IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Attorney Docket No:
`01980-00035-51601
`
`Petitioner: Google Inc.
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`In re Covered Business Method Review
`of:
`
`
`U.S. Patent No. 8,794,516
`
`
`Issued: August 5, 2014
`
`Inventors: Patrick Sandor Racz and
` Hermen-ard Hulst
`
`
`
`
`Application No. 13/438,754
`
`Filed: April 3, 2012
`
`For: DATA STORAGE AND
`ACCESS SYSTEMS
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 8,794,516 PURSUANT TO 35 U.S.C. § 321
`AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
`
`PUBLIC REDACTED VERSION
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S.P.T.O.
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Attorney Docket No:
`01980-00035-51601
`
`Petitioner: Google Inc.
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
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`)
`
`In re Covered Business Method Review
`of:
`
`
`U.S. Patent No. 8,794,516
`
`
`Issued: August 5, 2014
`
`Inventors: Patrick Sandor Racz and
` Hermen-ard Hulst
`
`
`
`
`Application No. 13/438,754
`
`Filed: April 3, 2012
`
`For: DATA STORAGE AND
`ACCESS SYSTEMS
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 8,794,516 PURSUANT TO 35 U.S.C. § 321
`AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
`
`PUBLIC REDACTED VERSION
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S.P.T.O.
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`PETITIONER HAS STANDING .................................................................... 2
`
`A.
`
`THE ’516 PATENT IS A COVERED BUSINESS METHOD
`PATENT ................................................................................................ 2
`
`1.
`
`2.
`
`Claims 1 And 18 Cover Subject Matter That Is Financial
`In Nature ..................................................................................... 7
`
`Claims 1 And 18 Do Not Cover A Technological
`Invention ..................................................................................... 9
`
`III. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ...................... 12
`
`A.
`
`B.
`
`C.
`
`PETITIONER IS A REAL PARTY IN INTEREST SUED FOR
`AND CHARGED WITH INFRINGEMENT ..................................... 12
`
`RELATED MATTERS UNDER 37 C.F.R. § 42.8(B)(2) .................. 12
`
`LEAD AND BACKUP COUNSEL UNDER 37 C.F.R. §
`42.8(B)(2) ............................................................................................ 12
`
`IV. PAYMENT OF FEES ................................................................................... 13
`
`V.
`
`CLAIM CONSTRUCTION .......................................................................... 13
`
`A.
`
`“PAYMENT DATA” .......................................................................... 15
`
`B.
`
`C.
`
`“PAYMENT VALIDATION SYSTEM” ........................................... 16
`
`“PAYMENT VALIDATION DATA” ................................................ 17
`
`D.
`
`“SUPPLEMENTARY DATA” ........................................................... 19
`
`E.
`
`F.
`
`“PROGRAM STORE” ........................................................................ 19
`
`“ACCESS RULE” ............................................................................... 20
`
`
`
`i
`
`
`
`
`
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE UNDER 35
`U.S.C. § 101 ................................................................................................... 22
`
`A.
`
`THE CHALLENGED CLAIMS ARE DIRECTED TO A
`PATENT-INELIGIBLE ABSTRACT IDEA ..................................... 24
`
`1.
`
`2.
`
`The Challenged Claims Are Directed To The Abstract
`Idea Of Controlling Access To Something Based On
`Payment ..................................................................................... 25
`
`The Abstract Idea Of Controlling Access Based On
`Payment Is Not Patentable ........................................................ 28
`
`B.
`
`THE CHALLENGED CLAIMS DO NOT DISCLOSE AN
`“INVENTIVE CONCEPT” THAT IS “SIGNIFICANTLY
`MORE” THAN AN ABSTRACT IDEA ............................................ 29
`
`1.
`
`2.
`
`3.
`
`Field Of Use Limitations Cannot Transform An Abstract
`Idea Into A Patent Eligible Invention ....................................... 30
`
`Insignificant Pre- Or Post-Solution Activity Cannot
`Transform An Abstract Idea Into A Patent Eligible
`Invention ................................................................................... 31
`
`Tangential References To Generic Computer
`Implementation Cannot Transform An Abstract Idea Into
`A Patent Eligible Invention ....................................................... 32
`
`C.
