UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GOOGLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00132
`
`Patent 8,336,772 B2
`
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GOOGLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00132
`
`Patent 8,336,772 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 ..................................................................... 10
`
`OVERVIEW OF U.S. PATENT NO. 8,336,772 ............................................ 7
`
`
`IV. THE CLAIMS OF THE ‘772 PATENT ARE STATUTORY ...................... 12
`A.
`The Two-Part Test for Statutory Subject Matter ................................ 12
`
`B.
`
`C.
`
`The Claims Are Statutory Under Mayo and Alice .............................. 13
`
`The Claims Do Not Result in Inappropriate Preemption .................... 31
`
`Preemption under DDR Holdings ............................................. 31
`1.
`Preemption under Mayo and Alice ............................................ 34
`2.
`Non-Infringing Alternatives Confirm a Lack of Preemption ... 36
`3.
`4. The Challenged Claims are Distinguishable from the Claims in
`Ariosa Diagnostics .................................................................... 38
`
`
`V. A FEDERAL COURT HAS ALREADY FOUND CLAIMS 5, 10, 14, AND
`22 OF THE ‘772 PATENT TO BE STATUTORY UNDER § 101 ............. 42
`
`
`VI. SECTION 101 IS NOT A GROUND THAT MAY BE RAISED IN
`COVERED BUSINESS METHOD PATENT REVIEW ............................. 44
`
`
`
`
`
`- 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 ....................................................................................................... 46
`
`WHETHER THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT
`
`MATTER ..................................................................................................... ..46
`
`
`VIII. INVALIDATING PATENT CLAIMS VIA CBM REVIEW IS
`UNCONSTITUTIONAL ............................................................................... 47
`
`VIII.
`
`INVALIDATING PATENT CLAIMS VIA CBM REVIEW IS
`
`UNCONSTITUTIONAL ............................................................................. . .47
`
`IX.
`
`DR. TYGAR’S DECLARATION SHOULD NOT BE CONSIDERED .... ..49
`
`
`IX. DR. TYGAR’S DECLARATION SHOULD NOT BE CONSIDERED ...... 49
`
`X.
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`FINANCIAL PRODUCT OR SERVICE ...................................................... 49
`
`FINANCIAL PRODUCT OR SERVICE .................................................... ..49
`
`
`XI. THE CHALLENGED CLAIMS OF THE ‘772 PATENT ARE
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW .... 56
`
`XI.
`
`THE CHALLENGED CLAIMS OF THE ‘772 PATENT ARE
`
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW....56
`
`
`XII. CONCLUSION .............................................................................................. 58
`
`
`CONCLUSION ............................................................................................ ..58
`
`XII.
`
`
`
`- ii -
`
`
`
`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
`
`2051-2057
`
`Reserved
`
`2059-2074
`
`Reserved
`
`2075
`
`
`
`Order (on Defendants’ Renewed Motion for Judgment as a
`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.
`
`- iii -
`
`
`
`Exhibit Number
`
`2076
`
`Exhibit Description
`
`Deposition Transcript of Anthony J. Wechselberger dated
`July 22, 2015 taken in CBM2015-00028, -00029, -00031, -
`00032 and -00033
`
`2077-2092
`
`Reserved
`
`2093
`
`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 8,336,772 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 1,
`
`5, 9, 10, 14, 21, and 22 of U.S. Patent No. 8,336,772 (“the ‘772 Patent”). Redacted
`
`Corrected Petition, Paper 6 at 1.
`
`In total, there have now been ten CBM petitions filed against the ‘772
`
`Patent, seven of which assert grounds of non-statutory subject matter under 35
`
`U.S.C. § 101.
`
`On April 3, 2014, Apple Inc. filed two petitions, in CBM2014-00110 and -
`
`00111, seeking CBM review of claims 8, 10, 19, 22, 30, and 32 of the ‘772 patent
`
`on § 102 grounds and claims 1, 5, 8, 10, 14, 19, 22, 25, 26, 30, and 32 of the ‘772
`
`Patent on § 103 grounds. The PTAB did not institute review in CBM2014-00110
`
`or -00111. Apple Inc. v. Smartflash LLC, Cases CBM2014-00110, Paper 7 at 19
`
`
`
`- 1 -
`
`
`
`(PTAB September 30, 2014) and CBM2014-00111, Paper 7 at 21-22 (PTAB
`
`September 30, 2014).
