Covered Business Method Patent Review
`United States Patent No. 8,336,772 B2
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Petitioner: Apple Inc.
`
`Attorney Docket No.:
`
` 104677-5008-830
`Customer No. 28120
`
`§
`Inventor: Racz et al.
`United States Patent No.: 8,336,772 §
`Formerly Application No.: 13/212,047 §
`Issue Date: December 25, 2012
`§
`Filing Date: August 17, 2011
`§
`Former Group Art Unit: 2887
`§
`Former Examiner: Thien M. Le
`§
`
`For: Data Storage and Access Systems
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 8,336,772 PURSUANT TO 35 U.S.C. § 321,
`37 C.F.R. § 42.304
`
`
`
`
`
`

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` Covered Business Method Patent Review
`United States Patent No. 8,336,772 B2
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`TABLE OF CONTENTS
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`
`
`Page
`
`(b)
`
`B.
`
`
`INTRODUCTION ....................................................................................................... 1
`I.
`II. OVERVIEW OF FIELD OF THE CLAIMED INVENTION ......................... 6
`III. OVERVIEW OF CHALLENGED CLAIMS ....................................................... 21
`IV. PETITIONER HAS STANDING .......................................................................... 24
`A.
`The ’772 Patent Is A Covered Business Method (“CBM”) Patent .......... 24
`1.
`Exemplary Claim 12 Is Financial In Nature .................................... 25
`2.
`Claim 12 Does Not Cover A Technological Invention ................. 28
`(a)
`Claim 12 Does Not Recite A Technological Feature
`That Is Novel and Unobvious ............................................. 29
`Claim 12 Does Not Solve A Technical Problem Using
`A Technical Solution ............................................................. 32
`Related Matters And Mandatory Notice Information; Petitioner Is A
`Real Party In Interest Sued For And Charged With Infringement .......... 34
`V. DETAILED EXPLANATION OF REASONS FOR RELIEF
`REQUESTED, SHOWING IT IS MORE LIKELY THAN NOT THAT
`AT LEAST ONE CHALLENGED CLAIM IS UNPATENTABLE .............. 36
`A.
`Claim Construction .......................................................................................... 38
`B.
`The Challenged Claims Are Unpatentable Under § 101 ............................ 41
`1.
`The Challenged Claims Are Directed To Abstract Ideas .............. 42
`2.
`The Challenged Claims Do Not Disclose An “Inventive
`Concept” That Is “Significantly More” Than An Abstract
`Idea ......................................................................................................... 50
`(a)
`Field Of Use Limitations Cannot Create Patent
`Eligibility ................................................................................ 51
`Generic Computer Implementation Cannot
`Transform Abstract Ideas Into Patent Eligible
`Inventions ............................................................................... 52
`(i) Generic Computer Functions Cannot Transform
`Abstract Ideas Into Patent Eligible Inventions ........ 54
`
`(b)
`
`i
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` Covered Business Method Patent Review
`United States Patent No. 8,336,772 B2
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`(ii) Generic Computer Hardware Cannot Transform
`Abstract Ideas Into Patent Eligible Inventions ........ 57
`(iii) Challenged Claims Are Analogous To Those
`Found Patent-Ineligible In Alice ................................ 61
`(iv) Challenged Claims Are Analogous To Those
`Found Patent-Ineligible In Accenture ....................... 74
`Functional Nature Confirms Preemption and
`Ineligibility ............................................................................. 76
`Machine-Or-Transformation Test Also Confirms
`Patent Ineligibility .................................................................. 78
`VI. CONCLUSION........................................................................................................... 79
`
`(c)
`
`(d)
`
`ii
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`

`
`
`EXHIBIT LIST
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
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`1007
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`1008
