Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: November 16, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-00133
`Patent 8,336,772 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`and MATTHEW R. CLEMENTS Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: November 16, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-00133
`Patent 8,336,772 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`and MATTHEW R. CLEMENTS Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`INTRODUCTION
`
`A. Background
`Petitioner, Apple Inc. (“Petitioner”), 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.”).1 Smartflash LLC (“Patent Owner”)
`filed a Preliminary Response. Paper 5 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 324(a), which provides that a
`covered business method patent review may not be instituted “unless . . . it is
`more likely than not that at least 1 of the claims challenged in the petition is
`unpatentable.”
`After considering the Petition and Preliminary Response, we
`determine that the ’772 patent is a covered business method patent. We
`further determine that Petitioner has demonstrated that it is more likely than
`not that the challenged claims are unpatentable. Accordingly, we institute a
`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 (the “challenged claims”) of the ’772
`patent, as discussed below.
`
`B. Asserted Ground
`Petitioner contends that claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23,
`24, 27–29, 31, and 33–36 are unpatentable under 35 U.S.C. § 101 as being
`directed to patent-ineligible subject matter. Pet. 1. Petitioner provides a
`
`
`1 Pub. L. No. 112–29, 125 Stat. 284, 296–07 (2011).
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`declaration from John P.J. Kelly, Ph.D. to support its challenges. Ex. 1019
`(“the Kelly Declaration”).
`
`C. Related Matters
`The parties indicate that the ’772 patent is the subject of the following
`district court cases: Smartflash LLC v. Apple Inc., Case No. 6:15-cv-145
`(E.D. Tex.); Smartflash LLC v. Google, Inc., Case No. 6:14-cv-435 (E.D.
`Tex.); Smartflash LLC v. Apple Inc., Case No. 6:13-cv-447 (E.D. Tex.);
`Smartflash LLC v. Samsung Electronics Co. Ltd., Case No. 6:13-cv-448
`(E.D. Tex.); and Smartflash LLC v. Amazon.Com, Inc., Case No. 6:14-cv-
`992 (E.D. Tex.). Pet. 34; Paper 4, 4
`Petitioner previously has filed five petitions requesting covered
`business method patent review of the ’772 patent: CBM2014-00110
`(institution denied); CBM2014-00111(institution denied); CBM2014-00031;
`CBM2014-00032; and CBM2015-00033. Pet. 35. No final written decision
`has issued in any of those proceedings. Trial was instituted in CBM2015-
`00031 with respect to claims 1, 5, 8, and 10 under 35 U.S.C. § 101. Apple
`Inc. v. Smartflash LLC, Case CBM2015-00031, slip op. at 19 (PTAB May
`28, 2015) (Paper 11). Trial was instituted in CBM2015-00032 with respect
`to claims 14, 19, and 22 under 35 U.S.C. § 101. Apple Inc. v. Smartflash
`LLC, Case CBM2015-00031, slip op. at 18 (PTAB May 28, 2015) (Paper
`11). Trial was instituted in CBM2015-00033 with respect to claims 25, 26,
`30, and 32 under 35 U.S.C. § 101. Apple Inc. v. Smartflash LLC, Case
`CBM2015-00031, slip op. at 19 (PTAB May 28, 2015) (Paper 11).
`Apple and other petitioners have filed additional petitions requesting
`covered business method patent reviews of related patents. See Pet. 35;
`Paper 4, 2–4.
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`D. The ’772 patent
`The ’772 patent relates to “a portable data carrier for storing and
`paying for data and to computer systems for providing access to data to be
`stored,” and the “corresponding methods and computer programs.”
`Ex. 1001, 1:24–28. Owners of proprietary data, especially audio recordings,
`have an urgent need to address the prevalence of “data pirates” who make
`proprietary data available over the internet without authorization. Id. at
`1:32–58. The ’772 patent describes providing portable data storage together
`with a means for conditioning access to that data upon validated payment.