`
`D.
`
`PREEMPTION CONCERNS CONFIRM PATENT
`INELIGIBILITY ................................................................................. 37
`
`THE MACHINE-OR-TRANSFORMATION TEST
`CONFIRMS PATENT INELIGIBILITY ........................................... 38
`
`VII. CONCLUSION .............................................................................................. 39
`
`
`
`
`ii
`
`
`
`
`
`
`
`Exhibit No.
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 8,794,516 to Racz et al. (“the ’516 patent”)
`
`Declaration of Dr. Justin Douglas Tygar Regarding the ’516
`Patent
`
`Curriculum Vitae of Dr. Justin Douglas Tygar
`
`PCT Publication No. WO 99/07121 (“Fetik”)
`
`U.S. Patent No. 5,790,423 to Lau et al. (“the ’423 patent”)
`
`SOFTBOOK PRESS—Secure Information Delivery to a
`Distributed Workforce, CIO Magazine, Aug. 1, 1999
`
`Kevin Maney, Electronic Books to Hit the Shelves, New Straits
`Times (Computimes), Aug. 24, 1998
`
`Liquid Audio, Music on the Net—A Topographic Tour of the
`Online Music World (1997)
`
`Liquid Audio Indie 1000 Program, http://www.liquidaudio.com
`(archived Feb. 11, 1998)
`
`Reserved
`
`Report and Recommendation Regarding Claim Construction,
`Smartflash LLC v. Samsung Elecs. Co., No. 6:13-cv-448, Dkt.
`274 (E.D. Tex. Sept. 24, 2014)
`
`Plaintiffs Smartflash LLC’s and Smartflash Technologies
`Limited’s Opening Claim Construction Brief, Smartflash LLC v.
`Samsung Elecs. Co., No. 6:13-cv-448, Dkt. 175 (E.D. Tex. June
`13, 2014)
`
`Reserved
`
`A.M. Turing, On Computable Numbers, with an Application to
`the Entscheidungsproblem, Proceedings of the London
`Mathematical Society, Vol. 42:2, pp. 230-265 (Nov. 12, 1936)
`
`1015
`
`Reserved
`
`iii
`
`
`
`
`
`
`
`Exhibit No.
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`Description
`
`U.S. Patent No. 8,794,516 Claim Chart—Google (Android),
`Exhibit 6 to Plaintiffs Smartflash LLC and Smartflash
`Technologies Limited’s P.R. 3-1 and 3-2 Disclosure of Asserted
`Claims and Infringement Contentions, Smartflash LLC v. Google
`Inc., No. 6:14-cv-435 (E.D. Tex. Aug. 22, 2014) (excerpted)
`
`Reserved
`
`U.S. Patent No. 7,942,317 to Racz et al. (“the ’317 patent”)
`
`U.S. Patent No. 8,033,458 to Hulst et al. (“the ’458 patent”)
`
`U.S. Patent No. 8,061,598 to Racz et al. (“the ’598 patent”)
`
`U.S. Patent No. 8,118,221 to Racz et al. (“the ’221 patent”)
`
`Roger A. Cunningham et al., The Law of Property (2d ed. 1993)
`(excerpted)
`
`Michael H. Harris, History of Libraries in the Western World,
`(4th ed. 1999) (excerpted)
`
`David Broderick, The First Toll Roads—Ireland’s Turnpike
`Roads 1729-1858 (2002) (excerpted)
`
`Reserved
`
`Reserved
`
`U.S. Patent No. 7,334,720 to Hulst et al. (“the ’720 patent”)
`
`U.S. Patent No. 8,336,772 to Racz et al. (“the ’772 patent”)
`
`iv
`
`
`
`I.
`
`INTRODUCTION
`
`
`
`Pursuant to 35 U.S.C. § 321 and 37 C.F.R. § 42.304, the undersigned, on
`
`behalf of and acting in a representative capacity for petitioner Google Inc., hereby
`
`petitions for review under the transitional program for covered business method
`
`patents of claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 of U.S. Patent No. 8,794,516
`
`(“challenged claims”), issued to Smartflash LLC (“the patent holder”). Petitioner
`
`hereby asserts that it is more likely than not that all of the challenged claims are
`
`unpatentable for the reasons set forth herein and respectfully requests review of,
`
`and judgment against, claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 as unpatentable
`
`under 35 U.S.C. § 101.
