`
`
`
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 35
`Entered: January 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE, INC.,
`Petitioner
`
`and
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-001261
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`1 CBM2015-00126 has been consolidated with CBM2015-00130.
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`INTRODUCTION
`Google, Inc., filed a Petition to institute covered business method
`patent review of claim 3 of U.S. Patent No. 8,118,221 B2 (“the ’221
`patent”). CBM2015-00126, Paper 32 (“’126 Pet.”). Apple Inc., also filed a
`Petition to institute covered business method patent review of claims 3–10,
`12–31, and 33 of the ’221 patent. CBM2015-00130, Paper 2 (“Pet.”). On
`November 16, 2015, we instituted a covered business method patent review
`in CBM2015-00126 (Paper 8, “’126 Institution Decision” or “’126 Inst.
`Dec.”) based upon Google’s assertion that claim 3 is directed to patent
`ineligible subject matter under 35 U.S.C. § 101. CBM2015-00126, Inst.
`Dec. 19. The same day we instituted a covered business method patent
`review in CBM2015-00130 (Paper 9, “Institution Decision” or “Inst. Dec.”)
`based upon Apple’s assertion that claims 3–10, 15–31, and 33 are directed to
`patent ineligible subject matter under 35 U.S.C. § 101 and that claim 22 is
`indefinite under 35 U.S.C. § 112. CBM2015-00130, Inst. Dec. 25.
`Subsequent to institution, Smartflash LLC (“Patent Owner”) filed
`Patent Owner Responses (CBM2015-00126, Paper 21 (“’126 PO Resp.”);
`CBM2015-00130, Paper 19 (“PO Resp.”) and Google and Apple each filed
`Replies (CBM2015-00126, Paper 22 (“’126 Reply”); CBM2015-00130,
`Paper 23 (“Reply”) to Patent Owner’s Response, respectively.
`
`
`2 Google filed two versions of the Petition: Paper 2, which is sealed and
`accessible to the parties and Board only, and Paper 3, which is a public
`version of the Petition containing a small portion of redacted text. For
`purposes of this Decision, we refer only to the public version of the Petition.
`
`2
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`Patent Owner, with authorization, filed Notices of Supplemental
`Authority. CBM2015-00126, Paper 28; CBM2015-00130, Paper 30
`(“Notice”). Google and Apple each filed Responses to Patent Owner’s
`Notices, respectively. CBM2015-00126, Paper 29 (“126 Notice Resp.”);
`CBM2015-00130, Paper 31 (“Notice Resp.”).
`In our Final Decision, we determined Petitioner had established, by a
`preponderance of the evidence, that claims 3–10, 15–31, and 33 of the ’221
`patent are directed to patent ineligible subject matter under 35 U.S.C. § 101.
`CBM2015-00130, Paper 33 (“Final Dec.”).3 We also determined that claim
`22 is indefinite under 35 U.S.C. § 112. Patent Owner requests rehearing of
`the Final Decision with respect to patent ineligibility of the challenged
`claims under § 101. Paper 34 (“Request” or “Req. Reh’g”), 3 n.2. Having
`considered Patent Owner’s Request, we decline to modify our Final
`Decision.
`
`STANDARD OF REVIEW
`In covered business method review, the petitioner has the burden of
`showing unpatentability by a preponderance of the evidence. 35 U.S.C.
`§ 326(e). The standard of review for rehearing requests is set forth in 37
`C.F.R. § 42.71(d), which states:
`The burden of showing a decision should be modified lies with
`the party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`
`
`3 Unless otherwise noted (using “’126” prior to the citation), all future
`citations in this Decision are to CBM2015-00130.
`
`3
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`ANALYSIS
`Patent Owner’s Request is based on a disagreement with our
`determination that the challenged claims are directed to patent-ineligible
`subject matter. Req. Reh’g 3.