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`1009
`
`1010
`
`1011
`
`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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` Covered Business Method Patent Review
`United States Patent No. 8,336,772 B2
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`
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`U.S. Patent No. 8,336,772
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`Plaintiffs’ First Amended Complaint
`
`U.S. Patent No. 5,925,127
`
`U.S. Patent No. 5,940,805
`
`J. Taylor, “DVD-Video: Multimedia for the Masses,” IEEE
`Multimedia, Vol. 6, No. 3, July-September 1999, pp. 86-92
`U.S. Patent No. 4,999,806
`
`U.S. Patent No. 5,675,734
`
`U.S. Patent No. 4,878,245
`
`File History for U.S. Patent No. 8,336,772
`
`U.S. Patent No. 7,942,317
`
`U.S. Patent No. 5,103,392
`
`U.S. Patent No. 5,530,235
`
`U.S. Patent No. 5,629,980
`
`U.S. Patent No. 5,915,019
`
`European Patent Application, Publication No. EP0809221A2
`
`International Publication No. WO 99/43136
`
`JP Patent Application Publication No. H11-164058 (transla-
`tion)
`Eberhard von Faber, Robert Hammelrath, and Frank-Peter
`Heider, “The Secure Distribution of Digital Contents,” IEEE
`(1997)
`Declaration of John P. J. Kelly In Support of Apple Inc.’s Pe-
`tition for Covered Business Method Patent Review
`
`iii
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`

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` Covered Business Method Patent Review
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`EXHIBIT LIST
`1020
`
`U.S. Patent No. 8,033,458
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`1037
`
`1038
`
`1039
`
`Declaration of Michael P. Duffey In Support of Apple Inc.’s
`Petition for Covered Business Method Patent Review
`Declaration of Megan F. Raymond In Support of Apple Inc.’s
`Petition for Covered Business Method Patent Review
`Claim Construction Memorandum Opinion from Smartflash
`LLC v. Apple Inc., No. 6:13cv447 (Dkt. 229)
`File History for U.S. Patent No. 8,061,598
`
`U.S. Patent No. 4,337,483
`
`U.S. Patent No. 7,725,375
`
`International Publication No. WO 95/34857
`
`JP Patent Application Publication No. H10-269289 (transla-
`tion)
`File History for U.S. Patent No. 7,942,317
`
`File History for U.S. Patent No. 8,033,458
`
`U.S. Patent No. 8,061,598
`
`U.S. Patent No. 8,118,221
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`File History for U.S. Patent No. 8,118,221
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`U.S. Patent No. 7,334,720
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`File History for U.S. Patent No. 7,334,720
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`U.S. Patent No. 5,646,992
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`August 2014 Emails Titled “RE: Smartflash: Meet and Confer
`Regarding Further Claim/Prior Art Limits.”
`International Publication No. WO99/13398
`
`Apr. 8-9, 2015 Deposition Transcript of Jonathan Katz,
`
`iv
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` Covered Business Method Patent Review
`United States Patent No. 8,336,772 B2
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`
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`CBM2014-00102/106/108/112
`U.S. Patent No. 5,761,485
`
`Rakesh Mohan, John R. Smith and Chung-Sheng Li , “Adapt-
`ing Multimedia Internet Content for Universal Access” IEEE
`(March 1999)
`U.S. Patent No. 5,953,005
`
`Excerpt of Transcript of Trial Afternoon Session, February
`16, 2015 from Smartflash LLC v. Apple Inc., No. 6:13cv447
`U.S. Patent No. 5,903,721
`
`U.S. Patent No. 5,632,681
`
`EXHIBIT LIST
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`1040
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`1041
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`1042
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`1043
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`1044
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`1045
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`v
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` Covered Business Method Patent Review
`United States Patent No. 8,336,772 B2
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`I.
