throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GOOGLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00143
`
`Patent 8,794,516
`
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`

`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`
`PATENT OWNER’S LIST OF EXHIBITS ............................................................ iii
`
`I.
`
`II.
`
`III. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 325(d) AND DECLINE TO INSTITUTE COVERED BUSINESS
`METHOD PATENT REVIEW ....................................................................... 7
`
`OVERVIEW OF U.S. PATENT NO. 8,794,516 ............................................ 4
`
`
`IV. THE CLAIMS OF THE ‘516 PATENT ARE STATUTORY ........................ 8
`A.
`The Two-Part Test for Statutory Subject Matter .................................. 8
`
`B.
`
`C.
`
`The Claims Are Statutory Under Mayo and Alice ................................ 9
`
`The Claims Do Not Result in Inappropriate Preemption .................... 24
`
`Preemption under DDR Holdings ............................................. 24
`1.
`Preemption under Mayo and Alice ............................................ 25
`2.
`Non-Infringing Alternatives Show a Lack of Preemption ........ 27
`3.
`4. The Challenged Claims are Distinguishable from the Claims in
`Ariosa Diagnostics .................................................................... 32
`
`
`V. A FEDERAL COURT HAS ALREADY FOUND RELATED CLAIMS
`FROM THE SAME PATENT FAMILY TO BE STATUTORY UNDER
`§ 101 .............................................................................................................. 35
`
`
`VI. SECTION 101 IS NOT A GROUND THAT MAY BE RAISED IN
`COVERED BUSINESS METHOD PATENT REVIEW ............................. 37
`
`
`
`
`
`- i -
`
`

`
`VII.
`
`THE USPTO IS ESTOPPED FROM REVISITING THE ISSUE OF
`
`VII. THE USPTO IS ESTOPPED FROM REVISITING THE ISSUE OF
`WHETHER THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT
`MATTER ....................................................................................................... 39
`
`WHETHER THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT
`
`MATTER ..................................................................................................... ..39
`
`
`VIII. INVALIDATING PATENT CLAIMS VIA CBM REVIEW IS
`UNCONSTITUTIONAL ............................................................................... 40
`
`VIII.
`
`INVALIDATING PATENT CLAIMS VIA CBM REVIEW IS
`
`UNCONSTITUTIONAL ............................................................................. . .40
`
`IX.
`
`DR. TYGAR’S DECLARATION SHOULD NOT BE CONSIDERED .... ..42
`
`
`IX. DR. TYGAR’S DECLARATION SHOULD NOT BE CONSIDERED ...... 42
`
`X.
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`FINANCIAL PRODUCT OR SERVICE ...................................................... 42
`
`FINANCIAL PRODUCT OR SERVICE .................................................... ..42
`
`
`XI. THE CHALLENGED CLAIMS OF THE ‘516 PATENT ARE
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW .... 50
`
`XI.
`
`THE CHALLENGED CLAIMS OF THE ‘5 16 PATENT ARE
`
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW....50
`
`
`XII. CONCLUSION .............................................................................................. 52
`
`CONCLUSION ............................................................................................ . .52
`
`XII.
`
`
`
`- ii -
`
`
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`
`