`Id. at 1:62–2:3. This combination allows data owners to make their data
`available over the internet without fear of data pirates. Id. at 2:10–18.
`As described, the portable data storage device is connected to a
`terminal for internet access. Id. at 1:62–2:3. The terminal reads payment
`information, validates that information, and downloads data into the portable
`storage device from a data supplier. Id. The data on the portable storage
`device can be retrieved and output from a mobile device. Id. at 2:4–7. The
`’772 patent makes clear that the actual implementation of these components
`is not critical and the alleged invention may be implemented in many ways.
`See, e.g., id. at 25:59–62 (“The skilled person will understand that many
`variants to the system are possible and the invention is not limited to the
`described embodiments.”).
`
`E. Illustrative Claim
`Petitioner challenges claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24,
`27–29, 31, and 33–36 of the ’772 patent. Claims 35 and 36 are independent.
`Claims 2–4, 6, and 7 depend directly from claim 1. Claims 9 and 11–13
`depend directly from claim 8. Claims 15–18 depend directly from claim 14.
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`Patent 8,336,772 B2
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`Claims 20, 21, 23, and 24 depend directly from claim 19. Claims 27–29
`depend directly or indirectly from claim 25. Claims 31, 33, and 34 depend
`directly from claim 30. Claim 12 is illustrative of the claimed subject matter
`and is reproduced below:
`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 user interface;
`a data carrier interface;
`a program store storing code implementable by a processor; and
`a processor coupled to the user interface, to the data carrier interface
`and to the program store for implementing the stored code, the code
`comprising:
`code to request identifier data identifying one or more content data
`items stored on the data carrier;
`code to receive said identifier data;
`code to present to a user via said user interface said identified one or
`more content data items available from the data carrier;
`code to receive a user selection selecting at least one of said one or
`more of said stored content data items;
`code responsive to said user selection of said selected content data
`item to transmit payment data relating to payment for said selected content
`item for validation by a payment validation system;
`code to receive payment validation data defining if said payment
`validation system has validated payment for said content data item; and
`code to control access to said selected content data item responsive to
`the payment validation data.
`Ex. 1001, 27:15–41
`12. A data access terminal as claimed in claim 8, wherein the
`content data item comprises additional content data for another stored
`content data item.
`Id. at 27:50–52.
`
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`Patent 8,336,772 B2
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`ANALYSIS
`
`A. Claim Construction
`In a covered business method patent review, claim terms are given
`their broadest reasonable interpretation in light of the specification in which
`they appear and the understanding of others skilled in the relevant art. See
`37 C.F.R. § 42.300(b). Applying that standard, we interpret the claim terms
`of the ’772 patent according to their ordinary and customary meaning in the
`context of the patent’s written description. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes of this Decision, we
`determine that “payment data” is the only terms requiring an express
`construction in order to conduct properly our analysis.
`Apple asserts that “[f]or review purposes, [payment data] should be
`construed to mean ‘data representing payment made for requested content
`data’ and is distinct from ‘access control data.’” Pet. 39.
`The plain and ordinary meaning of the two words that make up the
`term—“payment” and “data”—do not incorporate any notion of time and
`nothing about their combination changes that determination. As used in the
`’772 patent, “payment data” encompasses data relating to future, current,
`and past payments. For example, the ’772 patent states that “payment data
`for making a payment to the system owner is received from the smart Flash
`card by the content access terminal and forwarded to an e-payment system.”
`1001, 21:1–4. This language indicates that payment data exists prior to the
`payment being made for the requested content. The ’772 patent also
`explains that “payment data received may either be data relating to an actual
`payment made to the data supplier, or it may be a record of a payment made
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`to an e-payment system.” Id. at 6:64–67. This indicates that “payment
`data,” includes data for payments that have already been made.