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`INTRODUCTION
`
`Pursuant to § 321 and Rule § 42.304,1 the undersigned, on behalf of and acting
`
`in a representative capacity for Apple Inc. (“Petitioner”), petitions for covered busi-
`
`ness method review of claims 2-4, 6, 7, 9, 11-13, 15-18, 20, 21, 23, 24, 27-29, 31, and
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`33-36 (“challenged claims”) of U.S. Pat. No. 8,336,772 (“’772 Patent” or “’772”), is-
`
`sued to Smartflash Technologies Limited and assigned to Smartflash LLC (“Patent
`
`Owner”). Petitioner asserts it is more likely than not that the challenged claims are
`
`unpatentable for the reasons herein and requests review of, and judgment against, the
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`challenged claims under § 101.
`
`As discussed in Sect. IV.B, infra, Petitioner previously filed CBM2014-
`
`00110/111 seeking CBM review of certain claims of the ’772 under §§102 and 103,
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`and CBM2015-00031 through 33, seeking CBM review of certain claims of the ’772
`
`under §101 for claims not challenged in the present petition.2 In general, the previous
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`petitions were directed towards claims asserted in a first litigation filed by Smartflash
`
`
`1 All section cites herein are to 35 U.S.C. or 37 C.F.R., as the context indicates.
`
`2 Although the Board has not yet issued an institution decision concerning CBM2015-
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`00031 through 33, the Board has instituted a review of a number of related patents
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`and claims under § 101. See, e.g., CBM2014-00192, Pap. 7 at 18; CBM2014-00193, Pap.
`
`7 at 19; CBM2014-00194, Pap. 9 at 20; CBM2015-00016, Pap. 23 at 26; CBM2015-
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`00017, Pap. 22 at 20; CBM2015-00015, Pap. 23 at 21.
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` Covered Business Method Patent Review
`United States Patent No. 8,336,772 B2
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`against Petitioner as of the time the petitions were filed. Since that time, Smartflash
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`has filed a second litigation against Petitioner in which it again asserts the ’772 Patent.
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`Although Smartflash has not yet identified the asserted claims in the second litigation,
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`this petition is directed towards the additional claims that may be asserted by Smart-
`
`flash in the new litigation. None of the challenged claims herein has previously been
`
`challenged by Petitioner on § 101 grounds, and the challenged claims were not being
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`asserted against Petitioner by Smartflash at the time Petitioner filed the CBM2015-
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`00031 through 33 petitions.
`
`The challenged claims are merely directed to conventional computer systems
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`well-known in the field of data storage and access, including a “handheld multimedia
`
`terminal,” a “data access terminal,” and a “data access device.” Ex.1001 16:40-62; see
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`also Ex.1001 cls. 2-4, 6, 7, 9, 11-13, 15-18, 20, 21, 23, 24, 27-29, 31, 33-36.
`
`Claim 12, for example, recites four rudimentary components of a data access
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`terminal “for controlling access to one or more content data items”—(A) a user interface, (B) a
`
`data carrier interface, (C) a program store storing code implementable by a proces-
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`sor, and (D) a processor . . . for implementing the stored code. The recited code is
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`similarly conventional and well-known: requesting and receiving user identifier data (D1-
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`D2), presenting available content data items (D3, D8), receiving a selection and transmitting pay-
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`ment for the data item (D4-D5), receiving payment validation data (D6), and controlling access
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`to the data item in response (D7). Claims 8 and 12 are provided below.
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`2
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`8. A data access terminal for controlling access to one or more content
`data items stored on a data carrier, the data access terminal comprising:
`[A] a user interface;
`[B] a data carrier interface;
`[C] a program store storing code implementable by a processor; and
`[D] a processor coupled to the user interface, to the data carrier inter-
`face and to the program store for implementing the stored code, the
`code comprising:
`[D1] code to request identifier data identifying one or more content
`data items stored on the data carrier;
`[D2] code to receive said identifier data;
`[D3] code to present to a user via said user interface said identified
`one or more content data items available from the data carrier;
`[D4] code to receive a user selection selecting at least one of said one
`or more of said stored content data items;
`[D5] code responsive to said user selection of said selected content
`data item to transmit payment data relating to payment for said se-
`lected content item for validation by a payment validation system;
`[D6] code to receive payment validation data defining if said payment
`validation system has validated payment for said content data item;
`and [D7] code to control access to said selected content data item re-
`sponsive to the payment validation data.