`
`PATENT OWNER’S LIST OF EXHIBITS
`
`Exhibit Number
`
`Exhibit Description
`
`2001
`
`2002
`
`Congressional Record - House, June 23, 2011, H4480-4505
`
`Congressional Record - Senate, Sep. 8, 2011, S5402-5443
`
`2003-2048
`
`Reserved
`
`2049
`
`2050
`
`Report and Recommendation (on Defendants’ Motions for
`Summary Judgment of Invalidity Pursuant to 35 U.S.C. 101),
`from Smartflash LLC et al. v. Apple, Inc., et al., Case No.
`6:13-CV-447 (E.D. Tex.) and Smartflash LLC et al. v.
`Samsung Electronics Co. Ltd, et al., Case No. 6:13-CV-448
`(E.D. Tex.), dated Jan. 21, 2015
`
`Order adopting Report and Recommendation (on
`Defendants’ Motions for Summary Judgment of Invalidity
`Pursuant to 35 U.S.C. 101), from Smartflash LLC et al. v.
`Apple, Inc., et al., Case No. 6:13-CV-447 (E.D. Tex.) and
`Smartflash LLC et al. v. Samsung Electronics Co. Ltd, et al.,
`Case No. 6:13-CV-448 (E.D. Tex.), dated Feb. 13, 2015
`
`2051-2067
`
`Reserved
`
`2068
`
`Deposition Transcript of Anthony J. Wechselberger dated
`May 28, 2015 taken in CBM2015-00015, -00016, -00017
`and -00018
`
`2069-2074
`
`Reserved
`
`2075
`
`Order (on Defendants’ Renewed Motion for Judgment as a
`
`
`
`- iii -
`
`

`
`Exhibit Number
`
`Exhibit Description
`
`Matter of Law on the Issue of § 101 under Rule 50(b)); Dkt.
`# 585; from Smartflash LLC, et al. v. Apple Inc., et al., Case
`No. 6:13-CV-447 (E.D. Tex.) dated July 8, 2015.
`
`2076
`
`Deposition Transcript of Anthony J. Wechselberger dated
`July 22, 2015 taken in CBM2015-00028, -00029, -00031, -
`00032 and -00033
`
`2077-2092
`
`Reserved
`
`2093
`
`Declaration of Emily E. Toohey in Support of Patent
`Owner’s Preliminary Response
`
`
`
`
`
`- iv -
`
`

`
`Pursuant to 37 C.F.R. § 42.107, Smartflash LLC (“Patent Owner”) files this
`
`preliminary response to the petition, setting forth reasons why no new covered
`
`business method review of U.S. Patent 8,794,516 should be instituted as requested
`
`by Google Inc. (“Google” or “Petitioner”). Arguments presented herein are
`
`presented without prejudice to presenting additional arguments in a later response
`
`should the Board institute a CBM review.
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Google seeks covered business method (CBM) review of claims 1,
`
`3, 5, 10, 12, 18, 19, 21, and 24 of U.S. Patent No. 8,794,516 (“the ‘516 Patent”) as
`
`being unpatentable under 35 U.S.C. § 101. Redacted Petition, Paper 2 at 1.
`
`This case constitutes the second Petition seeking CBM review of the ‘516
`
`Patent arguing that the ‘516 Patent is directed to ineligible subject matter under
`
`§ 101. On May 6, 2015 another petitioner, Apple Inc. (“Apple”) filed a petition, in
`
`CBM2015-00121, seeking review of claims 1-28 of the ‘516 Patent (all of the ‘516
`
`Patent claims) as unpatentable under § 101. CBM2015-00121, Corrected Petition,
`
`Paper 2 at 1. Thus, at the time the instant Petition was filed on May 13, 2015,
`
`Apple was already seeking review of each and every claim of the ‘516 Patent
`
`under § 101, including the same claims as Google (claims 1, 3, 5, 10, 12, 18, 19,
`
`21, and 24) on the same grounds as Google (§ 101). The Board should exercise its
`
`
`
`- 1 -
`
`

`
`discretion under 35 U.S.C. § 325(d) to decline to institute a covered business
`
`method patent review of claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 of the ‘516
`
`Patent here given that they are duplicative of claims for which review was
`
`requested in CBM2015-00121.
`
`The challenged claims of the ‘516 Patent are directed to statutory subject
`
`matter because they claim a solution “necessarily rooted in computer technology in
`
`order to overcome a problem specifically arising in the realm of computer
`
`networks.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
`
`Cir. 2014). As demonstrated below, the challenged claims do not result in
`
`inappropriate preemption nor is there any credible evidence that a disproportionate
`
`amount of future innovation is foreclosed by the challenged claims of the ‘516
`
`patent.
`
`Additionally, in February 2015, The United States District Court for the
`
`Eastern District of Texas examined the purely legal issue of whether numerous
`
`claims from five patents in the same patent family as the ‘516 Patent, and relating
`
`to similar technology, are directed to statutory subject matter under 35 U.S.C. §
`
`101. The District Court found the claims to be statutory. See Exhibit 2049, Report
`
`and Recommendation (on Defendants’ Motions for Summary Judgment of
`
`Invalidity Pursuant to 35 U.S.C. § 101) (hereinafter “Report and
`
`Recommendation”), from Smartflash LLC, et al. v. Apple Inc., et al., Case No.
`
`
`
`- 2 -
`
`

