IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Attorney Docket No:
`01980-00035-77201
`
`Petitioner: Google Inc.
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`In re Covered Business Method Review
`of:
`
`
`U.S. Patent No. 8,336,772
`
`
`Issued: December 25, 2012
`
`Inventors: Patrick Racz and
` Hermen-ard Hulst
`
`
`
`
`Application No. 13/212,047
`
`Filed: August 17, 2011
`
`For: DATA STORAGE AND
`ACCESS SYSTEMS
`
`CORRECTED PETITION FOR COVERED BUSINESS METHOD PATENT
`REVIEW OF UNITED STATES PATENT NO. 8,336,772 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
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Attorney Docket No:
`01980-00035-77201
`
`Petitioner: Google Inc.
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`In re Covered Business Method Review
`of:
`
`
`U.S. Patent No. 8,336,772
`
`
`Issued: December 25, 2012
`
`Inventors: Patrick Racz and
` Hermen-ard Hulst
`
`
`
`
`Application No. 13/212,047
`
`Filed: August 17, 2011
`
`For: DATA STORAGE AND
`ACCESS SYSTEMS
`
`CORRECTED PETITION FOR COVERED BUSINESS METHOD PATENT
`REVIEW OF UNITED STATES PATENT NO. 8,336,772 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 ’772 PATENT IS A COVERED BUSINESS METHOD
`PATENT ................................................................................................ 2
`
`1.
`
`2.
`
`The Board Has Already Found That Claim 8 Qualifies
`The ’772 Patent As A CBM Patent ............................................. 3
`
`Challenged Claim 21 Also Qualifies The ’772 Patent As
`A CBM Patent ............................................................................. 4
`
`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) .................. 11
`
`LEAD AND BACKUP COUNSEL UNDER 37 C.F.R. §
`42.8(B)(2) ............................................................................................ 11
`
`IV. PAYMENT OF FEES ................................................................................... 12
`
`V.
`
`CLAIM CONSTRUCTION .......................................................................... 12
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`“DATA CARRIER” ............................................................................ 14
`
`“PAYMENT DATA” .......................................................................... 15
`
`“PAYMENT VALIDATION SYSTEM” ........................................... 16
`
`“PAYMENT VALIDATION DATA” ................................................ 17
`
`“SUPPLEMENTARY DATA” ........................................................... 19
`
`“PROGRAM STORE” ........................................................................ 20
`
`
`
`i
`
`
`
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE UNDER 35
`U.S.C. § 101 ................................................................................................... 21
`
`A.
`
`THE CHALLENGED CLAIMS ARE DIRECTED TO A
`PATENT-INELIGIBLE ABSTRACT IDEA ..................................... 23
`
`1.
`
`2.
`
`The Challenged Claims Are Directed To The Abstract
`Idea Of Controlling Access To Something Based On One
`Or More Conditions .................................................................. 24
`
`The Abstract Idea Of Controlling Access To Something
`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
`Patent Eligible Inventions ......................................................... 30
`
`C.
`
`D.
`
`PREEMPTION CONCERNS CONFIRM PATENT
`INELIGIBILITY ................................................................................. 35
`
`THE MACHINE-OR-TRANSFORMATION TEST
`CONFIRMS PATENT INELIGIBILITY ........................................... 36
`
`VII. CONCLUSION .............................................................................................. 37
`
`
`
`
`ii
`
`
`
`Exhibit No.
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 8,336,772 to Racz et al. (“the ’772 patent”)
`
`Declaration of Dr. Justin Douglas Tygar Regarding the ’772
`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
`
`1025
`
`1026
`
`1027
`
`Description
`
`U.S. Patent No. 8,336,772 Claim Chart—Google (Android),
`Exhibit 5 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)
`
`Reserved
`
`U.S. Patent No. 7,942,317 to Racz et al. (“the ’317 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. 8,118,221 to Racz et al. (“the ’221 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)
`
`Reserved
`
`Reserved
`
`U.S. Patent No. 7,334,720 to Racz et al. (“the ’720 patent”)
`
`
`
`iv
`
`
`
`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 1, 5, 9, 10, 14, 21, and 22 of U.S. Patent No. 8,336,772
`
`(“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 all of the challenged claims are unpatentable for the
`
`reasons set forth herein and respectfully requests review of, and judgment against,
`
`claims 1, 5, 9, 10, 14, 21, and 22 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 method steps inherent in that abstract
`
`idea, such as receiving a request for access, transmitting payment data for
`
`validation, and controlling access based on validation of payment. The challenged
`
`claims contain no inventive, technological limitations concerning how to perform
`
`or implement the claimed idea; at most, the claims simply convey that controlling
`
`access based on payment—which has been a staple of commerce for more than a
`
`century—could be performed on a generic computer.