`In its Request, Patent Owner initially presents arguments directed to
`alleged similarities between the challenged claims and those at issue in DDR
`Holdings4, Enfish5, and Bascom6. Id. at 5–11. Those cases were each
`addressed in the Patent Owner Response or Patent Owner’s Notice, as well
`as in our Final Decision. See, e.g., Final Dec. 12–14, 19–25. As noted
`above, our rules require that the requesting party “specifically identify all
`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed in a motion, an
`opposition, or a reply.” 37 C.F.R. 42.71(d) (emphasis added). In its
`Request, however, Patent Owner does not identify any specific matter that
`we misapprehended or overlooked. Although Patent Owner repeatedly
`states that the Board “misapprehends” Smartflash’s argument (see, e.g., Req.
`Reh’g 5, 10), it does not offer sufficient explanation as to how we
`misapprehended or overlooked any particular “matter [that] was previously
`addressed in a motion, an opposition, or a reply.” Rather than providing a
`proper request for rehearing, addressing particular matters that we
`
`
`4 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
`5 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
`6 BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC, 827 F.3d
`1341 (Fed. Cir. 2016).
`
`4
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`previously allegedly misapprehended or overlooked, Patent Owner’s
`Request provides new briefing by expounding on argument already made.
`To the extent portions of the Request are supported by Patent Owner’s
`argument in the Patent Owner Response or in Patent Owner’s Notice, we
`considered those arguments in our Final Decision, as Patent Owner
`acknowledges. See, e.g., Req. Reh’g 5, 7, 9–10 (noting that the Board
`“rejected” Smartflash’s argument with respect to each of DDR Holdings,
`Enfish, and Bascom). Our Final Decision, as noted above, addresses Patent
`Owner’s arguments related to DDR Holdings (Final Dec. 19–23), Enfish (id.
`at 12–14), and Bascom (id. at 24–25). Patent Owner’s Request is simply
`based on disagreement with our Final Decision, which is not a proper basis
`for rehearing.
`Patent Owner also presents new arguments directed to alleged
`similarities between the challenged claims and those addressed in McRO7
`and Amdocs8, which were issued after Patent Owner’s Notice was filed.
`Req. Reh’g 11–15. Patent Owner alleges that we overlooked the Federal
`Circuit’s decisions in McRO and Amdocs. Id. at 2. The decisions in those
`cases issued before our Final Decision and, although not specifically
`referenced, were considered when we determined that the challenged claims
`are patent-ineligible.
`
`
`7 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
`2016).
`8 Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
`2016).
`
`5
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`When addressing McRO, Patent Owner does little, if anything, to
`analogize those claims to the challenged claims, other than summarizing the
`discussion in McRO (id. at 11–13), and concluding that
`[b]ecause the challenged claims are a technological improvement
`over the then-existing systems, and limit transfer and retrieval of
`content based on payment and/or access rules in a process
`specifically designed to achieve an improved technological result
`in conventional industry practice, the challenged claims are not
`directed to an abstract idea.
`Id. at 13–14 (citing Ex. 1001, 25:59–61 (claim 1), 26:42–67 (claim 15),
`27:36–55). But McRO does not stand for the general proposition that use of
`rules or conditions to achieve an improved technological result, alone,
`removes claims from the realm of abstract ideas. In McRO, the Court
`explained that “the claimed improvement [was] allowing computers to
`produce ‘accurate and realistic lip synchronization and facial expressions in
`animated characters’ that previously could only be produced by human
`animators.” Id. at 1313 (citation omitted). The Court explained that the
`claimed rules in McRO transformed a traditionally subjective process
`performed by human artists into a mathematically automated process
`executed on computers (i.e., the processes were fundamentally different).
`Id. at 1314. The Court explained that “it [was] the incorporation of the
`claimed rules, not the use of the computer, that ‘improved [the] existing
`technological process’ by allowing the automation of further tasks.” Id. at
`1314 (alteration in original) (quoting Alice Corp. Pty. Ltd. v. CLS Bank
`Int’l., 134 S. Ct. 2347, 2358 (2014)). The Court distinguished this from
`situations “where the claimed computer-automated process and the prior
`method were carried out in the same way.” Id. (citing Parker v. Flook, 437
`
`6
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`U.S. 584, 585–86 (1978); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Alice,
`134 S. Ct. at 2356)).
`As explained in our Final Decision, the challenged claims “merely
`implement an old practice in a new environment.” Final Dec. 13 (quoting
`FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1094 (Fed. Cir.