`
`6:13-CV-447 (E.D. Tex.) and Smartflash LLC, et al. v. Samsung Electronics Co.
`
`Ltd, et al., Case No. 6:13-CV-448 (E.D. Tex.), dated Jan. 21, 2015, and Exhibit
`
`2050, Order adopting Report and Recommendation (on Defendants’ Motions for
`
`Summary Judgment of Invalidity Pursuant to 35 U.S.C. § 101), from Smartflash
`
`LLC, et al. v. Apple Inc., et al., Case No. 6:13-CV-447 (E.D. Tex.) and Smartflash
`
`LLC, et al. v. Samsung Electronics Co. Ltd, et al., Case No. 6:13-CV-448 (E.D.
`
`Tex.), dated Feb. 13, 2015.
`
`On July 8, 2015 the District Court “decline[d] to revise or revisit its Rule 56
`
`Order” on post-trial motion, finding that “[t]he § 101 issue has already received
`
`full and fair treatment.” See Exhibit 2075, Order (on Defendants’ Renewed
`
`Motion for Judgment as a Matter of Law on the Issue of § 101 under Rule 50(b));
`
`Dkt. # 585; Smartflash LLC, et al. v. Apple Inc., et al., Case No. 6:13-CV-447
`
`(E.D. Tex. July 8, 2015) (emphasis added).
`
`Patent Owner submits that the USPTO has already adjudicated the threshold
`
`question of whether the challenged claims comport with 35 U.S.C. § 101, which is
`
`a question of law, during the prosecution of the ‘516 Patent. The USPTO is
`
`estopped from re-litigating the purely legal issue already considered and
`
`adjudicated by the USPTO.
`
`Patent Owner further submits that the CBM review process is an
`
`unconstitutional violation of Separation of Powers principles.
`
`
`
`- 3 -
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`

`
`Finally, Patent Owner submits that § 101 is not a ground on which CBM
`
`review may be instituted.
`
`
`
`II. OVERVIEW OF U.S. PATENT NO. 8,794,516
`
`Although the claims define the actual scope of coverage of the patent, as
`
`described in the first paragraph of the BACKGROUND OF THE INVENTION,
`
`the patent-at-issue, U.S. Patent No. 8,794,516 (hereinafter “the ‘516 Patent”)
`
`generally describes “data storage and access systems ... [and] is particularly useful
`
`for managing stored audio and video data, but may also be applied to storage and
`
`access of text and software, including games, as well as other types of data.” Col.
`
`1, lines 23-31.
`
`Preferred embodiments described in the paragraph crossing cols. 15 and 16
`
`illustrate this further: “FIG. 7 ... shows a variety of content access terminals for
`
`accessing data supply computer system 120 over internet 142. The terminals are
`
`provided with an interface to a portable data carrier or ‘smart Flash card’ (SFC) as
`
`generally described with reference to FIG. 2 and as described in more detail below.
`
`In most embodiments of the terminal the SFC interface allows the smart Flash card
`
`data carrier to be inserted into and removed from the terminal, but in some
`
`embodiments the data carrier may be integral with the terminal.” Exemplary
`
`
`
`- 4 -
`
`