`
`
`
`1
`
`
`
`For these reasons, among others, the Board has already determined that
`
`seventeen claims of five patents that share an identical specification with the ’772
`
`patent are “more likely than not drawn to a patent-ineligible abstract idea” and are
`
`thus “unpatentable under 35 U.S.C. § 101.” E.g., Samsung Elecs. Am., Inc. v.
`
`Smartflash LLC, CBM2014-00190, Paper 9 at 13, 16 (P.T.A.B. Apr. 2, 2015). The
`
`Board should reach the same conclusion with respect to the challenged claims here.
`
`II.
`
`PETITIONER HAS STANDING
`
`A. THE ’772 PATENT IS A COVERED BUSINESS METHOD
`PATENT
`
`The ’772 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).
`
`A “covered business method patent” is “a patent that claims a method or
`
`corresponding apparatus for performing data processing or other operations used in
`
`the practice, administration, or management of a financial product or service,
`
`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
`
`
`
`2
`
`
`
`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 8 Qualifies The ’772
`Patent As A CBM Patent
`
`The Board has on four occasions determined “that the ’772 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 Inc. v.
`
`Smartflash LLC, CBM2014-00110, Paper 7 at 14 (P.T.A.B. Sept. 30, 2014); Apple
`
`Inc. v. Smartflash LLC, CBM2014-00111, Paper 7 at 14 (P.T.A.B. Sept. 30, 2014);
`
`Samsung Elecs. Am., Inc. v. Smartflash LLC, CBM2014-00200, Paper 9 at 12
`
`(P.T.A.B. Mar. 30, 2015); Samsung Elecs. Am., Inc. v. Smartflash LLC, CBM2014-
`
`00204, Paper 9 at 13 (P.T.A.B. Mar. 30, 2015). In so finding, the Board focused
`
`on claim 8 of the ’772 patent. Specifically, the Board found that claim 8 satisfies
`
`“the financial in nature requirement of § 18(d)(1)” because “payment is required”
`
`by that claim. Apple, CBM2014-00110, Paper 7 at 12; Apple, CBM2014-00111,
`
`
`
`3
`
`
`
`Paper 7 at 12; Samsung, CBM2014-00200, Paper 9 at 10; Samsung, CBM2014-
`
`00204, Paper 9 at 11. The Board also found that “claim 8 is merely the recitation
`
`of a combination of known technologies, which indicates that it is not a patent for a
`
`technological invention.” Apple, CBM2014-00110, Paper 7 at 13, 14 (“[W]e
`
`conclude that claim 8 does not recite a technological invention and is eligible for a
`
`covered business method patent review.”); Apple, CBM2014-00111, Paper 7 at 13,
`
`14; Samsung, CBM2014-00200, Paper 9 at 11, 12; Samsung, CBM2014-00204,
`
`Paper 9 at 12, 13. Based on the Board’s prior conclusions with respect to claim 8,
`
`the ’772 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 21 Also Qualifies The ’772 Patent As A
`CBM Patent
`
`Although the Board’s previous findings with respect to claim 8 are sufficient
`
`to establish the ’772 patent as a CBM patent here, challenged claim 21 further
`
`supports the same conclusion. Claim 21 recites:
`
`21. A data access terminal as claimed in claim 19, wherein said data
`
`carrier is integrated into said data access terminal, and wherein said
`
`data carrier comprises flash memory.