`12. A data access terminal as claimed in claim 8,
`wherein the content data item comprises additional content data for an-
`other stored content data item.
`
`3
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`Ex.1001.3 But at the patent’s earliest claimed priority date, these simple elements and
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`their combination would have been well known to a POSA. 4 See Sect. II; Ex.1019 ¶¶
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`22, 85, 89, § VI.5 The patent acknowledges that the idea of providing access to data in
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`exchange for payment (e.g., purchase of music on a CD) was already well known. E.g.,
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`Ex.1001 5:13-16 (“the purchase outright option may be equivalent to the purchase of a
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`compact disc (CD), preferably with some form of content copy protection such as digital
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`watermarking”). The idea of purchasing digital data for payment was similarly well
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`3 All emphasis herein added unless otherwise noted.
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`4 References to a POSA refer to the knowledge or understanding of a person of
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`ordinary skill in the art (“POSA”) as of October 25, 1999 who would have at least a
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`B.S. in E.E., C.S., or a telecommunications related field, and at least 3 years of
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`industry experience that included client-server data/information distribution and
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`management architectures. See, e.g., Ex.1019 ¶¶ 15-17.
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`5 In further support of the Petitioner’s grounds, the Declaration of technical expert
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`John P.J. Kelly, Ph.D., is attached as Exhibit 1019. Dr. Kelly qualifies as a POSA
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`(Ex.1019 §§ I, III) and has analyzed whether the challenged claims are unpatentable
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`based on the grounds in this petition (Ex.1019 §§ I-II and IV-VIII).
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`4
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`known. See, e.g., Ex.1007 5:41-56; Ex.1039 14:21-15:14.6 And, as demonstrated herein,
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`the prior art was teeming with disclosures of this basic concept and its straightforward
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`implementation in physical systems. See, e.g., Sect. II.
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`Moreover, claim 12 clearly involves no “technology” at all other than “a data ac-
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`cess terminal,” with user and data carrier interfaces, a program store storing code,
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`and a processor that implements the well-known steps disclosed in the specifica-
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`tion—all of which the patent concedes were well known and commonplace, stating
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`that this “terminal comprises a general purpose computer.” E.g., Ex.1001 4:7, 16:40-44;
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`Ex.1019 ¶¶ 22, 85, 89, § VI. Claim 12 recites nothing more than a system for request-
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`ing and retrieving data from a data carrier while receiving and responding to payment
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`data for validation, and controlling access to the data based on payment, which was
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`similarly well-known, as discussed in Sect. II. And the other challenged claims are
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`nothing but variations on this simple theme, with at most the addition of equally well-
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`known components.7 See Sect. II. Indeed, the ’772 Patent states that “[t]he physical
`
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`6 Exhibit 1039 is the April 8-9, 2015 Deposition Transcript of Jonathan Katz, Patent
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`Owner’s expert, for CBM2014-00102/106/108/112 regarding related patents in the
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`same family as the ’772 Patent (see Section IV.B infra describing related matters).
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`7 Claims 2 and 15, e.g., recite a “handheld multimedia terminal,” but simply adds to the
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`features of claim 9 the requirements of a wireless interface, non-volatile memory, and
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`5
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`embodiment of the system is not critical and a skilled person will understand that the
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`terminals, data processing systems and the like can all take a variety of forms.” See, e.g.,
`
`Ex.1001 Fig. 1; 12:37-40.
`
`Indeed, as confirmed by the Supreme Court’s decision in Alice Corp. Pty, Ltd. v.