`
`terminals include, but are not limited to, set-top boxes 154, CD/DVD Players 170
`
`and mobile communications devices 152. Col. 16, lines 7-26.
`
`Referring to preferred embodiments, the ‘516 Patent discloses that a data
`
`supply system may provide users with a seamless purchase and content delivery
`
`experience. Col. 24, lines 5-10. Users are able to purchase content from a variety
`
`of different content providers even if they do not know where the content providers
`
`are located or how the content is delivered. See id. The exemplary system is
`
`operated by a “content data supply ‘system owner,’” who may act as an
`
`intermediary between a user seeking to purchase content and content providers,
`
`such as record labels, movie studios, and software providers. See col. 14, lines 1-8.
`
`When a user accesses the system, he or she is able to select content to purchase or
`
`rent from a variety of different content providers. See col. 5, lines 1-12. If the user
`
`finds a content item to buy, his or her device will transmit stored “payment data” to
`
`a “payment validation system” to validate the payment data. See col. 8, lines 7-11.
`
`The payment validation system returns proof that the payment data has been
`
`validated, in the form of “payment validation data,” and the user is able to retrieve
`
`the purchased content from the content provider. See col. 8, lines 11-14.
`
`Col. 24, lines 25-27, discloses that “FIG. 13 ... shows a flow chart for user
`
`access of stored data on a smart Flash card using a data access device such as the
`
`MP3 player of FIG. 1.” Col. 9, lines 26-28, discloses “The data access device uses
`
`
`
`- 5 -
`
`

`
`the use status data and use rules to determine what access is permitted to data
`
`stored on the data carrier.” Col. 5, lines 4-12, discloses “The carrier may ... store
`
`content use rules pertaining to allowed use of stored data items. These use rules
`
`may be linked to payments made from the card to provide payment options such as
`
`access to buy content data outright; rental access to content data for a time period
`
`or for a specified number of access events; and/or rental/purchase, for example
`
`where rental use is provided together with an option to purchase content data at the
`
`reduced price after rental access has expired.” Further, as described in col. 9, lines
`
`39-41, “use status data [is retrieved] from the data carrier [to] indicat[e] past use of
`
`the stored data.” Thus, as described in col. 5, lines 33-37, “[b]y combining digital
`
`rights management with content data storage using a single carrier, the stored
`
`content data becomes mobile and can be accessed anywhere while retaining control
`
`over the stored data for the data content provider or data copyright owner.”
`
`By using a system that combines on the data carrier both the digital content
`
`and the use rules/use status data, access control to the digital content can be
`
`continuously enforced prior to access to the digital content. By comparison, unlike
`
`a system that uses use rules/use status data as claimed, when a DVD was
`
`physically rented for a rental period, the renter could continue to play the DVD,
`
`even if the renter kept the DVD past the rental period because the use rules were
`
`not associated with the DVD. Similarly, there was no way to track a use of the
`
`
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`- 6 -
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`

`
`DVD such that a system could limit its playback to specific number of times (e.g.,
`
`three times) or determine that the DVD had only been partially used.
`
`
`
`III. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 325(d) AND DECLINE TO INSTITUTE COVERED BUSINESS
`METHOD PATENT REVIEW
`
`Google’s § 101 unpatentable subject matter ground asserted here against
`
`claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 of the ‘516 Patent is duplicative of
`
`grounds already asserted by Apple in CBM2015-00121.
`
`Here, the Board should exercise its discretion under 35 U.S.C. § 325(d) and
`
`decline to institute a covered business method patent review of claims 1, 3, 5, 10,
`
`12, 18, 19, 21, and 24 of the ‘516 Patent on 35 U.S.C. § 101 grounds in CBM2015-
`
`00143 because Google’s petition overlaps with Apple’s request for review of
`
`claims 1-28 of the ‘516 Patent on the same purely legal § 101 grounds in
`
`CBM2015-00121.
`
`“[T]he Board is charged with securing the just, speedy, and inexpensive
`
`resolution of every proceeding.” EMC Corporation, et al. v. Personal Web
`
`Technologies, LLC, Case IPR2013-00082, Paper 33 at 4 (PTAB June 5,
`
`2013)(Decision, Denying Request for Rehearing)(citing 37 C.F.R. § 42.1(b)).
`
`“Rules for inter partes review proceedings were promulgated to take into account
`
`the ‘regulation on the economy, the integrity of the patent system, the efficient
`
`
`
`- 7 -
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`