`
`Claim 19, from which challenged claim 21 depends, recites:
`
`
`
`4
`
`
`
`19. A data access terminal for retrieving a content data item from a
`
`data supplier and providing the retrieved data item to a data carrier,
`
`the data access terminal comprising:
`
`a first interface for communicating with the data supplier;
`
`a user interface;
`
`a data carrier interface;
`
`a program store storing code implementable by a
`
`processor; and
`
`a processor coupled to the user interface, to the data
`
`carrier interface and to the program store for
`
`implementing the stored code, the code comprising:
`
`code to request identifier data identifying one or more
`
`content data items available for retrieving;
`
`code to receive said identifier data identifying said one or
`
`more content data items available for retrieving;
`
`code to request content information pertaining to at least
`
`one of said one or more content data items identified by
`
`said identified data;
`
`code to receive said content information;
`
`code to present said content information to a user via said
`
`user interface pertaining to said identified one or more
`
`content data items available for retrieving;
`
`
`
`5
`
`
`
`code to receive a user selection selecting at least one of
`
`said one or more of said content data items available for
`
`retrieving;
`
`code responsive to said user selection of said selected at
`
`least one content data item to transmit payment data
`
`relating to payment for said selected at least one
`
`content item for validation by a payment validation
`
`system;
`
`code to receive payment validation data defining if
`
`said payment validation system has validated
`
`payment for said selected at least one content data
`
`item; and
`
`code responsive to the payment validation data to
`
`retrieve said selected at least one content data item
`
`from a data supplier and to write said retrieved at least
`
`one content data item into said data carrier.1
`
`Because claim 21 is directed to subject matter that is both financial in nature and
`
`devoid of any technological invention, the ’772 patent is eligible for review under
`
`the transitional covered business method patent program.
`
`(a) Claim 21 Covers Subject Matter That Is Financial In
`Nature
`
`The ’772 patent relates to the idea of providing data in exchange for
`
`payment and controlling access to data based on payment. Ex. 1001 at 1:62-2:19.
`
`1 All emphasis in this petition is added unless otherwise indicated.
`
`
`
`6
`
`
`
`The specification of the ’772 patent repeatedly emphasizes payment in describing
`
`the purported invention. Id. at 1:62-2:2 (“According to the present invention there
`
`is therefore provided a method of providing portable data comprising . . . payment
`
`validation means; . . . reading payment information from the payment validation
`
`means using the terminal; validating the payment information; . . . .”); see also id.
`
`at 6:64-67 (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
`
`20:59-61 (“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
`
`13:43-55 (explaining that “e-payment systems . . . are coupled to banks” and that
`
`“these provide an e-payment system according to, for example, MONDEX, Proton,
`
`and/or Visa cash compliant standards”). Indeed, in seeking to enforce the ’772
`
`patent in litigation, the patent holder conceded that the alleged invention relates to
`
`a financial activity or transaction, stating that “[t]he 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 21 explicitly describes transmitting payment data relating to payment
`
`for validation by a payment validation system, receiving payment validation data
`
`defining if the payment validation system has validated payment, and retrieving the
`
`
`
`7
`
`
`
`item paid for in response to the payment validation data. It thus clearly claims
`
`“activities that are financial in nature, incidental to a financial activity or
`
`complementary to a financial activity.” CBM Definitions, 77 Fed. Reg. at 48,735
`
`(quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
`
`Schumer)); Apple, CBM2014-00110, Paper 7 at 10 (finding that “payment
`
`validation is a financial activity” and “conditioning data access based on payment
`
`validation amounts to a financial service”); Apple, CBM2014-00111, Paper 7 at 11
`
`(same); Samsung, CBM2014-00200, Paper 9 at 8 (same); Samsung, CBM2014-
`
`00204, Paper 9 at 9 (same).
`
`(b) Claim 21 Does Not Cover A Technological Invention
`
`Claim 21 of the ’772 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.” C.F.R. § 42.301(b). Accordingly, the ’772
`
`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).