`
`On September 26, 2014, another petitioner, Samsung Electronics America,
`
`Inc. (“Samsung”), filed two petitions in CBM2014-00200 and -00204 seeking
`
`CBM review of claims 5, 10, 14, 26, and 32 of the ‘772 Patent on §§ 101, 102, and
`
`103 grounds. CBM2014-00200, Corrected Petition, Paper 4 at 1, 4 (§ 102
`
`grounds); CBM2014-00204, Corrected Petition, Paper 4 at 1, 3 (§§ 101, 102, and
`
`103 grounds).
`
`On November 25, 2014 Apple filed three additional petitions, in CBM2015-
`
`00031, -00032, and -00033, all seeking review of various claims of the ‘772 Patent
`
`as non-statutory under § 101 and obvious under § 103. CBM2015-00031,
`
`Corrected Petition, Paper 5 at 17 (challenging claims 1, 5, 8, and 10 under §§ 101
`
`and 103); CBM2015-00032, Corrected Petition, Paper 5 at 16 (challenging claims
`
`14, 19, and 22 under §§ 101 and 103); CBM2015-00033, Corrected Petition, Paper
`
`5 at 15 (challenging claims 25, 26, 30, and 32 under §§ 101 and 103).
`
`On January 15, 2015 Samsung, filed another petition, in CBM2015-00059,
`
`seeking CBM review of claims 5, 10, 14, 26 and 32 of the ‘772 Patent under § 101.
`
`CBM2015-00059, Petition, Paper 2 at 1, 3.
`
`
`
`- 2 -
`
`
`
`On May 11, 2015 Apple filed another petition, in CBM2015-00133, seeking
`
`CBM review of claims 2-4, 6, 7, 9, 11-13, 15-18, 20, 21, 23, 24, 27-29, 31, and 33-
`
`36 of the ‘772 Patent under § 101. CBM2015-00133, Petition, Paper 2 at 1, 36.
`
`On May 28, 2015 the Board instituted covered business method patent
`
`review under 35 U.S.C. § 101 as to claims 1, 5, 8, and 10 of the ‘772 Patent
`
`(CBM2015-000031, Paper 11 at 19), claims 14, 19, and 22 of the ‘772 Patent
`
`(CBM2015-000032, Paper 11 at 18), and claims 25, 26, 30 and 32 of the ‘772
`
`Patent (CBM2015-000033, Paper 11 at 19).
`
`By Order dated August 5, 2015, the Board instituted Samsung’s § 101
`
`challenges to claims 5, 10, 14, 26, and 32 in CBM2015-00059 and consolidated the
`
`challenges into Apple’s CBM2015-00031 (claims 5 and 10), -00032 (claim 14),
`
`and -00033 (claims 26 and 32). CBM2015-00059, Decision, Institution of Covered
`
`Business Method Patent Review and Grant of Motion for Joinder 37 C.F.R. §
`
`42.208, 37 C.F.R. § 42.222(b), Paper 13 (PTAB August 5, 2015).
`
`In the instant petition, Google seeks review of claims 1, 5, 9, 10, 14, 21, and
`
`22 of the ‘772 Patent under § 101. Redacted Corrected Petition, Paper 6 at 1. The
`
`instant petition is one of ten CBM petition filed against the ‘772 Patent, seven of
`
`which assert grounds of non-statutory subject matter under 35 U.S.C. § 101.
`
`As the Board has already correctly noted in CBM2015-00016, “[t]he 2015
`
`set of petitions assert … challenges pursuant to 35 U.S.C. § 101, which raise
`
`
`
`- 3 -
`
`
`
`purely legal issues.” CBM2015-00016, Paper 6 at 2. The Board should decline to
`
`institute review of claims 1, 5, 9, 10, 14, 21, and 22 of the ‘772 Patent on Google’s
`
`§ 101 non-statutory subject matter grounds because this purely legal challenge is
`
`repetitive and untimely and thus does not “secure the just, speedy, and inexpensive
`
`resolution” of the Board’s proceedings reviewing the ‘772 patent claims. 37
`
`C.F.R. § 42.1(b). The instant Petition seeks CBM review of a number of the same
`
`claims (claims 1, 5, 10, 14, and 22) of the ‘772 Patent already under review on the
`
`same grounds (§ 101) in CBM2015-00031 and -00032. Moreover, the balance of
`
`the claims in the Petition (claims 9 and 21) are dependent claims for which review
`
`of their independent claims was already instituted by the Board on § 101 grounds
`
`in CBM2015-00031, -00032, and -00033, as well as -00059. For example
`
`independent claim 8 is under review in CBM2015-00031 and this petition seeks
`
`review of claim 9, one of claim 8’s dependent claims. Likewise, in CBM2015-
`
`00032, independent claim 19 is under review; this petition seeks review of its
`
`dependent claim 21. If the independent claims 8 and 19 are statutory, so are their
`
`dependent claims 9 and 21 for which review is sought here.