`Moreover, the plain and ordinary meaning of data does not implicate
`changes in character based on when it is used in a transaction. For example,
`a credit card number may qualify as “data relating to payment” before the
`number is processed, while the number is being processed, and after the
`number is processed. See Ex. 1014, 232:14–24 (providing credit or debit
`card information to a retail terminal). Thus, without an express description
`to the contrary, we presume that “payment data” retains the same meaning
`before, during, and after the payment operation. Neither party points to any
`such contrary description. In fact, the ’772 patent describes “payment data”
`in several instances as data relating to payment for the requested data item.
`Ex. 1001, 10:14–15, 10:34–36, 10:46–47, 10:54–55.
`For purposes of this decision, we determine that the broadest
`reasonable interpretation of “payment data” as used in the ’772 patent is
`“data relating to payment for the requested data item.”
`
`B. Covered Business Method Patent
`Section 18 of the AIA provides for the creation of a transitional
`program for reviewing covered business method patents. A “covered
`business method patent” is a patent that “claims a method or corresponding
`apparatus for performing data processing or other operations used in the
`practice, administration, or management of a financial product or service,
`except that the term does not include patents for technological inventions.”
`AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have only one
`claim directed to a covered business method to be eligible for review. See
`Transitional Program for Covered Business Method Patents—Definitions of
`
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`CBM2015-00133
`Patent 8,336,772 B2
`
`Covered Business Method Patent and Technological Invention; Final Rule,
`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”) (Comment 8).
`We previously have determined that the ’772 patent is a “covered
`business method patent.” See, e.g., CBM2014-00110, Paper 7, 9–14
`(determining that the ’772 patent is eligible for covered business method
`patent reviewed based on claim 8). In this case, Apple asserts that claim 12
`qualifies the ’772 patent for covered business method patent review. Pet. 23.
`
`1. Financial Product or Service
`Petitioner asserts that claim 12 “clearly concerns a system
`(corresponding to the methods discussed and claimed elsewhere) for
`performing data processing and other operations used in the practice,
`administration, or management of a financial activity and service” because it
`“explicitly describes transmitting payment data to a payment validation
`system, receiving payment validation, and controlling access to data based
`on payment.” Pet. 27. Based on this record, we agree with Petitioner that the
`subject matter recited by claim 12 is directed to activities that are financial in
`nature, namely data access conditioned on payment validation. Claim 12,
`through its dependence on claim 8, requires “code . . . to transmit payment
`data relating to payment for said selected content item for validation by a
`payment validation system,” “code to receive payment validation data
`defining if said payment validation system has validated payment for said
`content data item,” and “code to control access to said selected content data
`item responsive to the payment validation data.” The transfer of data
`relating to payment and providing data in response to data relating to
`payment are financial activities, and providing for such transfers amounts to
`a financial service. This is consistent with the Specification of the ’772
`
`8
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`patent, which confirms claim 12’s connection to financial activities by
`stating that the invention “relates to a portable data carrier for storing and
`paying for data.” Ex. 1001, 1:24–25.
`Patent Owner disagrees that claim 12 satisfies the financial in nature
`requirement of AIA § 18(d)(1), arguing that that section should be
`interpreted narrowly to cover only technology used specifically in the
`financial or banking industry. Prelim. Resp. 71–74. Patent Owner cites to
`various portions of the legislative history as support for its proposed
`interpretation. Id.
`The Federal Circuit has expressly determined, however, that “the
`definition of ‘covered business method patent’ is not limited to products and
`services of only the financial industry, or to patents owned by or directly
`affecting the activities of financial institutions, such as banks and brokerage
`houses.” Versata Dev. Grp., Inc. v. SAP America, Inc., 793 F.3d 1306, 1325
`(Fed. Cir. 2015). Rather, “it covers a wide range of finance-related
`activities.” Id. Further, contrary to Patent Owner’s view of the legislative
`history, the legislative history overall indicates that the phrase “financial
`product or service” is not limited to the products or services of the “financial
`services industry” and is to be interpreted broadly. CBM Rules, 77 Fed.
