CBM2015-00133
`Patent 8,336,772 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC. and GOOGLE, INC.,
`Petitioners
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-001331
`Patent 8,336,772
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, GREGG I.
`ANDERSON, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S NOTICE OF
`SUPPLEMENTAL AUTHORITY
`
`
`1 The challenge to claims 9 and 21 based on 35 U.S.C. § 101 in CBM2015-00132
`has been consolidated with this proceeding.
`
`
`Patent 8,336,772 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC. and GOOGLE, INC.,
`Petitioners
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-001331
`Patent 8,336,772
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, GREGG I.
`ANDERSON, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S NOTICE OF
`SUPPLEMENTAL AUTHORITY
`
`
`1 The challenge to claims 9 and 21 based on 35 U.S.C. § 101 in CBM2015-00132
`has been consolidated with this proceeding.
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`
`The cases cited in PO’s Notice (Pap. 33) support Petitioner, not PO.2 These
`
`decisions confirm, under the analysis required by, e.g., Alice Corp. Pty. Ltd. v. CLS
`
`Bank Int’l, 134 S. Ct. 2347 (2014), that the Claims are patent-ineligible. The
`
`Claims are directed to “economic or other tasks for which a computer is used in its
`
`ordinary capacity,” not a “specific improvement to the way computers operate.”
`
`See Enfish, LLC v. Microsoft Corp., ___ F.3d ___, No. 2015-1244, 2016 WL
`
`2756255, at *5 (Fed. Cir. May 12, 2016). And the Board does not face the “limited
`
`record” of a motion to dismiss “construed in favor of the nonmovant” as in BAS-
`
`COM Global Internet Services, Inc. v. AT&T Mobility, LLC., ___ F.3d ___, No.
`
`2015-1763, 2016 WL 3514158, at *6-8 (Fed. Cir. June 27, 2016). To the contrary,
`
`the detailed record here confirms the Claims do not improve “‘the performance of
`
`the computer system itself,’” and provide no inventive concept. Id. at *7-8.
`
`1. Unlike Enfish’s claims to “a specific improvement to the way computers
`
`operate,” these Claims are indisputably directed to “economic or other tasks for
`
`which a computer is used in its ordinary capacity.” Enfish, 2016 WL 2756255, at
`
`*5. They merely recite “general-purpose computer components [that were] added
`
`post-hoc to a fundamental economic practice,” id. at *8, as this Board found in de-
`
`ciding that related claims were “directed to performing the fundamental economic
`
`
`2 Unless noted, all emphasis is added, and abbreviations are those from Paper 25
`(“Reply”).
`
`
`
`1
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`practice of [conditioning and] controlling access to content [based on payment].”
`
`See, e.g., 00017FWD at 7-8; 00016FWD/00194FWD/00193FWD at 8; CBM2014-
`
`00190, Pap.47 (“00190FWD”) at 8; CBM2015-00028, Pap. 44 (“00028FWD”) at 8;
`
`CBM2015-00029, Pap. 43 (“00029FWD”) at 9; see also 00192FWD at 8;
`
`CBM2015-00031, Pap. 45 (“00031FWD”) at 12; CBM2015-00032, Pap. 46
`
`(“00032FWD”) at 13-14; CBM2015-00033, Pap. 40 (“00033FWD”) at 13; Notice
`
`3 (PO admitting Claims directed to “digital commerce”).
`
`PO’s reliance on generic components underscores this point. See Notice 2-3.
`
`While PO argues its generic hardware and software “carry out their functions in a
`
`specific manner” (see id. 3), it does not and cannot state its Claims are “directed to
`
`an improvement in the functioning of a computer.” Cf. Enfish, 2016 WL 2756255,
`
`at *7. Rather, PO’s Claims are like “the claims at issue in Alice and Versata,”
`
`“simply adding conventional computer components to well-known business prac-
`
`tices.” Id.
`
`Indeed, in In re TLI Communications LLC Patent Litigation, No. 2015-1372,
`
`2016 WL 2865693 (Fed. Cir. May 17, 2016), the Federal Circuit similarly distin-
`
`guished Enfish on the ground that the TLI claims, like the Claims here, “are di-
`
`rected to the use of conventional or generic technology.” TLI, 2016 WL 2865693,
`
`at *3. Just as in TLI, the Claims here “perform[] generic computer functions such
`
`as storing, receiving, and extracting data” using “physical components” (e.g., wire-
`
`
`
`2
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`less interface, non-volatile memory, processor, display) that “behave exactly as ex-
`
`pected according to their ordinary use” and “merely provide a generic environment
`
`in which to carry out the abstract idea” of controlling access to content based on
`
`payment and/or rules. Id. at *3, *4, *7; see also Paper 25 (“Opp. to Mot. to Ex-
`
`clude”) at 7-8.