`
`The subject matter of the challenged claims is ineligible for patenting
`
`pursuant to controlling precedents from the Supreme Court and the Federal Circuit.
`
`The challenged claims are explicitly drawn to the abstract idea of controlling
`
`access based on payment. The claims recite the concepts inherent in that abstract
`
`idea, such as receiving a request for access, transmitting payment data for
`
`validation, receiving validation of payment, and controlling access based on
`
`validation of payment. The challenged claims contain no inventive, technological
`
`limitations concerning how to perform or implement the claimed idea; at most, the
`
`claims simply convey that controlling access based on payment—which has been a
`
`
`
`1
`
`
`
`
`
`staple of commerce for more than a century—could be performed on a generic
`
`computer.
`
`For these reasons, among others, the Board has already determined that
`
`seventeen claims of five patents that share an identical specification with the ’516
`
`patent are “more likely than not drawn to a patent-ineligible abstract idea” and are
`
`thus “unpatentable under 35 U.S.C. § 101.” E.g., Samsung Elecs. Am., Inc. v.
`
`Smartflash LLC, CBM2014-00190, Paper 9 at 13, 16 (P.T.A.B. Apr. 2, 2015). The
`
`Board should reach the same conclusion with respect to the challenged claims here.
`
`II.
`
`PETITIONER HAS STANDING
`
`A. THE ’516 PATENT IS A COVERED BUSINESS METHOD
`PATENT
`
`The ’516 patent is a “covered business method patent” under Section
`
`18(d)(1) of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`
`125 Stat. 284, 329-31 (2011), and petitioner certifies that it is available for review
`
`under Section 42.304(a).
`
`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); 37 C.F.R. § 42.301(a). “The legislative history explains that the
`
`definition of covered business method patent was drafted to encompass patents
`
`
`
`2
`
`
`
`
`
`‘claiming activities that are financial in nature, incidental to a financial activity or
`
`complementary to a financial activity.’” Transitional Program for Covered
`
`Business Method Patents—Definitions of Covered Business Method Patent and
`
`Technological Invention (“CBM Definitions”), 77 Fed. Reg. 48,734, 48,735 (Aug.
`
`14, 2012) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of
`
`Sen. Schumer)). “Financial product or service” is interpreted broadly: for
`
`example, the term “financial . . . simply means relating to monetary matters” and
`
`does not require any link to traditional financial industries, such as banks. E.g.,
`
`SAP Am., Inc. v. Versata Dev. Grp., Inc., CBM2012-00001, Paper 36 at 23
`
`(P.T.A.B. Jan. 9, 2013).
`
`Challenged claims 1 and 18 are two among many that qualify the ’516 patent
`
`as a CBM patent under § 18(d)(1). Claim 1 recites:
`
`1. A handheld multimedia terminal, comprising:
`
`a wireless interface configured to interface with a
`
`wireless network for accessing a remote computer
`
`system;
`
`non-volatile memory configured to store multimedia
`
`content, wherein said multimedia content comprises one
`
`or more of music data, video data and computer game
`
`data;
`
`a program store storing processor control code;
`
`
`
`3
`
`
`
`
`
`
`
`a processor coupled to said non-volatile memory, said
`
`program store, said wireless interface and a user interface
`
`to allow a user to select and play said multimedia
`
`content;
`
`a display for displaying one or both of said played
`
`multimedia content and data relating to said played
`
`multimedia content;
`
`wherein the processor control code comprises:
`
`code to request identifier data identifying one or more
`
`items of multimedia content stored in the non-volatile
`
`memory;
`
`code to receive said identifier data;
`
`code to present to a user on said display said identified
`
`one or more items of multimedia content available from
`
`the non-volatile memory;
`
`code to receive a user selection to select at least one of
`
`said one or more of said stored items of multimedia
`
`content;
`
`code responsive to said user selection of said at least one
`
`selected item of multimedia content to transmit
`
`payment data relating to payment for said at least one
`
`selected item of multimedia content via said wireless
`
`interface for validation by a payment validation
`
`system, wherein said payment data comprises user
`
`4
`
`
`
`
`
`identification data identifying said user to said payment
`
`validation system;
`
`code to receive payment validation data via said
`
`wireless interface defining if said payment validation
`
`system has validated payment for said at least one
`
`selected item of multimedia content; and
`
`code to control access to said at least one selected item
`
`of multimedia content on said terminal responsive to
`
`said payment validation data,
`
`wherein said user interface is operable to enable a user to
`
`select said at least one item of multimedia content
`
`available from said non-volatile memory; and
`
`wherein said user interface is operable to enable a user to
`
`access said at least one selected item of multimedia
`
`content responsive to said code to control access
`
`permitting access to said at least one selected item of
`
`multimedia content.1
`
`Challenged claim 18 recites:
`
`18. A method as claimed in claim 14, further comprising:
`
`receiving a request from the handheld multimedia
`
`terminal for content information pertaining to at least one
`
`of the items of multimedia content identified by the
`
`
`1 All emphasis in this petition is added unless otherwise indicated.