`Reg. at 48,735–36. For example, the “legislative history explains that the
`definition of covered business method patent was drafted to encompass
`patents ‘claiming activities that are financial in nature, incidental to a
`financial activity or complementary to a financial activity.’” Id. (citing 157
`Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)).
`In addition, Patent Owner asserts that claim 12 is not directed to an
`apparatus or method that is financial in nature because claim 12 “omits the
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`specifics of how payment is made.” Prelim. Resp. 76. We are not
`persuaded by this argument because § 18(d)(1) of the AIA does not include
`such a requirement, nor does Patent Owner point to any other authority that
`makes such a requirement. Id. We determine that because claim 12 recites
`“payment,” as Patent Owner acknowledges (id. at 75), the financial in nature
`requirement of § 18(d)(1) is satisfied.
`For the reasons stated above, and based on the particular facts of this
`proceeding, we conclude that the ’772 patent includes at least one claim that
`meets the financial in nature requirement of § 18(d)(1) of the AIA.
`
`2. Exclusion for Technological Inventions
`Petitioner asserts that claim 12 does not fall within § 18(d)(1)’s
`exclusion for “technological inventions.” Pet. 28–34. In particular,
`Petitioner argues that claim 12 “does not claim ‘subject matter as a whole
`[that] recites a technological feature that is novel and unobvious over the
`prior art[] and solves a technical problem using a technical solution.’”
`Pet. 28 (quoting 37 C.F.R. § 42.301(b)).
`We are persuaded that claim 12 as a whole does not recite a
`technological feature that is novel and unobvious over the prior art. 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
`controlling access to data. For example, the ’772 patent states that “there is
`an urgent need to find a way to address the problem of data piracy” (Ex.
`1001, 1:56–57), while acknowledging that the “physical embodiment of the
`system is not critical and a skilled person will understand that the terminals,
`data processing systems and the like can all take a variety of forms” (id. at
`12:37–40). For example, the ’772 patent provides the example of a “smart
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`Patent 8,336,772 B2
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`Flash card” for a data carrier, referring to “the ISO (International Standards
`Organization) series of standards, including ISO 7810, ISO 7811, ISO 7812,
`ISO 7813, ISO 7816, ISO 9992 and ISO 10102” (id. at 17:15–17, 20–24) for
`further details on smart cards. Thus, we determine that claim 12 recites
`merely known technological features, which indicates that it is not a patent
`for a technological invention. See Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,764 (Aug. 14, 2012).
`Patent Owner also argues that claim 12 falls within § 18(d)(1)’s
`exclusion for “technological inventions” because it is directed towards
`solving the technological problem of “controlling access to a selected
`content data item responsive to the payment validation data, e.g., as part of a
`convenient, legitimate acquisition of data from a data supplier” with the
`technological solution of “a data access terminal that controls access to the
`selected content data item responsive to the payment validation data.”
`Prelim. Resp. 77. We are not persuaded by this argument because, as
`Petitioner argues, the problem being solved by claim 12 is a business
`problem—data piracy. Pet. 28. For example, the Specification states that
`“[b]inding the data access and payment together allows the legitimate
`owners of the data to make the data available themselves over the internet
`without fear of loss of revenue, thus undermining the position of data
`pirates.” Ex. 1001, 2:15–19. Therefore, based on the particular facts of this
`proceeding, we conclude that claim 12 does not recite a technological
`invention.
`
`11
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`3. Conclusion
`In view of the foregoing, we conclude that the ’772 patent is a covered
`business method patent under AIA § 18(d)(1) and is eligible for review
`under the transitional covered business method patent program.
`
`C. Section 101 Patent-Eligible Subject Matter
`Petitioner challenges claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24,
`27–29, 31, and 33–36 as directed to patent-ineligible subject matter under 35
`U.S.C. § 101. Pet. 41–79. Petitioner asserts that the challenged claims are
`directed to an abstract idea without additional elements that transform it into
`a patent-eligible application of that idea (id. at 45–75), triggers preemption
`concerns (id. at 76–78), and fails the machine-or-transformation test (id. at
`78–79).