`
`Unlike Enfish’s summary judgment inferences, here the full record—inclu-
`
`ding PO’s admissions (see, e.g., Reply 6, 10, 12) and Petitioner’s unrebutted expert
`
`testimony about what was routine and conventional (see, e.g., Reply 11-12, 15, 19-
`
`21; Ex. 1019 §§ VI, VII; Ex. 1013 9:34-42)—indisputably confirms the Claims of-
`
`fer no “specific asserted improvement in computer capabilities,” such as Enfish’s
`
`“innovative” means for configuring memory with a self-referential table. See En-
`
`fish, 2016 WL 2756255, at *3, *5. Instead they are directed to the abstract idea of
`
`controlling access to content based on payment/rules “for which computers are in-
`
`voked merely as a tool.” Id. at *5.
`
`2. In BASCOM, pointing to DDR’s “technical solution to a problem unique
`
`to the Internet,” the court accepted BASCOM’s allegations that its “specific meth-
`
`od of filtering Internet content”—which “associate[d] individual accounts with
`
`their own filtering scheme and elements while locating the filtering system on an
`
`ISP server”—claimed “a technology-based solution (not an abstract-idea-based so-
`
`lution implemented with generic technical components in a conventional way) to
`
`
`
`3
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`filter content on the Internet that overcomes existing problems with other Internet
`
`filtering systems,” and “represent[ed] a ‘software-based invention[ ] that im-
`
`prove[s] the performance of the computer system itself.’” BASCOM, 2016 WL
`
`3514158, at *6, *7. “[T]aking the allegations of the complaint to be true” on this
`
`“limited record,” the Court found the claims improved “‘an existing technological
`
`process.’” Id. at *4, *6, *7.
`
`Here, PO has not shown and cannot show the Claims are “a technology-
`
`based solution” “‘that improve[s] the performance of the computer system itself’”
`
`as in BASCOM. Id. at *7. While PO argues its Claims, by storing payment data
`
`and content data on a handheld multimedia terminal, are “‘improv[ing] an existing
`
`technological process’” (see Notice 5), PO has failed to rebut Petitioner’s showing
`
`that this neither was inventive nor improved “the performance of the computer sys-
`
`tem itself.” BASCOM, 2016 WL 3514158, at *7; Ex. 1019 §§ VI, VII (citing prior
`
`art). Unlike BASCOM’s claims, which were directed to improvements in filtering
`
`technology, PO’s Claims are drawn to carrying out existing economic transactions
`
`using existing and generic components in a conventional way that provides no in-
`
`ventive concept. The problem is a business problem (data piracy) (see, e.g.,
`
`Dec11), and as the Board already found in related proceedings any solution here is
`
`“not rooted in specific computer technology” and does not “override[] the routine
`
`and conventional use of the recited devices and functions.” See, e.g.,
`
`
`
`4
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`00016FWD/00028FWD at 16; 000190FWD/000192FWD at 16-17; 00194FWD at
`
`16; 00017FWD/00193FWD at 14-15; 00029FWD at 18;
`
`00031FWD/00032FWD/00033FWD at 19-20. And PO argues its Claims do not
`
`“‘preempt all ways’ of paying for and controlling access to digital content,” but ig-
`
`nores that, even according to its own cited case,3 “pre-emption is not the test . . .”
`
`See CellzDirect, 2016 WL 3606624, at *7; Ariosa Diagnostics, Inc. v. Sequenom,
`
`Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (where “claims are deemed only to dis-
`
`close patent ineligible subject matter under the Mayo framework, . . . preemption
`
`concerns are fully addressed and made moot”).
`
`For the reasons above, Enfish and BASCOM support Petitioner, not PO.
`
`And neither case is nearly as analogous as Ultramercial, whose claims, like the
`
`Claims here, apply rules to control access to paid-for digital content.
`
`Respectfully submitted, by /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`
`
`
`
`
`July 14, 2016
`
`
`3 PO also cited Rapid Litigation Management Ltd. v. CellzDirect, Inc., No. 2015-
`
`1570, 2016 WL 3606624 (Fed. Cir. July 5, 2016). Unsurprisingly, PO provides no
`
`analysis of CellzDirect since its facts are inapposite. See id. at *7 (claims to new
`
`technique for hepatocyte cryopreservation “far from routine and conventional”).
`
`
`
`5
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PETITIONER’S
`
`RESPONSE TO PATENT OWNER’S NOTICE OF SUPPLEMENTAL
`
`AUTHORITY was served on July 14, 2016, to the following counsel via e-mail,
`
`pursuant to the parties’ agreement concerning service:
`
`Michael R. Casey
`Wayne M. Helge
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Facsimile: (571) 765-7200
`mcasey@dbjg.com
`whelge@davidsonberquist.com
`SmartFlash-CBM@dbjg.com
`
`Attorneys for Patent Owner
`Smartflash, LLC
`
`Raymond N. Nimrod
`Charles K. Verhoeven
`Melissa J. Baily
`Andrew M. Holmes
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`raynimrod@quinnemanuel.com
`QE-SF-PTAB-Service@quinnemanuel.com
`
`Attorneys for Petitioner Google, Inc.
`
`
`
` /s/ Lauren N. Robinson
`
`
`
`
`
`ROPES & GRAY LLP
`
`
`
`6
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