`
`administration of the Office, and the ability of the Office to timely complete
`
`proceedings.’” Id. at 2 (citing 35 U.S.C. § 316(b)).
`
`Here, instituting a repetitive action runs afoul of the Board’s charge to
`
`“secure the just, speedy, and inexpensive resolution” of the covered business
`
`method challenges to the ‘516 Patent. Patent Owner respectfully requests that the
`
`Board deny review on Google’s § 101 unpatentable subject matter grounds that are
`
`repetitive of the review requested in CBM2015-00121.
`
`
`
`IV. THE CLAIMS OF THE ‘516 PATENT ARE STATUTORY
`
`A.
`
`The Two-Part Test for Statutory Subject Matter
`
`The Supreme Court articulated a two-part test for patentability in Mayo
`
`Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012),
`
`which has been followed by Alice Corp. Pty. v. CLS Bank Int'l, 134 S. Ct. 2347
`
`(2014). The first step in the analysis is to determine whether the claims at issue are
`
`directed to patent-ineligible concepts. If the claims at issue are directed to a
`
`patent-ineligible concept, the second step of the analysis is to determine whether
`
`the limitations of the claims, individually and as ordered combinations, contain an
`
`inventive concept that transforms the nature of the claims into patent-eligible
`
`subject matter. Mayo, 132 S. Ct. at 1294.
`
`
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`- 8 -
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`

`
`B.
`
`The Claims Are Statutory Under Mayo and Alice
`
`Post Mayo and Alice, the Federal Circuit has provided guidance on how to
`
`distinguish statutory claims, like those of the ‘516 Patent, from non-statutory
`
`claims. In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
`
`2014), the Federal Circuit analyzed claims, such as the ones at issue here, that have
`
`technological solutions to technological problems created by the nature of digital
`
`content and the Internet. In DDR Holdings, the system of exemplary claim 19
`
`included (a) a computer store containing the data needed to support operation of
`
`the system and (b) a computer server (or processor) that was coupled to the
`
`computer store, where the claimed system was programmed to (by having code
`
`configured to) perform the solution to a network-specific problem. The computer
`
`server was “programmed to” perform four steps. The first two steps are “(i)
`
`receive from the web browser of a computer user a signal indicating activation of
`
`one of the links displayed by one of the first web pages; [and] (ii) automatically
`
`identify as the source page the one of the first web pages on which the link has
`
`been activated.” The third and fourth steps were “(iii) in response to identification
`
`of the source page, automatically retrieve the stored data corresponding to the
`
`source page; and (iv) 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)
`
`
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`- 9 -
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`

`
`the plurality of visually perceptible elements visually corresponding to the source
`
`page.” The Court found the claims to be statutory because “the claimed solution is
`
`necessarily rooted in computer technology in order to overcome a problem
`
`specifically arising in the realm of computer networks.” Id. at 1257.
`
`Such is the case here, too. Here, the claims are directed to particular devices
`
`and methods that can download and store digital content, and such devices and
`
`methods can utilize use rules and/or use status data stored to control access to the
`
`downloaded and stored digital content. Like in DDR Holdings, this is not a
`
`problem that arises in a “brick and mortar” context as brick and mortar stores are
`
`not used to download and store digital content and do not utilize use rules and/or
`
`use status data stored to control access to the downloaded and stored digital
`
`content. The devices and methods provide additional advantages over “brick and
`
`mortar” facilities. For example, by using a system that combines on the data
`
`carrier both the digital content and the use rules/use status data, access control to
`
`the digital content can be continuously enforced prior to access to the digital
`
`content. By comparison, unlike a system that uses use rules/use status data as
`
`claimed, when a DVD was physically rented for a rental period, the renter could
`
`continue to play the DVD, even if the renter kept the DVD past the rental period
`
`because the use rules were not associated with the DVD. Similarly, there was no
`
`way to track a use of the DVD such that a system could limit its playback to
`
`
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`- 10 -
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`