`
`CLS Bank Int’l, 134 S. Ct. 2347 (2014), the challenged claims are also directed to pa-
`
`tent ineligible subject matter under § 101. As the Board noted in its previous Institu-
`
`tion Decision, “the ’772 patent makes clear that the asserted novelty of the invention
`
`is not in any specific improvement of software or hardware, but in the method of con-
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`trolling access to data,” CBM2014-00110, Pap. 7 at 13; CBM2014-00200, Pap. 9 at 11;
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`CBM2014-00204, Pap. 9 at 12, and the challenged claims are directed to nothing more
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`than the unpatentable abstract idea of payment for and/or controlling access to data,
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`with at most the addition of well-known, routine, and conventional features that do
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`not render them unpatentable—in particular, generic computer implementation that
`
`cannot confer patentability on these patent-ineligible abstractions. E.g., Alice, 134 S. Ct.
`
`at 2359-60. In summary, each challenged claim recites ineligible subject matter; thus,
`
`each is unpatentable.
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`II. OVERVIEW OF FIELD OF THE CLAIMED INVENTION
`
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`a display. Claims 35 and 36 recite a “data access terminal” and a “data access device,”
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`respectively, but adds no features to claim 9. Ex.1001.
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`6
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`By October 25, 1999, the sale, distribution, and protection of digital content
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`were well-known to a POSA. See, e.g., Ex.1019 ¶¶ 23-25, 29-30, 46, 75. A POSA would
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`have been aware of existing computer-based systems for providing digital content, in-
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`cluding software, audio, and video content, for a fee. See, e.g., id. ¶¶ 25-30, 34, 43, 46,
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`48-50, 53-56, 58, 61, 75; Ex.1039 14:21-15:15, 16:6-17:9; see also Ex.1008 at 4:27-35,
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`6:49-7:6; Ex.1044 at Abstract, 6:14-25. Such systems included servers, computers, e-
`
`payment systems, and user devices connected over known wired and wireless com-
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`munications networks to distribute content from content owners to users. See, e.g.,
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`Ex.1019 ¶¶ 23-25, 29, 30, 34-38, 43-46, 48, 71-73, 75; Ex.1039 19:3-18; see also
`
`Ex.1025 at Fig. 1, 9:50-68.
`
`Indeed, the ’772 Patent explains that the physical embodiment of the system is
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`“not critical and a skilled person will understand that the terminals, data processing
`
`systems and the like can all take a variety of forms.” Ex.1001 12:34-40. For example,
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`the patent concedes that various claimed components and functionalities were con-
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`ventional and well-known in the art (see Ex.1019 ¶ 22), such as:
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` Internet users paying for goods and/or services by credit card transaction
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`(Ex.1001 2:21-22; 19:13-17)
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` Data access terminal or content access terminal hardware: “conventional com-
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`puter” or “mobile phone,” “home personal computer,” “mobile communica-
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`tions device,” “set top box” (id. 4:7-8, 16:4-13)
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`7
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` WAP and i-mode allowing mobile phones to access the internet and download
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`
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`data (id. 4:8-12)
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` Non-volatile memory, including EEPROM, Flash memory, optical memory (id.
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`4:45-51, 17:31-38)
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` Purchasing digital music equivalent to the purchase of a CD (id. 5:13-16)
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` Data carrier hardware: “IC card,” “smart card,” “memory stick,” “standard
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`smart card” (id. 6:32-34, 11:34-37, 17:15-38)
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` Electronics Point of Sale Systems (EPoSS) functionality for smart cards (id.
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`11:43-47)
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` E-payment systems and standards (id. 13:43-46)
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` Data access terminal as a “general purpose computer” with standard compo-
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`nents (id. Fig. 8, 16:40-62)
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` Data access device hardware: “portable audio/video player,” “conventional
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`dedicated computer system” with standard components (id. 18:14-34)
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` Use control routines including digital watermarking and content protection
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`from the SDMI specification (id. 18:37-48)
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` “Standard transmission protocols” used to transmit content data items (id.