`Patent Owner disagrees, arguing that the limitations of each of the
`challenged claims, taken as a combination, “recite specific ways of using
`distinct memories, data types, and use rules that amount[s] to significantly
`more than the underlying abstract idea” (Prelim. Resp. 47–48 (quoting Ex.
`2049, 19)), and that the claims do not result in inappropriate preemption (id.
`at 48–62). Patent Owner also asserts that (1) section 101 is not a ground that
`may be raised in a covered business method patent review (id. at 66–68);
`(2) the Office is estopped from revisiting the issue of § 101, which was
`inherently reviewed during examination (id. at 68–69); and (3) invalidating
`patent claims via covered business method patent review is unconstitutional
`(id. at 69–70).
`1. Abstract Idea
`Under 35 U.S.C. § 101, we must first identify whether an invention
`fits within one of the four statutorily provided categories of patent-
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`eligibility: “processes, machines, manufactures, and compositions of
`matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713–14 (Fed. Cir.
`2014). Here, each of the challenged claims recites a “machine”—i.e., a
`“handheld multimedia terminal” (claims 2–4, 6, 7, 15–18, and 27–29), a
`“data access terminal” (claims 9, 11–13, 20, 21, 23, 24, 31, 33, 34, and 35),
`or a “data access device” (claim 36)—under § 101. Section 101, however,
`“contains an important implicit exception to subject matter eligibility: Laws
`of nature, natural phenomena, and abstract ideas are not patentable.” Alice,
`134 S.Ct. at 2354 (2014) (citing Assoc. for Molecular Pathology v. Myriad
`Genetics, Inc., 133 S.Ct. 2107, 2116 (2013) (internal quotation marks and
`brackets omitted)). In Alice, the Supreme Court reiterated the framework set
`forth previously in Mayo Collaborative Services v. Prometheus
`Laboratories, 132 S.Ct. 1289, 1293 (2012) “for distinguishing patents that
`claim laws of nature, natural phenomena, and abstract ideas from those that
`claim patent-eligible applications of these concepts.” Alice, 134 S.Ct. at
`2355. The first step in the analysis is to “determine whether the claims at
`issue are directed to one of those patent-ineligible concepts.” Id.
`Petitioner argues that the challenged claims are directed to the abstract
`idea of “payment for and/or controlling access to data.” Pet. 41. Patent
`Owner does not dispute that the challenged claims are directed to an abstract
`idea. See Prelim. Resp. 13–62.
`We are persuaded that the challenged claims are more likely than not
`drawn to a patent-ineligible abstract idea. As discussed above, the ’772
`patent discusses addressing recording industry concerns of data pirates
`offering unauthorized access to widely available compressed audio
`recordings. Ex. 1001, 1:23–58. The ’772 patent proposes to solve this
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`problem by restricting access to data on a device based upon satisfaction of
`use rules linked to payment data. Id. at 9:13–31. The ’772 patent makes
`clear that the heart of the claimed subject matter is restricting access to
`stored data based on supplier-defined access rules and payment data. Id. at
`1:62–2:19, Abstract. We are, thus, persuaded, on this record, that the
`claimed subject matter is directed to an abstract idea. See Alice, 134 S.Ct. at
`2356 (holding that the concept of intermediated settlement at issue in Alice
`was an abstract idea); Accenture Global Servs., GmbH v. Guidewire
`Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (holding the abstract
`idea at the heart of a system claim to be “generating tasks [based on] rules . .
`. to be completed upon the occurrence of an event”).
`2. Inventive Concept
`Turning to the second step of the analysis, we look for additional
`elements that can “transform the nature of the claim” into a patent-eligible
`application of an abstract idea. Mayo, 132 S.Ct. at 1297. On this record, we
`are not persuaded that the challenged claims of the ’772 patent add an
`inventive concept sufficient to ensure that the patent in practice amounts to
`significantly more than a patent on the abstract idea itself. Alice, 134 S.Ct.