`
`
`
`5
`
`
`
`
`
`identifier data, wherein the content information
`
`comprises one or more of description data and cost data;
`
`retrieving the content information from the data store;
`
`and
`
`transmitting the content information to the handheld
`
`multimedia terminal.
`
`Claim 14, from which challenged claim 18 depends, recites:
`
`14. A method of providing an item of multimedia content to a
`
`handheld multimedia terminal, the method comprising:
`
`receiving a request from the handheld multimedia
`
`terminal for identifier data identifying one or more items
`
`of multimedia content data available to the handheld
`
`multimedia terminal;
`
`retrieving the identifier data from a data store;
`
`transmitting the identifier data to the handheld
`
`multimedia terminal;
`
`receiving payment validation data validating a user
`
`purchase of an item of multimedia content; and
`
`responsive to the payment validation data validating
`
`the user purchase, retrieving the purchased item of
`
`multimedia content data from a multimedia content store
`
`and transmitting the purchased item of multimedia
`
`content to the handheld multimedia terminal.
`
`
`
`6
`
`
`
`
`
`Because claims 1 and 18 are directed to subject matter that is both financial in
`
`nature and devoid of any technological invention, the ’516 patent is eligible for
`
`review under the transitional covered business method patent program.
`
`1.
`
`Claims 1 And 18 Cover Subject Matter That Is Financial In
`Nature
`
`The ’516 patent relates to the idea of providing data in exchange for
`
`payment and controlling access to data based on payment. Ex. 1001 at 1:62-2:19.
`
`The specification of the ’516 patent repeatedly emphasizes payment in describing
`
`the purported invention. Id. at 1:62-2:3 (“According to the present invention there
`
`is therefore provided a method of providing portable data comprising . . . payment
`
`validation means; . . . reading payment information from the payment validation
`
`means using the terminal; validating the payment information; . . . .”); see also id.
`
`at 6:64-67 (noting that the “payment data” forwarded to the “payment validation
`
`system” “may either be data relating to an actual payment made to the data
`
`supplier, or it may be a record of a payment made to an e-payment system”); id. at
`
`20:59-61 (“Payment for the data item or items requested may either be made
`
`directly to the system owner or may be made to an e-payment system . . . .”); id. at
`
`13:43-55 (explaining that “e-payment systems . . . are coupled to banks” and that
`
`“these provide an e-payment system according to, for example, MONDEX, Proton,
`
`and/or Visa cash compliant standards”).
`
`
`
`7
`
`
`
`
`
`Claim 1 explicitly describes transmitting payment data for validation by a
`
`payment validation system, receiving payment validation data defining if the
`
`payment validation system has validated payment, and controlling access based on
`
`the receipt of payment validation data. Claim 18 explicitly describes receiving
`
`payment validation data validating a purchase and retrieving what was purchased
`
`only once the payment validation data has been received. In other words, each of
`
`claims 1 and 18 recites conditioning access based on the validation of payment,
`
`which constitutes a financial activity. See, e.g., Apple Inc. v. Smartflash LLC,
`
`CBM2014-00110, Paper 7 at 10 (P.T.A.B. Sept. 30, 2014) (finding that “payment
`
`validation is a financial activity” and that “conditioning data access based on
`
`payment validation amounts to a financial service”); Apple Inc. v. Smartflash LLC,
`
`CBM2014-00111, Paper 7 at 11 (P.T.A.B. Sept. 30, 2014) (same); Samsung Elecs.