`
`The claims of the ‘772 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). In
`
`
`
`- 4 -
`
`
`
`particular, the claims of the ‘772 Patent overcome the problem of data content
`
`piracy on the Internet “[b]y combining digital rights management with content data
`
`storage using a single carrier” such that “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.” Ex. 1001, ‘772 Patent at 5:33-37.
`
`In other words, the claims of the ‘772 Patent are directed to a system that allows
`
`controlling access to digital content (multimedia content / content data) that
`
`combines on the handheld multimedia terminal / data access terminal both the
`
`digital content and use status data / use rules to control access to the digital
`
`content, so that access control to the digital content can be enforced prior to access
`
`to the digital content.
`
`As demonstrated below, evidence in CBM2015-00031, -00032, and -00033
`
`shows that the claims of the ‘772 Patent do not result in inappropriate preemption,
`
`nor is there any evidence that a disproportionate amount of future innovation is
`
`foreclosed by the claims of the ‘772 Patent.
`
`Additionally, in February 2015, The United States District Court for the
`
`Eastern District of Texas already examined the purely legal issue of whether
`
`claims 5, 10, 14, and 22 (as well as claims 26 and 32) of the ‘772 Patent are
`
`directed to statutory subject matter under 35 U.S.C. § 101. See Exhibit 2049,
`
`Report and Recommendation (on Defendants’ Motions for Summary Judgment of
`
`
`
`- 5 -
`
`
`
`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. Claim 5 depends from claim 1 (both claims are at issue
`
`here) and was found to be statutory in District Court. Claim 10, like claim 9 (both
`
`claims are at issue here), depends from claim 8 and was found to be statutory in
`
`District Court. Independent claim 14, at issue here, was found to be statutory in
`
`District Court. Claim 22, like claim 21 (both claims are at issue here), depends
`
`from claim 19 and was found to be statutory in District Court. Claims 26 and 32 of
`
`the ‘772 Patent were also found to be statutory in District Court.
`
`On July 8, 2015 the 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));
`
`
`
`- 6 -
`
`
`
`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).
`
`Patent Owner submits that the USPTO has already adjudicated the threshold
`
`question of whether the challenged claims comport with 35 U.S.C. § 101 during
`
`the prosecution of the ‘772 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. 8,336,772
`
`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, U.S. Patent No. 8,336,772 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, ‘772 Patent at 1:23-31.
`
`Preferred embodiments described in the ‘772 Patent at 15:61-16:3 illustrate
`
`this further: “FIG. 7 ... shows a variety of content access terminals for accessing
`
`
`
`- 7 -
`
`
`
`data supply computer system 120 over internet 142. The terminals are provided
`
`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 16:12-26.
`
`Referring to preferred embodiments, the ‘772 Patent discloses that a data
`
`supply system may provide users with a seamless purchase and content delivery
`
`experience. Id. at 24:5-10. 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 14:1-8.
`
`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 5:1-12. 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 8:7-11.
`
`
`
`- 8 -
`
`
`
`The payment validation system returns proof that the payment data has been
`
`validated, in the form of “payment validation data,” and the user is able to retrieve
`
`the purchased content from the content provider. See id. at 8:11-14.
`
`The ‘772 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 24:25-27. “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 9:26-28. “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 5:4-12. Further, “use status data [is retrieved] from the
`
`data carrier [to] indicat[e] past use of the stored data.” Id. at 9:39-41.
`
`Thus, as described in the ‘772 Patent at 5:33-37, “[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.”
`
`
`
`- 9 -
`
`
`
`By using a system that combines on the handheld multimedia terminal / data
`
`access terminal both the digital content and use status data / use rules to control
`
`access to the digital content, access control to the digital content can be enforced
`
`prior to access to the digital content. By comparison, unlike a system that uses use
`
`status data / use rules to control access to the digital content as claimed, when a
`
`DVD was physically rented for a rental period, the renter could continue to play
`
`the DVD, even if the renter kept the DVD past the rental period because the use
`
`rules were not associated with the DVD. Similarly, there was no way to track
`
`a use of the DVD such that a system could limit its playback to specific
`
`number of times (e.g., three times) or determine that the DVD had only been
`
`partially used.