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`21:53-56)
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` Communication network, whose detailed implementation is not essential, and
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`can be “internet,” “web-based technology,” “any electronic communications
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`8
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`network,” “wide area network,” “local area network,” “wireless network,”
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`“conventional land line network,” “extranet” (id. 25:51-58)
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`
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`A POSA would have known, for example, multiple systems for selling and dis-
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`tributing digital content to remote user devices. See, e.g., Ex.1019 ¶¶ 25-30, 34-44, 48-
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`50, 53-54, 61, 64-65, 67-69; Ex.1039 14:21-15:15, 16:6-17:9. For example, U.S. Pat.
`
`No. 5,675,734 (“Hair,” pub’d October 7, 1997) disclosed a system for selling digital
`
`video or audio content. Ex.1007 Abstract. Hair described a distribution system that
`
`transmits digital video or audio signals stored on a first memory belonging to a first
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`party to a second memory belonging to a second party for a fee. Id. 5:41-44. In a first
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`step, money is transferred from the second party to the first party via telecommunica-
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`tions line for an electronic sale. Id. 5:44-47. Then, the memory of the second party is
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`connected to the memory of the first party over a telecommunications line, and the
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`digital or audio signals are transmitted from the first memory to the second memory.
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`Id. 5:47-56. See, e.g., Ex.1019 ¶ 29.
`
`U.S. Pat. No. 4,999,806 (“Chernow,” pub’d March 12, 1991) also disclosed a
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`system for digital content sales. Chernow described a software distribution system in
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`which a seller computer communicates with buyers over a telephone line for the buy-
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`ers to browse through software products available from the remote seller computer
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`for leasing or purchasing. Ex.1006 2:22-36. The seller computer answers calls from
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`buyers, verifies credit card information, transmits purchased software to buyers, and
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`performs accounting functions to ensure proper billing and record keeping. Id. 2:37-
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`
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`47. A POSA would have understood that delivery of the purchased content could be
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`conditioned on successful payment, as the system described in Chernow ensures that
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`the customer is able to pay for the purchase, for example by verifying credit card ap-
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`proval for the sale amount, before providing requested software. Id. 6:48-65; 7:53-63;
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`see also Ex.1039 24:2-11, 27:4-9. A POSA also would have appreciated the need to lim-
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`it leased software to a period of time or a number of runs, in view of Chernow’s de-
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`scription of software that renders itself unusable or erases itself at the conclusion of
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`the leased use. Ex.1006 5:10-18. See, e.g., Ex.1019 ¶¶ 25-28.
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`A POSA also would have known that a central vending system could be used
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`to provide multiple vendors with a mechanism to market, distribute, and receive pay-
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`ment for electronic data, as described for example in EP Pat. App. Pub. No. 0809221
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`(“Poggio,” pub’d November 26, 1997). Ex.1015 Fig. 1; 2:32-36; see also Ex.1039 19:3-
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`18. Poggio described a vending machine that manages distribution of electronic data
`
`on a variety of license terms by providing information about the products for a pur-
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`chaser to browse, obtaining payment for a product, and distributing purchased prod-
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`ucts to users’ computers. Ex.1015 4:35-49. The vending machine includes a library of
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`vendor products with a vending information database that maintains product infor-
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`mation for each vendor product, including product identifiers, pointers to the prod-
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`ucts in the library, and information identifying the particular vendor and category of
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`10
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`the product. Id. Fig. 3, 6:37-7:39. The vending machine also includes “a digital cash in-
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`terface 116 for obtaining point-of-sale electronic payment for the license fee associat-
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`ed with a particular vendor product.” Id. Fig. 1, 6:13-16. The digital cash interface
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`confirms successful payment of the required license fee with an electronic banking
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`network before the virtual vending machine provides a product to a user. Id. Fig. 7,
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`10:7-20. Poggio disclosed a variety of existing payment schemes for purchasing a ven-
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`dor product that would have been known to a POSA, including “credit card payment
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`transactions,” “digital cash,” “debit transactions,” and “electronic funds transfers.” Id.