`
`Am., Inc. v. Smartflash LLC, CBM2014-00200, Paper 9 at 8 (P.T.A.B. Mar. 30,
`
`2015) (same); Samsung Elecs. Am., Inc. v. Smartflash LLC, CBM2014-00204,
`
`Paper 9 at 9 (P.T.A.B. Mar. 30, 2015) (same). Claims 1 and 18 thus clearly claim
`
`“activities that are financial in nature, incidental to a financial activity or
`
`complementary to a financial activity.” CBM Definitions, 77 Fed. Reg. at 48,735
`
`(quoting 157 Cong. Rec. S5432 (statement of Sen. Schumer)).
`
`
`
`8
`
`
`
`
`
`2.
`
`Claims 1 And 18 Do Not Cover A Technological Invention
`
`Claims 1 and 18 of the ’516 patent do not describe a “technological
`
`invention” because they do 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.” 37 C.F.R. § 42.301(b).
`
`Accordingly, the ’516 patent does not fall into the sole statutory exception that
`
`would remove it from the definition of a “covered business method patent.” AIA §
`
`18(d)(1).
`
`As an initial matter, no “technological feature” of claim 1 or claim 18 is
`
`“novel and unobvious.” See Ex. 1002 at ¶¶ 56-61. “Mere recitation of known
`
`technologies, such as computer hardware, communication or computer networks,
`
`software, memory, computer-readable storage medium, scanners, display devices
`
`or databases, or specialized machines, such as an ATM or point of sale device”
`
`will “not typically render a patent a technological invention.” Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012). Claim 1 recites a
`
`generic “handheld multimedia terminal” comprised of just such known
`
`technologies—i.e., a “wireless interface” for a “wireless network,” “non-volatile
`
`memory,” a “program store,” a “processor,” a “user interface,” and a “display.”
`
`Indeed, the ’516 patent specification confirms that the recited computer hardware
`
`is in no way novel or unobvious, describing, for example, the claimed “non-
`
`
`
`9
`
`
`
`
`
`volatile memory” as standard “EEPROM” or “Flash memory” and the recited
`
`“wireless network” as “any electronic communications network.” Ex. 1001 at
`
`4:47-49, 25:51-54. In addition to a generic “handheld media terminal,” claim 18
`
`recites a “data store,” but the specification makes clear that a “data store” simply
`
`refers to any known storage medium. Id. at 11:34-37, 14:33-37, Fig. 9; see also
`
`Apple Inc. v. Smartflash LLC, CBM2014-00112, Paper 7 at 11 (P.T.A.B. Sept. 30,
`
`2014) (finding that a “data store” is “described as generic memory” in the
`
`specification shared by the ’516 patent). Accordingly, neither claim 1 nor claim 18
`
`recites a “technological feature” that is “novel and unobvious.” See Samsung,
`
`CBM2014-00190, Paper 9 at 10; Apple Inc. v. Smartflash LLC, CBM2015-00015,
`
`Paper 23 at 14 (P.T.A.B. Apr. 10, 2015); Apple Inc. v. Smartflash LLC, CBM2015-
`
`00016, Paper 23 at 16 (P.T.A.B. Apr. 10, 2015); Apple Inc. v. Smartflash LLC,
`
`CBM2015-00017, Paper 22 at 13 (P.T.A.B. Apr. 10, 2015); Apple Inc. v.
`
`Smartflash LLC, CBM2015-00018, Paper 15 at 8 (P.T.A.B. Apr. 10, 2015)
`
`(together finding that claims in five patents sharing the same specification as the
`
`’516 patent recite only “a combination of known technologies” and are eligible for
`
`CBM review).