`
`specific number of times (e.g., three times) or determine that the DVD had only
`
`been partially used. Thus, contrary to the assertion of the Petition, the claims are
`
`not directed to the “concept of controlling access based on payment” nor are they
`
`directed to “the most basic ‘building block of the modern economy.’” Petition at
`
`28.
`
`Furthermore, claims of the ‘516 Patent use link-like access to cause digital
`
`content to be retrieved (e.g., where the handheld multimedia terminal uses “code to
`
`request identifier data identifying one or more items of multimedia content stored
`
`in the non-volatile memory” as in claim 1, or where the content data supply server
`
`uses “code to receive a request from the handheld multimedia terminal for the
`
`identifier data identifying the one or more items multimedia content available to
`
`the handheld multimedia terminal” as in claim 5). Thus, the claims are rooted in
`
`computer technology in order to overcome a problem specifically arising in the
`
`realm of computer networks – that of digital data piracy, and, like in DDR
`
`Holdings, “address … a challenge particular to the Internet.” Id. at 1257. The
`
`Report and Recommendation in the District Court litigation also acknowledged
`
`this distinction with respect to other related patents in the same patent family,
`
`finding:
`
`As in DDR Holdings, the [related] patents ... do not simply apply a
`
`known business practice from the pre-Internet world to computers or
`
`
`
`- 11 -
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`

`
`the Internet. “The claimed solution is necessarily rooted in computer
`
`technology in order to overcome a problem specifically arising in the
`
`realm of computer networks.” ... Digital Rights Management is a
`
`technology that was developed after widespread use of the Internet.
`
`Entry into the Internet Era presented new and unique problems for
`
`digital content providers in combatting unauthorized use and
`
`reproduction of protected media content.
`
`Report and Recommendation at 19, lines 7-12 (quoting DDR Holdings, 773 F.3d at
`
`1257) (internal citation omitted).
`
`
`
`
`
`
`
`
`
`1.
`
`Claims 1 and 3
`
`Independent claim 1 of the ‘516 Patent, at issue here, meets the requisites of
`
`§ 101 under DDR Holdings. Challenged claim 3 depends from claim 1, and if
`
`claim 1 is statutory, then so is challenged claim 3. Claim 1 recites a handheld
`
`multimedia terminal (a system) that parallels the structure of the statutory claim 19
`
`in DDR Holdings. The table below sets forth a mapping of claim 1 of the ‘516
`
`Patent to claim 19 of the patent in DDR Holdings and shows that claim 1 is
`
`directed to statutory subject matter.
`
`Claim element from DDR Holding
`
`Similar claim element from claim 1
`
`19. A system useful in an outsource
`
`1. A handheld multimedia terminal,
`
`provider serving web pages offering
`
`comprising:
`
`
`
`- 12 -
`
`

`
`Claim element from DDR Holding
`
`Similar claim element from claim 1
`
`commercial opportunities, the system
`
`comprising:
`
`(a) a computer store containing data, for
`
`non-volatile memory configured to store
`
`each of a plurality of first web pages,
`
`multimedia content, wherein said
`
`defining a plurality of visually
`
`multimedia content comprises one or
`
`perceptible elements, which visually
`
`more of music data, video data and
`
`perceptible elements correspond to the
`
`computer game data;
`
`plurality of first web pages; (i) wherein
`
`a program store storing processor
`
`each of the first web pages belongs to
`
`control code;
`
`one of a plurality of web page owners;
`
`...
`
`(ii) wherein each of the first web pages
`
`wherein said user interface is operable
`
`displays at least one active link
`
`to enable a user to select said at least
`
`associated with a commerce object
`
`one item of multimedia content
`
`associated with a buying opportunity of
`
`available from said non-volatile
`
`a selected one of a plurality of
`
`memory; and wherein said user interface
`
`merchants; and (iii) …
`
`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
`
`
`
`- 13 -
`
`