`at 2355; see also Accenture Global Servs., 728 F.3d at 1345 (holding claims
`directed to the abstract idea of “generating tasks [based on] rules . . . to be
`completed upon the occurrence of an event” to be unpatentable even when
`applied in a computer environment and within the insurance industry).
`Patent Owner argues that the challenged claims are patentable because
`they “recite specific ways of using distinct memories, data types, and use
`rules that amount[s] to significantly more than the underlying abstract idea.”
`Prelim. Resp. 47–48 (quoting Ex. 2049, 19). Patent Owner, however, does
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`not elaborate as to how these claim limitations amount to significantly more
`than the underlying abstract idea.
`The Specification, as discussed above, treats as well-known all
`potentially technical aspects of the claim, including “program store” and
`“payment validation system” limitations recited in the challenged claims.
`For example, the Specification states that the payment validation system
`“may be part of the data supplier’s computer systems or it may be a separate
`system such as an e-payment system.” Ex. 1001, 8:28–30; see id. at 9:1–3.
`Further, with respect to the recited program store, the Specification discloses
`that “[t]he data storage means is based on a standard smart card.” Id. at
`11:28–29; see also id. at 14:25–29 (“[l]ikewise data stores 136, 138 and 140
`may comprise a single physical data store or may be distributed over a
`plurality of physical devices and may even be at physically remote locations
`from processors 128-134 and coupled to these processors via internet 142.”),
`Fig. 6. The use of a program store and the linkage of existing hardware
`devices to existing payment validation processes appear to be “‘well-
`understood, routine, conventional activit[ies]’ previously known to the
`industry.” Alice, 134 S. Ct. at 2359; Mayo, 132 S. Ct. at 1294.
`Patent Owner also asserts that the challenged claims are like those in
`DDR Holdings, which the Federal Circuit held were directed to statutory
`subject matter because “‘the claimed solution is necessarily rooted in
`computer technology in order to overcome a problem specifically arising in
`the realm of computer networks.’” Prelim. Resp. 14 (quoting DDR
`Holdings, LLC v. Hotels.Com, LP., 773 F.3d 1245, 1257 (Fed. Cir. 2014)).
`According to Patent Owner, the challenged claims are “rooted in computer
`technology in order to overcome a problem specifically arising in the realm
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`of computer networks—that of digital data piracy,” “‘a challenge particular
`to the Internet.’” Prelim. Resp. 15 (quoting DDR Holdings, 773 F.3d at
`1257).
`We are not persuaded that the challenged claims are like those at issue
`in DDR Holdings. In DDR Holdings, the Federal Circuit found that the
`challenged claims were directed to patentable subject matter because they
`“specif[ied] how interactions with the Internet are manipulated to yield a
`desired result—a result that overrides the routine and conventional aspects
`of the technology.” 773 F.3d at 1258. We are not persuaded that the
`challenged claims specify interactions that depart from the routine use of the
`recited devices. Instead, we determine, based on the current record, that the
`claims merely apply conventional computer processes to restrict access to
`data based on payment.
`The differences between the challenged claims and those at issue in
`DDR Holdings are made clear by Smartflash in its tables mapping the
`challenged claims of the ’772 patent to claim 19 of the patent at issue in
`DDR Holdings. Prelim. Resp. 16–48. For example, claim 12 of the ’772
`patent, through its dependence on claim 8, recites “code to receive payment
`validation data defining if said payment validation system has validated
`payment for said content data item; and code to control access to said
`selected content data item responsive to the payment validation data.” There
`is no language in this, or any other, limitation of claim 12, in any of the other
`challenged claims, or in the Specification of the ’772 patent, that
`demonstrates that the generic computer components—“code to receive
`payment validation data” and “code to control access”—function in an
`unconventional manner or employ sufficiently specific programming.
