Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 40
`Entered: January 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC. and GOOGLE, INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-001331
`Patent 8,336,772 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and GREGG I. ANDERSON,
`Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 Google’s challenge to claims 9 and 21 based on 35 U.S.C. § 101 in
`CBM2015-00132 was consolidated with this proceeding. Paper 10.
`
`
`Tel: 571-272-7822
`
`Paper 40
`Entered: January 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC. and GOOGLE, INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-001331
`Patent 8,336,772 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and GREGG I. ANDERSON,
`Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 Google’s challenge to claims 9 and 21 based on 35 U.S.C. § 101 in
`CBM2015-00132 was consolidated with this proceeding. Paper 10.
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`INTRODUCTION
`Apple Inc. (“Apple”), filed a Petition to institute covered business
`method patent review of claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24,
`27–29, 31, and 33–36 of U.S. Patent No. 8,336,772 B2 (Ex. 1001, “the ’772
`patent”) pursuant to § 18 of the Leahy-Smith America Invents Act (“AIA”).
`Paper 2 (“Pet.”).2 On November 16, 2015, we instituted a covered business
`method patent review (Paper 7, “Institution Decision” or “Inst. Dec.”) based
`upon Apple’s assertion that claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24,
`27–29, 31, and 33–36 (“the challenged claims”) are directed to patent
`ineligible subject matter under 35 U.S.C. § 101. Inst. Dec. 22.
`On May 8, 2015, Google Inc. (“Google”) filed a corrected Petition
`requesting covered business method patent review of claims 1, 5, 9, 10, 14,
`21, and 22 of the ’772 patent on the ground that they are directed to patent
`ineligible subject matter under 35 U.S.C. § 101. Google Inc. v. Smartflash
`LLC, Case CBM2015-00132 (Paper 6, “Google Petition”). On June 29,
`2015, Google filed a Motion for Joinder (CBM2015-00132, Paper 10)
`seeking to consolidate its challenge with earlier-filed petitions for covered
`business method patent reviews of the ’772 patent in Apple Inc. v.
`Smartflash LLC, Cases CBM2015-00031 and CBM2015-00032, which were
`instituted on May 28, 2015. See Apple Inc. v. Smartflash, LLC, Case
`CBM2015-00031, slip. op. at 19–20 (PTAB May 28, 2015) (Paper 11)
`(instituting review of claims 1, 5, 8, and 10 of the ’772 patent under 35
`U.S.C. § 101); and Apple Inc. v. Smartflash, LLC, Case CBM2015-00032,
`slip. op. at 18–19 (PTAB May 28, 2015) (Paper 11) (instituting review of
`
`
`2 Pub. L. No. 112–29, 125 Stat. 284, 296–07 (2011).
`
`2
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`claims 14, 19, and 22 of the ’772 patent under 35 U.S.C. § 101). On
`December 1, 2015, we granted Google’s Petition and consolidated its
`challenge to claims 1, 5, 9, and 10 with CBM2015-00031 and consolidated
`its challenge to claims 14, 21, and 22 with CBM2015-00032. Google Inc. v.
`Smartflash LLC, Case CBM2015- 00132 (Paper 14). Subsequently, we
`granted an unopposed request by Apple and Google (collectively,
`“Petitioner”) to consolidate Google’s challenge to claims 9 and 21 with
`CBM2015-00133, instead of with CBM2015-00031 and CBM2015-00032,
`respectively. Paper 10.
`Subsequent to institution, Smartflash LLC (“Patent Owner”) filed a
`Patent Owner Response (Paper 21, “PO Resp.”) and Petitioner filed a Reply
`(Paper 25, “Pet. Reply”) to Patent Owner’s Response. Patent Owner, with
`authorization, filed a Notice of Supplemental Authority. Paper 33
`(“Notice”). Petitioner filed a Response to Patent Owner’s Notice. Paper 34
`(“Notice Resp.”).
`In our Final Decision, we determined Petitioner had established, by a
`preponderance of the evidence, that claims 2–4, 6, 7, 9, 11–13, 15–18, 20,
`21, 23, 24, 27–29, 31, and 33–36 of the ’772 patent are directed to patent
`ineligible subject matter under 35 U.S.C. § 101. Paper 38 (“Final Dec.”), 3,
`34. Patent Owner requests rehearing of the Final Decision with respect to
`patent ineligibility of the challenged claims under § 101. Paper 39
`(“Request” or “Req. Reh’g”). Having considered Patent Owner’s Request,
`we decline to modify our Final Decision.
`
`
`3
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`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.
`
`
`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
`Holdings3, Enfish4, and Bascom5. 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. 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
`
`
`3 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
`4 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
`5 BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC, 827 F.3d
`1341 (Fed. Cir. 2016).
`
`4
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`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 offers no explanation
`as to how we misapprehended or overlooked any particular “matter [that]
`was previously addressed in a motion, an opposition, or a reply.” In fact,
`Patent Owner does not cite to its papers even once when alleging an
`argument was misapprehended with respect to these cases. See id. at 5–11.
`Rather than providing a proper request for rehearing, addressing particular
`matters that we 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 (noting that the Board rejected
`Smartflash’s argument with respect to each of DDR Holdings, Enfish, and
`Bascom). The only paper cited by Patent Owner is our Final Decision,
`which, as noted above, addresses Patent Owner’s arguments related to DDR
`Holdings (Final Dec. 18–22), Enfish (id. at 12), and Bascom (id. at 22–23).
`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 McRO6
`
`
`6 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
`2016).
`
`5
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`and Amdocs7, 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.
`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 11–12), and concluding that
`[b]ecause the challenged claims are a technological improvement
`over the then-existing systems and methods, and limit transfer
`and retrieval of multimedia content based on payment validation
`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 (citing Ex. 1001, 26:35–37 (claim 1)). 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
`
`
`7 Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
`2016).
`
`6
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`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 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. 12–13
`(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 “payment validation data” in claim 2, for example, is merely a
`condition for “enabl[ing] access to . . . multimedia content” that the ’772
`patent explains “will normally be dependent upon payments made for data
`stored on the data carrier” (i.e., allowing access when the data has been
`purchased). Ex. 1001, 9:28–30.
`With respect to Amdocs, after generally summarizing that case, Patent
`Owner concludes that “the challenged claims of the ’772 Patent are like the
`
`7
`
`
`
`CBM2015-00133
`Patent 8,336,772 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. 55)8. 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
`
`
`8 This is the only instance where one of Patent Owner’s papers is cited in
`the Request.
`
`8
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`“provides the requisite ‘something more’ than the performance of ‘well-
`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 ’772 patent treats as well-known all potentially
`technical aspects of the challenged claims, which simply require generic
`computer components.” Final Dec. 15. Unlike the generic components at
`issue in Amdocs, the generic components recited in claims 2–4, 6, 7, 9, 11–
`13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 of the ’772 patent do not
`operate in an unconventional manner to achieve an improvement in
`computer functionality. See Final Dec. 20–24. Claims 2–5, 7, 9, and 12 of
`the ’772 patent simply recite generic memories and data types with no
`description of the underlying implementation or programming.
`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
`
`
`
`CBM2015-00133
`Patent 8,336,772 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
`
`
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