`
`Moreover, claims 1 and 18 do not solve “a technical problem using a
`
`technical solution.” 37 C.F.R. § 42.301(b). The ’516 patent purportedly solves a
`
`business problem—namely, the problem of consumers accessing content (like
`
`
`
`10
`
`
`
`
`
`videos and music) without paying for it. Ex. 1001 at 1:32-58. Indeed, the ’516
`
`patent states that “there is an urgent need to find a way to address the problem of
`
`data piracy” (i.e., a business problem), while simultaneously acknowledging that
`
`the “physical embodiment of the system” for solving that problem “is not critical”
`
`(i.e., the solution is not a technical one). Id. at 1:56-58, 12:37-40. It is thus clear
`
`that the ’516 patent addresses neither a technical problem nor a technical solution.
`
`See Samsung, CBM2014-00190, Paper 9 at 11; Apple, CBM2015-00015, Paper 23
`
`at 14; Apple, CBM2015-00016, Paper 23 at 16; Apple, CBM2015-00017, Paper 22
`
`at 13; Apple, CBM2015-00018, Paper 15 at 9 (together finding that five patents
`
`sharing the same specification as the ’516 patent address a “business problem” and
`
`are eligible for CBM review).
`
`In sum, as the Board has found in the context of five patents related to the
`
`’516 patent, the common specification “makes clear that the asserted novelty of the
`
`[alleged] invention is not in any specific improvement of software or hardware.”
`
`E.g., Samsung, CBM2014-00190, Paper 9 at 10; Apple, CBM2015-00015, Paper
`
`23 at 14; Apple, CBM2015-00016, Paper 23 at 15; Apple, CBM2015-00017, Paper
`
`22 at 12; Apple, CBM2015-00018, Paper 15 at 8. Consistent with the
`
`specification’s disclosures in that regard, claims 1 and 18 do not recite a
`
`technological invention, and the ’516 patent is eligible for a covered business
`
`method patent review.
`
`
`
`11
`
`
`
`
`
`III. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`
`A.
`
`PETITIONER IS A REAL PARTY IN INTEREST SUED FOR
`AND CHARGED WITH INFRINGEMENT
`
`Petitioner Google is a real party-in-interest. The patent holder’s complaint
`
`in Smartflash LLC, et al. v. Google Inc., et al., No. 6:14-cv-435, pending in the
`
`Eastern District of Texas, asserts the ’516 patent against the petitioner.
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`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(B)(2)
`
`The patent holder has also asserted the ’516 patent in the following cases to
`
`which petitioner is not a party: Smartflash LLC, et al. v. Amazon.com, Inc., No.
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`6:14-cv-992 (E.D. Tex.), and Smartflash LLC, et al. v. Apple Inc., No. 6:15-cv-145
`
`(E.D. Tex.). Petitioner identifies the following administrative matters, including
`
`patent applications to which the ’516 patent claims the benefit of priority: App’n
`
`No. 10/111,716 (filed as No. PCT/GB00/4110); App’n No. 11/336,758; App’n No.
`
`12/014,558; App’n No. 12/943,872; App’n No. 13/212,047, App’n No.
`
`13/438,754; and CBM No. CBM2015-00121 filed by Apple Inc.
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`C. LEAD AND BACKUP COUNSEL UNDER 37 C.F.R. § 42.8(B)(2)
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`Petitioner designates Raymond N. Nimrod (Reg. No. 31,987) as Lead
`
`Counsel and Charles K. Verhoeven (pro hac vice motion to be filed), Melissa J.
`
`Baily (pro hac vice motion to be filed), and Andrew M. Holmes (Reg. No. 64,718)
`
`as Backup Counsel. Petitioner may be served at Quinn Emanuel Urquhart &
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`Sullivan, LLP, 50 California Street, 22nd Floor, San Francisco, California 94111
`
`
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`12
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`
`
`
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`(Tel: 415-875-6600; Fax: 415-875-6700) or by electronic service at the address
`
`QE-SF-PTAB-Service@quinnemanuel.com.
`
`IV. PAYMENT OF FEES
`
`Petitioner authorizes charges to Deposit Account No. 505708 for the fee set
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`in 37 C.F.R. § 42.15(b) for this petition and any related additional fees.