`
`
`
`III. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 325(d) AND DECLINE TO INSTITUTE COVERED BUSINESS
`METHOD PATENT REVIEW
`
`Petitioner Google seeks review of claims 1, 5, 9, 10, 14, 21, and 22 of the
`
`‘772 Patent under § 101. Redacted Corrected Petition, Paper 6 at 1. Again, the
`
`instant petition is one of ten CBM petitions filed against the ‘772 Patent, seven of
`
`which assert grounds of non-statutory subject matter under 35 U.S.C. § 101. The
`
`Board has already instituted review of claims 1, 5, 8, 10, 14, 19, 22, 25, 26, 30, and
`
`32 of the ‘772 Patent in the CBM2015-00031, -00032, and -00033 cases. Google’s
`
`
`
`- 10 -
`
`
`
`petition therefore seeks § 101 patentable subject matter review of claims (claims 1,
`
`5, 10, 14, and 22) of the ‘772 Patent for which the board has already instituted
`
`review on § 101 grounds. The balance of claims of the ‘772 Patent for which
`
`Google seeks § 101 review (claims 9 and 21) are dependent claims whose
`
`independent claims (claims 8 and 19) are already under § 101 review in
`
`CBM2015-00031 and -00032.
`
`Patent Owner submits that the Board should follow its precedent from other
`
`Smartflash CBM proceedings and deny Google’s petition. See, Apple Inc. v,
`
`Smartflash LLC, CBM2015-00015, Paper 23 at 18, Decision, Institution of
`
`Covered Business Method Patent Review and Denying Motion for Joinder 37
`
`C.F.R. § 42.208 37 C.F.R. § 42.222(b), (PTAB April 10, 2015)(declining to
`
`institute covered business method patent review of claims under §101, an issue of
`
`law, because Board already instituted covered business method review of same
`
`claims under § 101 in other proceeding).
`
`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 1, 5, 10, 14,
`
`and 22 of the ‘772 Patent on 35 U.S.C. § 101 grounds in CBM2015-00132 because
`
`it has already instituted covered business method review of those same claims on
`
`the same purely legal § 101 grounds in CBM2015-00031 and -00032. Moreover,
`
`the Board should extend the rationale to dependent claims 9 and 21 of the ‘772
`
`
`
`- 11 -
`
`
`
`Patent given that their independent claims 8 and 19 are already under review on the
`
`same purely legal § 101 grounds in CBM2015-00031 and -00032.
`
`“[T]he Board is charged with securing the just, speedy, and inexpensive
`
`resolution of every proceeding.” EMC Corporation, et al. v. Personal Web
`
`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 duplicative action runs afoul of the Board’s charge to
`
`“secure the just, speedy, and inexpensive resolution” of the covered business
`
`method challenges to the ‘772 Patent. Patent Owner respectfully requests that the
`
`Board deny review on Google’s § 101 unpatentable subject matter grounds that are
`
`duplicative of Apple’s grounds that were instituted in CBM2015-00031 and -
`
`00032.
`
`IV. THE CLAIMS OF THE ‘772 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),
`
`
`
`- 12 -
`
`
`
`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
`
`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 ‘772 Patent, from non-statutory
`
`claims. In DDR Holdings, the Federal Circuit analyzed claims, like the ‘772 Patent
`
`claims 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
`
`
`
`- 13 -
`
`
`
`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 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. The claims of the ‘772 Patent are not directed to
`
`mental processes or processes performed using pen and paper, rather the claims are
`
`directed to particular devices that can download and store digital content into non-
`
`volatile memory / a data carrier. By using a system that combines on the data
`
`carrier both the digital content and payment data and/or use status data / use rules
`
`to control access to the digital content when obtaining digital content, the claimed
`
`multimedia terminals / data access terminals enable digital content to be obtained
`
`effectively and legitimately, including, for example, by allowing or prohibiting
`
`
`
`- 14 -
`
`
`
`access to the downloaded or stored content in accordance with rules as required or
`
`specified by content rights owners.
`
`Thus, the claims are rooted in computer technology in order to overcome a
`
`problem specifically arising in the realm of computer networks – that of digital
`
`data piracy, and, like in DDR Holdings, “address … a challenge particular to the
`
`Internet.” Id. 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).
`
`Challenged independent claim 1 of the ‘772 Patent meets the requisites of §
`
`101 under DDR Holdings. Challenged claim 5 depends from claim 1, and if claim
`
`1 is statutory, then so is claim 5. Claim 1 recites a handheld multimedia terminal
`
`(a system) that parallels the structure of the statutory claim 19 in DDR Holdings.