`
`Claim element from DDR Holding
`
`Similar claim element from claim 1
`
`to said at least one selected item of
`
`multimedia content.
`
`(b) a computer server at the outsource
`
`a processor coupled to said non-volatile
`
`provider, which computer server is
`
`memory, said program store, said
`
`coupled to the computer store and
`
`wireless interface and a user interface to
`
`programmed to:
`
`allow a user to select and play said
`
`multimedia content;
`
`wherein the processor control code
`
`comprises:
`
`
`
`(i) receive from the web browser of a
`
`code to receive a user selection to select
`
`computer user a signal indicating
`
`at least one of said one or more of said
`
`activation of one of the links displayed
`
`stored items of multimedia content;
`
`
`
`by one of the first web pages;
`
`(ii) automatically identify as the source
`
`code responsive to said user selection of
`
`page the one of the first web pages on
`
`said at least one selected item of
`
`which the link has been activated;
`
`multimedia content to transmit payment
`
`data relating to payment for said at least
`
`one selected item of multimedia content
`
`
`
`- 14 -
`
`

`
`Claim element from DDR Holding
`
`Similar claim element from claim 1
`
`via said wireless interface for validation
`
`by a payment validation system,
`
`wherein said payment data comprises
`
`user identification data identifying said
`
`user to said payment validation system;
`
`(iii) in response to identification of the
`
`code to receive payment validation data
`
`source page, automatically retrieve the
`
`via said wireless interface defining if
`
`stored data corresponding to the source
`
`said payment validation system has
`
`page; and
`
`validated payment for said at least one
`
`selected item of multimedia content;
`
`(iv) using the data retrieved,
`
`code to control access to said at least
`
`automatically generate and transmit to
`
`one selected item of multimedia content
`
`the web browser a second web page that
`
`on said terminal responsive to said
`
`displays: (A) information associated
`
`payment validation data, wherein said
`
`with the commerce object associated
`
`user interface is operable to enable a
`
`with the link that has been activated, and
`
`user to select said at least one item of
`
`(B) the plurality of visually perceptible
`
`multimedia content available from said
`
`elements visually corresponding to the
`
`non-volatile memory; and wherein said
`
`source page.
`
`user interface is operable to enable a
`
`
`
`- 15 -
`
`

`
`Claim element from DDR Holding
`
`Similar claim element from claim 1
`
`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
`
`
`
`In addition to the similar elements from claim 19 of DDR Holdings, claim 1
`
`further recites additional structure not explicitly found in DDR Holdings. By
`
`comparison, claim 1 also comprises a wireless interface configured to interface
`
`with a wireless network and a display for displaying one or both of said played
`
`multimedia content and data relating to said played multimedia content. Thus, like
`
`in DDR Holdings, when “the limitations of the … claims are taken as [a]
`
`combination, the claims recite[] an invention that is not merely the routine or
`
`conventional use of the Internet.” DDR Holdings, 773 F.3d at 1259. Such a
`
`finding was further echoed by the Report and Recommendation for other related
`
`claims when it held the related claims “recite specific ways of using distinct
`
`memories, data types, and use rules that amount to significantly more than the
`
`underlying abstract idea. Although in some claims the language is functional and
`
`somewhat generic, the claims contain significant limitations on the scope of the
`
`
`
`- 16 -
`
`