`
`V. CLAIM CONSTRUCTION
`
`
`
`The challenged claims must be given their broadest reasonable
`
`interpretations (“BRI”). 37 C.F.R. § 42.300(b). When there is co-pending
`
`litigation regarding the challenged claims, the patent holder’s litigation positions
`
`regarding claim scope are instructive, especially where those positions support a
`
`broad reading of the claims. See, e.g., SAP Am., Inc. v. Versata Dev. Grp., Inc.,
`
`CBM2012-00001, Paper 70 at 19-24 (P.T.A.B. June 11, 2013). Any constructions
`
`adopted by a district court are also highly relevant because it would be
`
`“incongruous to adopt a narrower construction in [a post-grant proceeding],
`
`wherein the claims are construed using the broadest reasonable interpretation
`
`standard, than was adopted in [a district court], in which a narrower, Phillips
`
`construction standard applied.” Ariosa Diagnostics v. Isis Innovation Ltd.,
`
`IPR2012-00022, Paper 166 at 24 (P.T.A.B. Sept. 2, 2014); Foursquare Labs Inc. v.
`
`Silver State Intellectual Techs., Inc., IPR2014-00159, Paper 13 at 3-4 (P.T.A.B.
`
`
`
`13
`
`
`
`
`
`Aug. 1, 2014) (revisiting and broadening a previous construction to be at least as
`
`broad as the district court’s construction).
`
`
`
`In light of these principles, any constructions adopted in this proceeding
`
`should be at least as broad as those adopted by the district court in Smartflash LLC,
`
`et al. v. Samsung Electronics. Co., Ltd., et al., No. 6:13-cv-448 (E.D. Tex.) and
`
`Smartflash LLC, et al. v. Apple Inc., et al., No. 6:13-cv-447 (E.D. Tex.), in which
`
`the patent holder asserted five patents sharing the same specification as the ’516
`
`patent.2 Ariosa, IPR2012-00022, Paper 166 at 24; Foursquare, IPR2014-00159,
`
`Paper 13 at 3-4. Moreover, any constructions adopted in this proceeding should be
`
`heavily informed by the patent holder’s positions in its various district court
`
`actions, as the patent holder should not be permitted to both wield broad
`
`constructions in an attempt to establish infringement in the district court and
`
`simultaneously seek to establish validity using narrower constructions here. See
`
`SAP, CBM2012-00001, Paper 70 at 20 n.16, 23; Ariosa, IPR2012-00022, Paper
`
`166 at 24; Foursquare, IPR2014-00159, Paper 13 at 3-4. For these reasons and
`
`
`2 Because the standard for claim construction here is different than the
`
`standard used in litigation, Google expressly reserves the right to argue in litigation
`
`a different claim construction for any term in the ’516 patent, as appropriate to that
`
`proceeding. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 1369
`
`(Fed. Cir. 2004); MPEP § 2111.
`
`
`
`14
`
`
`
`
`
`those noted below, the Board should adopt the following constructions for the
`
`terms “payment data,” “payment validation system,” “payment validation data,”
`
`“supplementary data,” “program store,” and “access rule.”
`
`A.
`
`“PAYMENT DATA”
`
`
`
`Challenged claims 1 and 3 of the ’516 patent recite the term “payment data.”
`
`The Board has not found it necessary to expressly construe “payment data” in
`
`connection with its previous findings that numerous claims of patents sharing the
`
`same specification as the ’516 patent are more likely than not invalid under Section
`
`101. E.g., Samsung, CBM2014-00190, Paper 9 at 11-16.
`
`
`
`Nonetheless, the breadth of the patent holder’s and the district court’s
`
`construction of the term “payment data” is worth noting here. In the Samsung and
`
`Apple actions, at the patent holder’s urging, the district court construed “payment
`
`data” to mean “data that can be used to make a payment for content.” Ex. 1011 at
`
`11. In arriving at this construction, the district court stated that “[t]he specification
`
`and cited claim language use payment data broadly to refer to whatever data is
`
`being used ‘for making a payment.’” Id. (citing the ’720 patent specification (Ex.
`
`1027)—which is identical to the ’516 patent specification—at 21:15). In the
`
`Google district court action, the patent holder has asserted that
`
`
`
`
`
`
`
`15
`
`
`
`
`
`
`
` E.g., Ex. 1016 at 908.
`
`In light of the district court’s construction in the Samsung and Apple actions,
`
`
`
`the patent holder’s litigation position vis-à-vis the petitioner in the Google district
`
`court proceedings, and the BRI standard applicable here, the Board should construe
`
`“payment data” to mean: “any information that can be used in connection with the
`
`process of making a payment for content.” See Ex. 1002 at ¶¶ 33-35.