`
`The table below sets forth a mapping of claim 1 of the ‘772 Patent to claim 19 of
`
`
`
`- 15 -
`
`
`
`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
`
`19. A system useful in an outsource
`
`“1. A handheld multimedia terminal,
`
`provider serving web pages offering
`
`comprising:”
`
`commercial opportunities, the system
`
`comprising:
`
`(a) a computer store containing data, for
`
`“a wireless interface configured to
`
`each of a plurality of first web pages,
`
`interface with a wireless network for
`
`defining a plurality of visually
`
`accessing a remote computer system;
`
`perceptible elements, which visually
`
`non-volatile memory configured to store
`
`perceptible elements correspond to the
`
`multimedia content, wherein said
`
`plurality of first web pages; (i) wherein
`
`multimedia content comprises one or
`
`each of the first web pages belongs to
`
`more of music data, video data and
`
`one of a plurality of web page owners;
`
`computer game data;
`
`(ii) wherein each of the first web pages
`
`a program store storing processor
`
`displays at least one active link
`
`control code;”
`
`associated with a commerce object
`
`associated with a buying opportunity of
`
`a selected one of a plurality of
`
`
`
`- 16 -
`
`
`
`Claim element from DDR Holdings
`
`Similar claim element from claim 1
`
`merchants; and (iii) …
`
`(b) a computer server at the outsource
`
`“a processor coupled to said non-
`
`provider, which computer server is
`
`volatile memory, said program store,
`
`coupled to the computer store and
`
`said wireless interface and
`
`programmed to:
`
`a user interface to allow a user to select
`
`and play said multimedia content;
`
`a display for displaying one or both of
`
`said played multimedia content and data
`
`relating to said played multimedia
`
`content; wherein the processor control
`
`code comprises:”
`
`(i) receive from the web browser of a
`
`“code to request identifier data
`
`computer user a signal indicating
`
`identifying one or more items of
`
`activation of one of the links displayed
`
`multimedia content stored in the non-
`
`by one of the first web pages;
`
`volatile memory;
`
`code to receive said identifier data;
`
`code to present to a user on said display
`
`said identified one or more items of
`
`multimedia content available from the
`
`
`
`- 17 -
`
`
`
`Claim element from DDR Holdings
`
`Similar claim element from claim 1
`
`non-volatile memory;”
`
`(ii) automatically identify as the source
`
`“code to receive a user selection to
`
`page the one of the first web pages on
`
`select at least one of said one or more of
`
`which the link has been activated;
`
`said stored items of multimedia
`
`content;”
`
`(iii) in response to identification of the
`
`“code responsive to said user selection
`
`source page, automatically retrieve the
`
`of said at least one selected item of
`
`stored data corresponding to the source
`
`multimedia content to transmit payment
`
`page; and
`
`data relating to payment for said at least
`
`one selected item of multimedia content
`
`via said wireless interface for validation
`
`by a payment validation system;”
`
`(iv) using the data retrieved,
`
`“code to receive payment validation
`
`automatically generate and transmit to
`
`data via said wireless interface defining
`
`the web browser a second web page that
`
`if said payment validation system has
`
`displays: (A) information associated
`
`validated payment for said at least one
`
`with the commerce object associated
`
`selected item of multimedia content; and
`
`with the link that has been activated, and
`
`code to control access to said at least
`
`(B) the plurality of visually perceptible
`
`one selected item of multimedia content
`
`
`
`- 18 -
`
`
`
`Claim element from DDR Holdings
`
`Similar claim element from claim 1
`
`elements visually corresponding to the
`
`on said terminal responsive to said
`
`source page.
`
`payment validation data…”
`
`
`
`Similarly, independent claim 8 of the ‘772 Patent meets the requisites of
`
`§ 101 under DDR Holdings. Challenged claims 9 and 10 depend from claim 8, and
`
`if claim 8 is statutory, then so too are challenged claims 9 and 10. Claim 8 recites
`
`a data access terminal (a system) that parallels the structure of the statutory claim
`
`19 in DDR Holdings. The table below sets forth a mapping of claim 8 of the ‘772
`
`Patent to claim 19 of the patent in DDR Holdings and shows that claim 8 is
`
`directed to statutory subject matter.
`
`Claim element from DDR Holdings
`
`Similar claim element from claim 8
`
`19. A system useful in an outsource
`
`“8. A data access terminal for
`
`provider serving web pages offering
`
`controlling access to one or more
`
`commercial opportunities, the system
`
`content data items stored on a data
`
`comprising:
`
`carrier, the data access terminal
`
`comprising:”
`
`(a) a computer store containing data, for
`
`“a user interface;
`
`each of a plurality of first web pages,
`
`a data carrier interface;
`
`defining a plurality of visually
`
`a program store storing code
`
`
`
`- 19 -
`
`
`
`Claim element from DDR Holdings
`
`Similar claim element from claim 8
`
`perceptible elements, which visually
`
`implementable by a processor; and”
`
`perceptible elements correspond to the
`
`plurality of first web pages; (i) wherein
`
`each of the first
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