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`6:25-36. See, e.g., Ex.1019 ¶¶ 34-42.
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`In addition to systems for providing purchased content to users from remote
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`stores, a POSA would have also been aware of systems allowing users to purchase
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`content that is locally stored, but not yet accessible, on the user’s computer or on a
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`secondary storage device in the user’s possession. For example, The Secure Distribu-
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`tion of Digital Contents (“von Faber,” pub’d 1997) disclosed a “system for distribu-
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`tion of encrypted digital contents via freely accessible distribution media.” Ex.1018
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`Abstract. A POSA would have appreciated the importance of ensuring that goods
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`were paid for, as von Faber acknowledged the need to “couple the use of the provid-
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`ed digital goods with a prior payment for the goods in a way which cannot be by-
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`passed.” Id. at 7; see also Ex.1039 27:4-9. The solution proposed by von Faber was to
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`freely distribute encrypted digital contents and focus on key management, to “have
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`the customer pay for the key which he needs to transform the encrypted content in an
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`usable form.” Ex.1018 at 7. The content in such a distribution scheme is in the user’s
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`possession before any purchase, but the decryption key required to gain access to the
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`digital content is only sent to a customer after it is “guaranteed that payment has been
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`authorised.” Id. at 8. See, e.g., Ex.1019 ¶¶ 43-45.
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`International Pub. No. WO99/13398 (“Peterson,” pub’d March 18, 1999) also
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`disclosed a system for purchasing access to locally-stored content. Peterson disclosed
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`a digital content vending machine run on a personal computer that allows a user to
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`purchase products from inventory stored either in a hard drive of the computer or on
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`removable media, such as a CD, DVD, or tape in the user’s possession. Ex.1038 Ab-
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`stract; 8:11-15. The digital assets stored in the inventory “are protected from unau-
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`thorized use by a digital wrapper requiring at least one key for unwrapping.” Id. 4:14-
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`16. The vending software displays information about the inventory to the user for
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`browsing and selecting a product, then “transmits money representing payment for
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`the selection and an identifier for it to the clearing house, which transmits back to the
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`client a key associated with the selected asset.” Id. 4:16-20; see also 9:18-10:6. The keys
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`in Peterson provide security for the content, including “protecting the asset 22 once it
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`has been paid for” and “suppress[ing] unauthorized copying of [vendors’] intellectual
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`property.” Id. 10:17-23. See, e.g., Ex.1019 ¶¶ 46-47.
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`A POSA would have appreciated that the available systems for providing pur-
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`chased digital content to users, or for allowing users to access local content after a
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`purchase was completed, could be implemented on a wide array of user devices. In
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`addition to well-known personal computers, a POSA would have been familiar with
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`mobile and handheld devices, for example devices the size of a book, for accessing
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`such content, as disclosed for example in U.S. Pat. No. 5,761,485 (“Munyan,” pub’d
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`June 2, 1998). Munyan disclosed a handheld “Personal Electronic Book” device in-
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`cluding a cellular modem or other high-speed modem for wireless communication.
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`Ex.1040 5:47-50; 6:41-45; 7:49-52; Fig. 1. The device allows a user to “initiate and es-
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`tablish communications with the remote bookstore’s database library and services” to
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`locate and download content. Id. 7:33-42; 8:1-13. The bookstore is “an on-line elec-
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`tronic archive of multimedia products” that the user browses to select products, to
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`buy licenses to use the products, and to download the products to the personal device.
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`Id. 9:39-54. The bookstore may also offer a subscription service that downloads suc-
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`cessive issues of a publication to the user’s device as they become available. Id. at
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`10:41-62. See, e.g., Ex.1019 ¶ 71.
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`A POSA also would have known that content could be provided to, and played
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`on, mobile phones, for example mobile phones disclosed in Japanese Pat. App. Pub.