`
`As an initial matter, no “technological feature” of claim 21 is “novel and
`
`unobvious.” See Ex. 1002 at ¶¶ 57-64. “Mere recitation of known technologies,
`
`such as computer hardware, communication or computer networks, software,
`
`memory, computer-readable storage medium, scanners, display devices or
`
`
`
`8
`
`
`
`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 21 recites just
`
`such known technologies—i.e., a “data access terminal” (with “interfaces,” a
`
`“program store storing code,” and a “processor”) and a “data carrier.” The ’772
`
`patent specification confirms that such computer components are in no way novel
`
`or unobvious, explaining, for example, that a “data access terminal may be a
`
`conventional computer” and 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.” Ex. 1001 at 3:40, 4:14-16, 11:34-35, 17:17-20; see Ex. 1002
`
`at ¶ 58-59; see also, e.g., Apple, CBM2014-00110, Paper 7 at 12 (finding that the
`
`“data access terminal” of the ’772 patent is “a generic hardware device known in
`
`the prior art”); Samsung Elecs. Am., Inc. v. Smartflash LLC, CBM2014-00194,
`
`Paper 9 at 10 (P.T.A.B. Apr. 2, 2015) (finding that the “data carrier” described in a
`
`related patent with a specification identical to that of the ’772 patent “is a generic
`
`hardware device known in the prior art”). In other words, as the Board has
`
`previously acknowledged, “the ’772 patent makes clear that the asserted novelty of
`
`the [alleged] invention is not in any specific improvement of software or
`
`hardware.” Apple, CBM2014-00110, Paper 7 at 13; Apple, CBM2014-00111,
`
`Paper 7 at 13; Samsung, CBM2014-00200, Paper 9 at 11; Samsung, CBM2014-
`
`
`
`9
`
`
`
`00204, Paper 9 at 12. Claim 21 does not recite any technological feature that is
`
`novel and unobvious over the prior art, and it is thus not a claim for a technological
`
`invention.
`
`Moreover, the subject matter of claim 21 does not solve “a technical
`
`problem using a technical solution.” 37 C.F.R. § 42.301(b). The ’772 patent
`
`purportedly solves a business problem—namely, the problem of consumers
`
`accessing content (like videos and music) without paying for it. Ex. 1001 at 1:32-
`
`58. Indeed, the ’772 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 1:56-57, 12:37-40. Thus, for this reason as well, claim 21 does not recite a
`
`technological invention, and the ’772 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 ’772 patent against the petitioner.
`
`
`
`10
`
`
`
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(B)(2)
`
`The patent holder has also asserted the ’772 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 Elecs. Co., 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. 6:15-cv-145
`
`(E.D. Tex.). Petitioner identifies the following administrative matters, including
`
`patent applications to which the ’772 patent claims the benefit of priority: App’n
`
`No. 10/111,716 (filed as No. PCT/GB00/4110); App’n No. 11/336,758; App’n No.
`
`12/014,558; App’n No. 12/943,872; App’n No. 13/212,047; CBM Nos. CBM2014-
`
`00110, CBM2014-00111, CBM2015-00031, CBM2015-00032, CBM2015-00033
`
`filed by Apple Inc.; and CBM Nos. CBM2014-00200, CBM2014-00204,
`
`CBM2015-00059 filed by Samsung Electronics America, Inc., Samsung
`
`Electronics Co., Ltd., and Samsung Telecommunications America, LLC
`
`(“Samsung”).
`
`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 &
`
`
`
`11
`
`
`
`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
`
`
`
`The challenged claims must be given their broadest reasonable
`
`interpretations (“BRI”). 37 C.F.R. § 42.300(b). When there is co-pending
`
`litigation regarding the challenged claims, the patent holder’s litigation positions
`
`regarding claim scope are instructive, especially where those positions support a
`
`broad reading of the claims. See, e.g., SAP Am., Inc. v. Versata Dev. Grp., Inc.,
`
`CBM2012-00001, Paper 70 at 19-24 (P.T.A.B. June 11, 2013). Any constructions
`
`adopted by a district court are also highly relevant because it would be
`
`“incongruous to adopt a narrower construction in [a post-grant proceeding],
`
`wherein the claims are construed using the broadest reasonable interpretation
`
`standard, than was adopted in [a district court], in which a narrower, Phillips
`
`construction standard applied.” Ariosa Diagnostics v. Isis Innovation Ltd.,
`
`IPR2012-00022, Paper 166 at 24 (P.T.A.B. Sept. 2, 2014); Foursquare Labs Inc. v.