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`Instead, the “code to receive payment validation data” and “code to control
`access” limitations, for example, like all the other limitations of the
`challenged claims, are “specified at a high level of generality,” which the
`Federal Circuit has found to be “insufficient to supply an inventive concept.”
`Ultramercial, 772 F.3d at 716.
`The limitation of claim 19 in DDR Holdings that Smartflash contends
`corresponds to the “code to receive payment validation data defining if said
`payment validation system has validated payment for said content data item;
`and code to control access to said selected content data item responsive to
`the payment validation data” limitations from claim 12 of the ’772 patent,
`recites “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.” Prelim. Resp. 22. It was this limitation from claim 19
`in DDR Holdings, according to the Federal Circuit, that specifies “how
`interactions with the Internet are manipulated to yield a desired result—a
`result that overrides the routine and conventional sequence of events
`ordinarily triggered by the click of a hyperlink.” 773 F.3d at 1258.
`Importantly, the Federal Circuit identified this limitation as differentiating
`the DDR Holdings claims from those held to be unpatentable in
`Ultramercial, which “broadly and generically claim ‘use of the Internet’ to
`perform an abstract business practice (with insignificant added activity).”
`Id. We are persuaded, at this point in the proceeding, that the challenged
`claims are closer to the claims at issue in Ultramercial than to those at issue
`in DDR Holdings. The claims at issue in Ultramercial, like the challenged
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`claims of the ’772 patent, were also directed to a method for distributing
`media products. Similar to restricting data based on payment, as in the
`challenged claims, the Ultramercial claims restricted access based on
`viewing an advertisement. Ultramercial, 772 F.3d at 712.
`Thus, on this record, we are persuaded that Apple has shown that it is
`more likely than not that the challenged claims—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 add
`an inventive concept sufficient to ensure that the patent in practice amounts
`to significantly more than a patent on the abstract idea itself. Alice, 134
`S.Ct. at 2355; see also Accenture, 728 F.3d at 1345 (holding claims directed
`to the abstract idea of “generating tasks [based on] rules . . . to be completed
`upon the occurrence of an event” to be unpatentable even when applied in a
`computer environment and within the insurance industry).
`3. Preemption
`Petitioner argues that “the challenged claims’ attempt to achieve
`broad functional coverage—with no relative contribution from the named
`inventors—firmly triggers preemption concerns.” Pet. 76. Patent Owner
`responds that the challenged claims do not result in inappropriate
`preemption. Prelim. Resp. 48–62. According to Patent Owner, the
`challenged claims of the ’772 patent recite “specific ways of managing
`access to digital content data based on payment validation through storage
`and retrieval of use status data and use rules in distinct memory types and
`evaluating the use data according to use rules.” Id. at 51 (quoting Ex. 2049,
`20). Patent Owner also asserts that the existence of a large number of non-
`infringing alternatives shows that the claims of the ’772 patent do not raise
`preemption concerns. Id. at 53–58.
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`Patent Owner’s preemption argument does not alter our § 101
`analysis. The Supreme Court has described the “pre-emption concern” as
`“undergird[ing] our § 101 jurisprudence.” Alice, 134 S.Ct. at 2358. The
`concern “is a relative one: how much future innovation is foreclosed relative
`to the contribution of the inventor.” Mayo, 132 S.Ct. at 1303. “While
`preemption may signal patent ineligible subject matter, the absence of
`complete preemption does not demonstrate patent eligibility.” Ariosa
`Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
`Importantly, the preemption concern is addressed by the two part test
`considered above. After all, every patent “forecloses ... future invention” to
`some extent, Mayo, 132 S.Ct. at 1292, and, conversely, every claim
`limitation beyond those that recite the abstract idea limits the scope of the
`preemption. See Ariosa, 788 F.3d at 1379 (“The Supreme Court has made
`clear that the princ
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