`
`inventions.” Report and Recommendation at 19, lines 1-4 (emphasis added).
`
`Accordingly, claim 1 and dependent claim 3 are directed to statutory subject matter
`
`under the two-part test of Mayo and Alice.
`
`
`
`
`
`
`
`2.
`
`Claims 5, 10, and 12
`
`Like claim 1, challenged independent claim 5 recites a system that parallels
`
`the structure found to be statutory in DDR Holdings. Challenged claims 10 and 12
`
`depend from claim 5, and if claim 5 is statutory, then so are claims 10 and 12. The
`
`table below sets forth a mapping of claim 5 of the ‘516 Patent to claim 19 of the
`
`patent in DDR Holdings and shows that claim 5 is directed to statutory subject
`
`matter.
`
`Claim element from DDR Holding
`
`Similar claim element from claim 5
`
`19. A system useful in an outsource
`
`5. A content data supply server for
`
`provider serving web pages offering
`
`providing an item of multimedia content
`
`commercial opportunities, the system
`
`to a handheld multimedia terminal, the
`
`comprising:
`
`content data supply server comprising:
`
`(a) a computer store containing data, for
`
`a program store storing code
`
`each of a plurality of first web pages,
`
`implementable by a processor;
`
`defining a plurality of visually
`
`a data store for storing identifier data
`
`perceptible elements, which visually
`
`identifying one or more items of
`
`perceptible elements correspond to the
`
`multimedia content available to the
`
`
`
`- 17 -
`
`

`
`Claim element from DDR Holding
`
`Similar claim element from claim 5
`
`plurality of first web pages; (i) wherein
`
`handheld multimedia terminal;
`
`each of the first web pages belongs to
`
`one of a plurality of web page owners;
`
`(ii) wherein each of the first web pages
`
`displays at least one active link
`
`associated with a commerce object
`
`associated with a buying opportunity of
`
`a selected one of a plurality of
`
`merchants; and (iii) …
`
`(b) a computer server at the outsource
`
`a processor coupled to the
`
`provider, which computer server is
`
`communications interface, to the
`
`coupled to the computer store and
`
`program store and the data store,
`
`programmed to:
`
`the code comprising:
`
`(i) receive from the web browser of a
`
`code to receive a request from the
`
`computer user a signal indicating
`
`handheld multimedia terminal for the
`
`activation of one of the links displayed
`
`identifier data identifying the one or
`
`by one of the first web pages;
`
`more items multimedia content available
`
`(ii) automatically identify as the source
`
`code to retrieve the identifier data from
`
`to the handheld multimedia terminal;
`
`
`
`- 18 -
`
`

`
`Claim element from DDR Holding
`
`Similar claim element from claim 5
`
`page the one of the first web pages on
`
`the data store;
`
`which the link has been activated;
`
`code to transmit the identifier data via
`
`the communications interface to the
`
`handheld multimedia terminal;
`
`(iii) in response to identification of the
`
`code to receive payment validation data
`
`source page, automatically retrieve the
`
`validating a user purchase of an item of
`
`stored data corresponding to the source
`
`the multimedia content;
`
`page; and
`
`(iv) using the data retrieved,
`
`code responsive to the payment
`
`automatically generate and transmit to
`
`validation data validating the user
`
`the web browser a second web page that
`
`purchase to retrieve the purchased item
`
`displays: (A) information associated
`
`of multimedia content data from a
`
`with the commerce object associated
`
`multimedia content store and transmit
`
`with the link that has been activated, and
`
`the purchased item of multimedia
`
`(B) the plurality of visually perceptible
`
`content via the communications
`
`elements visually corresponding to the
`
`interface to the handheld multimedia
`
`source page.
`
`
`
`
`
`terminal.
`
`- 19 -
`
`

`
`Thus, like in DDR Holdings, when “the limitations of the … claims are
`
`taken as [a] … combination, the claims recite[] an invention that is not merely the
`
`routine or conventional use of the Internet.” DDR Holdings, 773 F.3d at 1259.
`
`Such a finding was further echoed by the Report and Recommendation when it
`
`held with respect to related claims that the related claims “recite specific ways of
`
`using distinct memories, data types, and use rules that amount to significantly
`
`more than the underlying abstract idea. Although in some claims the language is
`
`functional and somewhat generic, the claims contain significant limitations on the
`
`scope of the inventions.” Report and Recommendation at 19, lines 1-4 (em

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