`
`Silver State Intellectual Techs., Inc., IPR2014-00159, Paper 13 at 3-4 (P.T.A.B.
`
`
`
`12
`
`
`
`Aug. 1, 2014) (revisiting and broadening a previous construction to be at least as
`
`broad as the district court’s construction).
`
`
`
`In light of these principles, any constructions adopted in this proceeding
`
`should be at least as broad as those adopted by the district court in Smartflash LLC,
`
`et al. v. Samsung Elecs. Co., Ltd., et al., No. 6:13-cv-448 (E.D. Tex.) and
`
`Smartflash LLC, et al. v. Apple Inc., et al., No. 6:13-cv-447 (E.D. Tex.).2 Ariosa,
`
`IPR2012-00022, Paper 166 at 24; Foursquare, IPR2014-00159, Paper 13 at 3-4.
`
`Moreover, any constructions adopted in this proceeding should be heavily
`
`informed by the patent holder’s positions in its various district court actions, as the
`
`patent holder should not be permitted to both wield broad constructions in an
`
`attempt to establish infringement in the district court and simultaneously seek to
`
`establish validity using narrower constructions here. See SAP, CBM2012-00001,
`
`Paper 70 at 20 n.16, 23; Ariosa, IPR2012-00022, Paper 166 at 24; Foursquare,
`
`IPR2014-00159, Paper 13 at 3-4. For these reasons and those noted below, the
`
`Board should adopt the following constructions for the terms “data carrier,”
`
`
`2 Because the standard for claim construction here is different than the
`
`standard used in litigation, Google expressly reserves the right to argue in litigation
`
`a different claim construction for any term in the ’772 patent, as appropriate to that
`
`proceeding. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 1369
`
`(Fed. Cir. 2004); MPEP § 2111.
`
`
`
`13
`
`
`
`“payment data,” “payment validation system,” “payment validation data,”
`
`“supplementary data,” and “program store.”
`
`A.
`
`“DATA CARRIER”
`
`
`
`The term “data carrier” is recited in challenged claims 9, 10, 21, and 22.
`
`Although the Board did not find it necessary to expressly construe “data carrier” in
`
`connection with its previous findings that numerous claims of patents sharing the
`
`same specification as the ’772 patent are more likely than not invalid under Section
`
`101, the Board has stated that the “data carrier” of those related patents “is a
`
`generic hardware device known in the prior art.” E.g., Samsung, CBM2014-
`
`00194, Paper 9 at 10 (noting that the specification discloses that a data carrier
`
`“may be a ‘standard smart card’”) (citing Ex. 1027 at 11:36-39).
`
`
`
`It should also be noted that, in the Samsung and Apple district court
`
`proceedings, the patent holder contended that the “data carrier” claimed in the ’772
`
`patent encompasses any “medium capable of storing information.” Ex. 1012 at 17-
`
`22. The district court agreed, noting that a “data carrier” need not be limited to any
`
`particular physical structure. Ex. 1011 at 19-22. And in the Google district court
`
`action, the patent holder has continued to assert that
`
`
`
` E.g.,
`
`Ex. 1016 at 323-24, 730, 1687.
`
`
`
`14
`
`
`
`
`
`In light of the Board’s previous observations, the district court’s construction
`
`in the Samsung and Apple actions, the patent holder’s litigation position vis-à-vis
`
`the petitioner in the Google action, and the BRI standard applicable here, the Board
`
`should construe “data carrier” to mean: “any medium, regardless of structure, that
`
`is capable of storing information.” See Ex. 1002 at ¶¶ 33-36.
`
`B.
`
`“PAYMENT DATA”
`
`
`
`All of the challenged claims of the ’772 patent recite the term “payment
`
`data.” The Board has not found it necessary to expressly construe “payment data”
`
`in connection with its previous findings that numerous claims of patents sharing
`
`the same specification as the ’772 patent are more likely than not invalid under
`
`Section 101. E.g., Samsung Elecs. Am., Inc. v. Smartflash LLC, CBM2014-00190,
`
`Paper 9 at 11-16 (P.T.A.B. Apr. 2, 2015).
