
`preemption analysis is the same here as in DDR Holdings -- the claims do not
`
`result in inappropriate preemption.
`
`Evidence from CBM2015-00018 brought by Apple Inc. supports that the
`
`claims of the ‘317 Patent do not result in inappropriate preemption. There, Apple
`
`also incorrectly alleged that the ‘317 Patent claims result in inappropriate
`
`
`
`- 18 -
`
`
`
`preemption of the “idea of paying for data.” See, CBM2015-00018, Petition, Paper
`
`1 at 4. This is just another way of stating Google’s allegation that the claims of the
`
`‘317 Patent are directed to “controlling access based on payment.” Redacted
`
`Petition, Paper 3 at 1. The evidence of record in CBM2015-00018, however,
`
`shows that that the claims of the ‘317 Patent do not result in inappropriate
`
`preemption. For example, in that case Apple’s purported expert Mr.
`
`Wechselberger’s deposition testimony supports that claim 18 of the ‘317 Patent
`
`does not result in inappropriate preemption because it does not preempt every
`
`application of the idea of paying for and controlling access to content.
`
`Specifically, Mr. Wechselberger admitted that “[it is] possible to build a computer
`
`system that enables paying for and controlling access to content that does not read
`
`payment distribution information from a data store” as required by claim 18 of the
`
`‘317 Patent. Ex. 2068, Wechselberger Deposition at 59:15-19 (emphasis added).
`
`Similarly, the deposition testimony Mr. Wechselberger in CBM2015-00028, et al.
`
`involving the same family of patents, supports that the claims of the ‘317 Patent do
`
`not result in inappropriate preemption because they do not preempt every
`
`application of the idea of paying for and controlling access to content, nor are a
`
`disproportionate number of applications preempted. Mr. Wechselberger testified
`
`that “there’s potentially a nearly infinite number of different ways that one could
`
`[pay for and control access to content using a processor and a program store].”
`
`
`
`- 19 -
`
`
`
`Exhibit 2076, July 22, 2015 Deposition of Apple Witness Anthony J.
`
`Wechselberger in CBM2015-00028, et al., at 54:16-24 (emphasis added).
`
`In fact, the Report and Recommendation from the District Court that looked
`
`at claim 18 of the ‘317 Patent under § 101 found that claim 18, “do[es] not risk
`
`preempting all future inventions related to exchanging access to data for payment
`
`on the Internet. Instead, when taken as ordered combinations, the claims
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