`
`B.
`
`“PAYMENT VALIDATION SYSTEM”
`
`
`
`Challenged claims 1 and 3 of the ’516 patent recite the term “payment
`
`validation system.” The Board has not previously found it necessary to expressly
`
`construe “payment validation system” in connection with its previous finding that
`
`numerous claims of patents sharing the same specification as the ’516 patent are
`
`more likely than not invalid under Section 101. Nonetheless, the Board has noted
`
`that the common specification “discloses that the required payment validation
`
`system may be one that is already in use or otherwise available” and that “[t]he
`
`payment validation system may be part of the data supplier’s computer systems or
`
`it may be a separate e-payment system.” E.g., Apple, CBM2014-00110, Paper 7 at
`
`12-13 (citing the ’772 patent specification (Ex. 1028)—which is identical to the
`
`’516 patent specification—at 9:1-3, 13:55-67).
`
`
`
`16
`
`
`
`
`
`
`
`It should also be noted that in the Samsung and Apple actions, the district
`
`court construed “payment validation system” broadly to mean a “system that
`
`returns payment validation data based on an attempt to validate payment data.”
`
`Ex. 1011 at 11-14. And in the Google district court proceedings, the patent holder
`
`has identified
`
`
`
`
`
` E.g., Ex. 1016 at 908.
`
`
`
`In light of the district court’s construction in the Samsung and Apple actions,
`
`the patent holder’s litigation position vis-à-vis the petitioner in the Google district
`
`court proceedings, and the BRI standard applicable here, the Board should construe
`
`“payment validation system” to mean: “any system that returns information in
`
`connection with an attempt to validate payment data” (wherein “payment data”
`
`must be construed broadly to include “any information that can be used in
`
`connection with the process of making a payment for content”). See Ex. 1002 at
`
`¶¶ 36-38.
`
`C.
`
`“PAYMENT VALIDATION DATA”
`
`
`
`All challenged claims recite the term “payment validation data.” The Board
`
`has not found it necessary to expressly construe “payment validation data” in
`
`connection with its previous findings that numerous claims of patents sharing the
`
`
`
`17
`
`
`
`
`
`same specification as the ’516 patent are more likely than not invalid under Section
`
`101. E.g., Samsung, CBM2014-00190, Paper 9 at 11-16.
`
`
`
`Nonetheless, the breadth of the patent holder’s and the district court’s
`
`construction of the term “payment validation data” is notable. In the Samsung and
`
`Apple actions, the district court ruled that “payment validation data” should be
`
`given its plain meaning, and the patent holder contended that, according to its plain
`
`meaning, “payment validation data” need not indicate that a payment has been
`
`authorized. Ex. 1011 at 14-15; Ex. 1012 at 8-9, 11-12 (citing the ’720 patent
`
`specification (Ex. 1027)—which is identical to the ’516 patent specification—at,
`
`e.g., 13:53-62). In the Google litigation proceedings, the patent holder has
`
`contended that the term
`
`
`
`
`
` Ex. 1016 at 114.
`
`
`
`In light of the district court’s construction in the Samsung and Apple actions,
`
`the patent holder’s litigation position vis-à-vis the petitioner in the Google
`
`litigation proceedings, and the BRI standard applicable here, the Board should
`
`construe “payment validation data” to mean: “information returned in connection
`
`with an attempt to validate payment data” (wherein “payment data” must be
`
`construed broadly to include “any information that can be used in connection with
`
`the process of making a payment for content”). See Ex. 1002 at ¶¶ 39-42.
`
`
`
`18
`
`
`
`
`
`
`
`D.
`
`“SUPPLEMENTARY DATA”
`
`The term “supplementary data” is recited in challenged claim 3. The
`
`specification of the ’516 patent states that examples of supplementary data are
`
`advertising data, customer reward management data, and/or hot links to web sites.
`
`Ex. 1001 at Abstract, 5:53-60, 24:64-25:4. The specification further states that
`
`supplementary data may also comprise “a pointer to an external data source from
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`which data is downloaded either
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