`
`
`
`Nonetheless, the breadth of the patent holder’s and the district court’s
`
`construction of the term “payment data” is worth noting here. In the Samsung and
`
`Apple actions, at the patent holder’s urging, the district court construed “payment
`
`data” to mean “data that can be used to make a payment for content.” Ex. 1011 at
`
`11. In arriving at this construction, the district court stated that “[t]he specification
`
`and cited claim language use payment data broadly to refer to whatever data is
`
`being used ‘for making a payment.’” Id. (citing the ’720 patent specification (Ex.
`
`1027)—which is identical to the ’772 patent specification—at 21:15). In the
`
`
`
`15
`
`
`
`Google district court action, the patent holder has asserted that
`
`
`
`
`
` E.g., Ex. 1016 at 1744.
`
`
`
`In light of the district court’s construction in the Samsung and Apple actions,
`
`the patent holder’s litigation position vis-à-vis the petitioner in the Google district
`
`court proceedings, and the BRI standard applicable here, the Board should construe
`
`“payment data” to mean: “any information that can be used in connection with the
`
`process of making a payment for content.” See Ex. 1002 at ¶¶ 37-39.
`
`C.
`
`“PAYMENT VALIDATION SYSTEM”
`
`
`
`All of the challenged claims of the ’772 patent recite the term “payment
`
`validation system.” Although the Board has not previously found it necessary to
`
`expressly construe “payment validation system” in connection with its previous
`
`finding that numerous claims of patents sharing the same specification as the ’772
`
`patent are more likely than not invalid under Section 101, the Board has noted that
`
`the specification of the ’772 patent “discloses that the required payment validation
`
`system may be one that is already in use or otherwise available.” E.g., Apple,
`
`CBM2014-00110, Paper 7 at 12 (noting that the specification of the ’772 patent
`
`discloses that “[t]he payment validation system may be part of the data supplier’s
`
`
`
`16
`
`
`
`computer systems or it may be a separate e-payment system”) (quoting Ex. 1001 at
`
`8:64-66).
`
`
`
`It should also be noted that in the Samsung and Apple actions, the district
`
`court construed “payment validation system” broadly to mean a “system that
`
`returns payment validation data based on an attempt to validate payment data.”
`
`Ex. 1011 at 11-14. And in the Google district court proceedings, the patent holder
`
`has identified
`
`
`
`
`
` E.g., Ex. 1016 at 1744.
`
`
`
`In light of the district court’s construction in the Samsung and Apple actions,
`
`the patent holder’s litigation position vis-à-vis the petitioner in the Google district
`
`court proceedings, and the BRI standard applicable here, the Board should construe
`
`“payment validation system” to mean: “any system that returns information in
`
`connection with an attempt to validate payment data” (wherein “payment data”
`
`must be construed broadly to include “any information that can be used in
`
`connection with the process of making a payment for content”). See Ex. 1002 at
`
`¶¶ 40-42.
`
`D.
`
`“PAYMENT VALIDATION DATA”
`
`
`
`All challenged claims recite the term “payment validation data.” The Board
`
`has not found it necessary to expressly construe “payment validation data” in
`
`
`
`17
`
`
`
`connection with its previous findings that numerous claims of patents sharing the
`
`same specification as the ’772 patent are more likely than not invalid under Section
`
`101. E.g., Samsung, CBM2014-00190, Paper 9 at 11-16.
`
`
`
`Nonetheless, the breadth of the patent holder’s and the district court’s
`
`construction of the term “payment validation data” is notable. In the Samsung and
`
`Apple actions, the district court ruled that “payment validation data” should be
`
`given its plain meaning, and the patent holder contended that, according to its plain
`
`meaning, “payment validation data” need not indicate that a payment has been
`
`authorized. Ex. 1011 at 14-15; Ex. 1012 at 11-12 (citing the ’720 patent
`
`specification (Ex. 1027)—which is identical to the ’772 patent specification—at,
`
`e.g., 13:53-62). In the Google litigation proceedings, the patent holder has
`
`contended that the term
`
` Ex. 1016 at
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