`2016)). The challenged claims are similar to the claims found ineligible in
`FairWarning, which the Court distinguished from those at issue McRO.
`FairWarning, 839 F.3d at 1094–95. In FairWarning, the Court explained
`that “[t]he claimed rules ask . . . the same questions . . . that humans in
`analogous situations . . . have asked for decades, if not centuries” and that it
`is the “incorporation of a computer, not the claimed rule, that purportedly
`‘improve[s] [the] existing technological process.’” Id. at 1095 (citing Alice,
`134 S. Ct. at 2358). This is similar to the challenged claims, where the
`“code responsive to the payment validation data to retrieve data from the
`supplier and to write the retrieved data into the data carrier” of claim 1 and
`the steps of “receiving payment validation data and transmitting at least a
`portion of the payment validation to the data supplier,” “reading a stored
`value from the data carrier,” “comparing the store value with said value
`data,” and “outputting to a user the result of said comparing” of claim 15
`describe “performing generic computer functions such as storing, receiving,
`and extracting data” that “behave exactly as expected according to their
`ordinary use.” In re TLI Communications LLC Patent Litigation, 823 F.3d
`607, 612–15 (Fed. Cir. 2016).
`With respect to Amdocs, after generally summarizing that case, Patent
`Owner concludes that “the challenged claims of the ’221 Patent are like the
`
`7
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`eligible claim in Amdocs because they solve a problem unique to computer
`networks . . . and use[] an unconventional technological approach.” Req.
`Reh’g 15 (citing PO Resp. 45). We disagree.
`In Amdocs, the Court held that “[claim 1] is eligible under step two
`because it contains a sufficient ‘inventive concept.’” Amdocs, 841 F.3d at
`1300. The claim at issue recited “computer code for using the accounting
`information with which the first network accounting record is correlated to
`enhance the first network accounting record.” Id. The Court explained that
`the “claim entails an unconventional technological solution (enhancing data
`in a distributed fashion) to a technological problem (massive record flows
`which previously required massive databases).” Id. The Court noted that,
`although the solution requires generic computer components, “the claim’s
`enhancing limitation necessarily requires that these generic components
`operate in an unconventional manner to achieve an improvement in
`computer functionality.” Id. at 1300–1301. When determining that the
`claim was patent-eligible, the Court explained that the “enhancing limitation
`necessarily involves the arguably generic gatherers, network devices, and
`other components working in an unconventional distributed fashion to solve
`a particular technological problem.” Id. at 1301. The Court distinguished
`the claim from the claim held unpatentable in Content Extraction &
`Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed.
`Cir. 2014) on the grounds that the “enhancing limitation . . . necessarily
`incorporates the invention’s distributed architecture—an architecture
`providing a technological solution to a technological problem,” which
`“provides the requisite ‘something more’ than the performance of ‘well-
`
`8
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`understood, routine, [and] conventional activities previously known to the
`industry.’” Id. (citations omitted).
`We are not persuaded that we misapprehended Amdocs. As noted in
`our Final Decision, “[t]he ’221 patent Specification treats as well-known all
`potentially technical aspects of the challenged claims,” which simply require
`generic computer components. Final Dec. 16. Unlike the generic
`components at issue in Amdocs, the generic components recited in 3–10, 15–
`31, and 33 of the ’221 patent do not operate in an unconventional manner to
`achieve an improvement in computer functionality. See id. at 17–21. The
`challenged claims of the ’221 patent simply recite generic memories, data
`types, processors, and “code to” perform well-known functions with no
`description of the underlying implementation or programming. See id. at
`14–19.
`Accordingly, Patent Owner’s Request does not apprise us of sufficient
`reason to modify our Final Decision.
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Request is denied.
`
`
`
`9
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`PETITIONER:
`J. Steven Baughman
`Megan F. Raymond
`James R. Batchelder
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`megan.raymond@ropesgray.com
`james.batchelder@ropesgray.com
`
`PATENT OWNER:
`
`Michael R. Casey
`Wayne Helge
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`smartflash-cbm@dbjg.com
`whelge@davidsonberquist.com
`
`10
`
`