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`No. H11-164058 (“Sato,” pub’d June 18, 1999). Sato disclosed a mobile phone con-
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`nected to a music distribution center server via “a wireless public communications
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`network.” Ex.1017 Fig. 1, Abstract, ¶ 3. The mobile phone includes, among other
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`components, “a transmitting and receiving control unit, a transmitter and a receiver, a
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`radio wave transmitting and receiving control unit, [and] an antenna” for communica-
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`tion with the distribution center. Id. ¶ 4. Using the phone, a user accesses a distribu-
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`tion center, enters a song selection, and receives the selected music on the mobile
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`phone. Id. ¶¶ 12, 14. Sato also discloses performing a billing process after transmission
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`from the distribution center. Id. ¶ 15. In order to provide multimedia data to diverse
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`client devices, including handheld devices and cellular phones, a POSA would have
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`recognized a need to address the different capabilities of the diverse platforms to
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`which content is being delivered, as disclosed in Adapting Multimedia Internet Con-
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`tent for Universal Access (“Mohan,” pub’d March 1999). Ex.1041 Abstract. A POSA
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`would have understood multiple approaches to adapting multimedia to optimally
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`match the resources and capabilities of diverse clients, for example using known
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`compression and transcoding techniques. Id. at 1-2. See, e.g., Ex.1019 ¶¶ 66, 73.
`
`A POSA also would have known that different product options could be pro-
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`vided for a buyer to choose from, with different limits on the buyer’s access associat-
`
`ed with each choice. For example, Poggio discloses providing a purchaser with a
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`choice between purchasing a permanent license for a vendor product or renting the
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`product with a license limited to a time period. Ex.1015 Fig. 6, 9:25-33. Rented prod-
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`ucts are “formatted to include a time bomb or other disabling device which will disa-
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`ble the product at the end of the rental period” before being transmitted to the user.
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`Id. 10:25-28. U.S. Pat. No. 5,915,019 (“Ginter,” pub’d June 22, 1999) disclosed a sys-
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`tem distributing content with a set of “rules and controls” to prevent unauthorized
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`use of protected information and specify how much usage is to be paid for. Ex.1014
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`56:25-57:16. The Virtual Distribution Environment (“VDE”) system distributes con-
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`tent among “electronic appliances,” which include portable devices, telephones, and
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`set top boxes among other device examples disclosed in Ginter. Id. Figs. 8 and 71,
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`34:1-6, 60:18-30, 62:12-63:41, 228:36-54. The rules and controls in Ginter employ
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`“usage maps” to track content usage and store maps indicating which content or parts
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`of content (e.g., chapters in a book) a user accesses. Id. at 145:48-146:22. See, e.g.,
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`Ex.1019 ¶¶ 34-42, 48-51.
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`A POSA would have understood that the user’s rights to purchased content
`
`could be “attached” such that the rights and fee specifications remain with the con-
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`tent, as disclosed in U.S. Pat. No. 5,629,980 (“Stefik,” pub’d May 13, 1997). Ex.1013
`
`6:51-56. Stefik disclosed attaching usage rights to content to “define how that digital
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`work may be transferred, used, performed, or played.” Id. 19:14-15. Stefik also dis-
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`closed a work having multiple versions of a right attached with different prices, such
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`that a purchaser may choose which option best fits the rights he or she needs. Id.
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`18:9-16. Works may also be provided in a “demo version,” for example if a creator
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`believes that people will want to buy it if they try it, that allows a user to play only a
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`portion of the work and to play or use the full featured version (e.g., a version having
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`additional content) for a fee. Id. at 46:43-61. See, e.g., Ex.1019 ¶¶ 30-33.
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`
`
`A POSA also would have known that a user could also be provided with an op-
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`tion to specify the extent of utilization needed, so that the price paid is dependent on
`
`the amount of usage desired, and the content is released only to that extent of utiliza-
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`tion, as disclosed in U.S. Pat. No. 5,940,805 (“Kopp,” pub’d August 17, 1999).
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`Ex.1004 2:61-3:2, 5: