Trials@uspto.gov
`Tel: 571-272-7822
`
`.
`
`Paper 7 (CBM2014-00112)
`Paper 7 (CBM2014-00113)
`Entered: September 30, 2014
`
`©
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`SMARTFLASHLLC,
`Patent Owner.
`
`Case CBM2014-00112
`Case CBM2014-00113
`Patent 7,942,317 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, NEIL T. POWELL,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`.
`
`ELLURU,Administrative Patent Judge. _
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 CFR. § 42.208
`
`
`Tel: 571-272-7822
`
`.
`
`Paper 7 (CBM2014-00112)
`Paper 7 (CBM2014-00113)
`Entered: September 30, 2014
`
`©
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`SMARTFLASHLLC,
`Patent Owner.
`
`Case CBM2014-00112
`Case CBM2014-00113
`Patent 7,942,317 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, NEIL T. POWELL,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`.
`
`ELLURU,Administrative Patent Judge. _
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 CFR. § 42.208
`
`
`
`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`INTRODUCTION
`
`A. Background
`Petitioner, Apple Inc. (“Apple”), filed two Petitionsto institute
`
`covered business methodpatent review ofclaims 1, 6-8, 12-14, 16, and 18
`(“the challenged claims”) of U.S. Patent No.7,942,317 B2 (Ex. 1001, “the
`’317 patent”) pursuant to § 18 of the Leahy-Smith America Invents Act
`
`(“AIA”). CBM2014-00112 (Paper 2, “112 Pet.) and CBM2014-00113
`(Paper 2, “113 Pet.”). Patent Owner, Smartflash LLC (“Smartflash”), filed a
`Preliminary Response in each of the two cases: CBM2014-00112 (Paper6,
`“112 Prelim. Resp.”) and CBM2014-00113 (Paper6, “113 Prelim. Resp.”).'
`Wehavejurisdiction under 35 U.S.C. § 324, which providesthat a
`
`covered business method patent review maynotbeinstituted “unless. ..it is
`morelikely than not that at least 1 of the claims challenged in the petitionis
`unpatentable.”
`
`B. Asserted Grounds
`Apple contendsthat the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and/or 103 based on the following grounds(112 Pet. 16;
`
`28-77; 113 Pet. 40—78).
`
`' Patent Ownerarguesthat the multiple petitions filed against the *317 patent
`violate the page limit requirement of 37 C.F.R. § 42.24(a)(iii), but does not
`cite any authority to support its position. 112 Prelim. Resp. 10-11; 113
`Prelim. Resp. 10-11. The pagelimit for petitions requesting covered
`business method patent review is 80 pages (37 C.F.R. § 42.24(a)(iii)), and
`each of the 112 and the 113 Petitions is within that requirement.
`
`
`
`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`eeOe
`
`SaSees.
`
`eeee
`
`CBM2014-00112
`
`
`
`Stefik 235° and Stefik 980‘ § 102°|1, 6-8, 12-14, 16, and 18.
`
`
`
`Stefik ’235 and Stefik ’980 § 103|1, 6-8, 12-14, 16, and 18
`
`
`
`CBM2014-00113
`
`
`
`
`
`
`
`Stefik ’235, Stefik ’°980, and §103|1, 6-8, 12-14, 16, and 181
`
`Poggio®
`
`
`
`Ginter’ § 103|1, 6-8, 12-14, 16, and 18
`
`
`
`
`gee aae
`
`
`
`
`
`Ginter and Poggio § 103|1, 6-8, 12-14, 16, and 18
`
`
`
` Ginter, Stefik ’235, and Stefik 980|§ 103|12-14
`
`? Exhibits with numbers 1001-1029 werefiled in CBM2014-00112 and
`those with numbers 1101-1129 werefiled in CBM2014-00113. For
`purposesofthis decision, where the two cases have duplicate exhibits, we
`refer to the exhibit filed in CBM2014-00112.
`3 U.S. Patent No.5,530,235 (June 25, 1996) (Ex. 1013, “Stefik ’235”).
`4 U.S. Patent No. 5,629,980 (May 13, 1997) (Ex. 1014, “Stefik °980”).
`> Petitioner refers to Stefik °235 and Stefik ’980 collectively as “Stefik” and
`argues that they should be considered as a single reference for anticipation
`purposes because, according to Pétitioner, Stefik °235 incorporates Stefik
`’980 by reference. 112 Pet. 20-21, n.12. Patent Ownerdisagrees. 112
`Prelim. Resp. 12-14. We do notreach this issue because even when
`considered as one reference, we determine that Stefik ’235 and Stefik ’980
`do not teach all the recited claim limitations in the same form and order as
`listed in the claims.
`° European Patent Application, Publication No. EP0809221A2(including
`translation), published November26, 1997 (Ex. 1016, “Poggio”).
`7 US. Patent No. 5,915,019 (June 22, 1999) (Ex. 1115,“Ginter”).
`
`
`
`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`|
`
`ClaimsChallenged —
`S OUR Basis:
`5
`2
`oe
`Ginter, Stefik235, Stefik ?980, and
`§ 103 12-14
`
`
`
`Poggio
`
`
`
`
`
`
`Ginter and Sato® § 103|12-14
`
`
`
`Petitioner also provides a declaration from Anthony J. Wechselberger
`(“the Wechselberger Declaration”).’ 112 Ex. 1021.
`"After considering the Petitions and Preliminary Responses, we
`determine that the ’317 patent is a covered business method patent and that
`
`Apple has demonstrated thatit is more likely than not that at least one of the
`
`challenged claims is unpatentable. Based on the information presented, we
`institute a covered business method patent review of claims 1, 6-8, 12-14,
`
`16, and 18 of the ’317 patent.
`C. RelatedMatters
`The parties indicate that Smartflash has sued Apple for infringement
`ofthe °317 patent and identify the following district court case: Smartflash
`LLC v. Apple Inc., Case No. 6:13-cv-447 (E.D. Tex.). See, e.g., 112 Pet. 15—
`16; 112 Papers4, 5.. The parties also indicate that the °317 patent is the
`subject of a second case, to which Appleis not a party: Smartflash LLC v.
`Samsung, Case No. 6:13-cv-448 (E.D. Tex.). Jd.
`
`\
`
`8 JP Patent Application Publication No. H11-164058 (inclidingtranslation),
`published June 18, 1999 (Ex. 1118, “Sato’’).
`.
`” Onthis record, we are not persuaded by Patent Owner’s argumentthat we
`should disregard the Wechselberger Declaration. See 112 Prelim. Resp. 17—
`20; 113 Prelim. Resp. 17-20. Patent Owneridentifies purported omissions
`from the Declaration, but offers no evidence that Mr. Wechselberger used
`incorrectcriteria, failed to consider evidence,or is not an expert in the
`appropriate field. Jd.
`
`
`
`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`In addition to the 112 and 113 Petitions, Apple filed ten other
`
`Petitions for covered business method patent review challenging claims of
`
`patents owned by Smartflash and disclosing similar subject matter:
`CBM2014-00102; CBM2014-00103; CBM2014-00104; CBM2014-00105;
`
`CBM2014-00106; CBM2014-00107; CBM2014-00108; CBM2014-00109;
`CBM2014-00110; and CBM2014-00111.
`|
`
`D. The ’317 Patent
`
`The °317 patent relates to “a portable data carrier for storing and
`
`paying for data and to computer systems for providing accessto data to be
`stored” and the “corresponding methods and computer programs.”
`Ex. 1001, 1:18-23. Owners of proprietary data, especially audio recordings,
`have an urgent need to address the prevalence of “data pirates,” who make
`
`proprietary data available overthe internet without authorization. Jd.at
`
`1:38-51. The ’317 patent describes providing portable data storage together
`
`with a meansfor conditioning access to that data upon validated payment.
`
`Id. at 1:55—2:3. This combination allows data owners to maketheir data
`
`available over the internet without fear of data pirates. Jd. at 2:3-11.
`
`Asdescribed, the portable data storage device is connected to a
`___
`terminal for internet access. Id. at 1:55—63. The terminal reads payment
`
`information, validates that information, and downloadsdata into the portable
`
`storage device from a data supplier. Jd. The data on the portable storage
`
`device can beretrieved and output from a mobile device. Jd. at 1:64—-67.
`
`The ’317 patent makesclear that the actual implementationof these
`componentsis not critical and may be implemented in many ways. -See, e.g.,
`
`id. at 25:49-52 (“The skilled person will understand that many variants to
`
`
`
`CBM2014-00112 and CBM2014-001 13
`Patent 7,942,317 B2
`
`the system are possible and the invention is not limited to the described
`
`embodiments.”’).
`
`E. Challenged Claims
`Apple challenges claims 1, 6-8, 12-14, 16, and 18 of the *317 patent.
`
`Claims 1, 8, 12, 16, and 18 are independent. Claims 6 and 7 depend from
`
`claim 1 and claims 13 and 14 depend from claim 12. Claims 1 and 8 are
`
`illustrative of the claimsat issue andrecite the following:
`
`1.|Acomputer system for providingdata to a data requester,
`the system comprising:
`
`a communication interface;
`
`a data access data store for storing records of data items available
`from the system, each record comprising a data item description and a
`pointer to a data providerfor the data item;
`
`a program store storing code implementable by a processor;
`
`a processor coupled to the communications interface, to the data
`access data store, and to the program store for implementing the stored code,
`the code comprising:
`
`code to receive a request for a data item from the requester;
`
`code to receive from the communicationsinterface payment data
`comprising data relating to payment for the requested data item;
`
`code responsive to the request and to the received payment data, to
`read data for the requested data item from a content provider; and
`
`code to transmit the read data to the requester over the
`communicationsinterface.
`Ex. 1001, 25:55-26:8.
`
`8.
`
`Amethod of providing data to a data requester comprising:
`
`receiving a request for a data item from the requester;
`
`.
`
`
`
`CBM2014-00112 and CBM2014-001 13
`Patent 7,942,317 B2
`
`- receiving payment data from the requester relatingto payment for the
`requested data;
`
`reading the requested data from a content provider responsive to the
`received payment data; and
`transmitting the read data to the requester.
`
`Id. at 26:36-44.
`
`A. Claim Construction
`
`ANALYSIS |
`
`In a covered business method patent review, claim termsare given
`
`. their broadest reasonable interpretation in light of the specification in which
`
`they appear. See 37 C.F.R.§ 42.300(b). Applying that standard, we
`interpret the claim terms of the 7317 patent accordingto 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 ofthis decision, we construe the claim term “use rule data,” as
`
`recited in dependent claim 14. Neither party proposed a construction for this
`term.
`|
`
`Dependentclaim 14 recites “use rule data.” The 317 patent describes
`
`“use rule data” as “comprising a list of values (i.e. content data item prices)
`
`and correspondinglevels ofpermitted usage. Ex. 1001, 14:66—15:1
`' (emphasis added). The 317 patent further explains that “[t]hus a value of
`£1 might permit ten plays of a music track, while the value of £10 might
`
`permit an unlimited numberofplays of the track and copyingof the track for
`personal use.” Id. at 15:1-4. Accordingly, for purposes ofthis decision, we
`construe “use rule data” as data for a rule specifying a condition under which
`
`access to contentis permitted.
`
`
`
`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`B. Covered Business Method Patent
`
`Section 18 of the AIA provides for the creation ofa transitional
`
`program for reviewing covered business methodpatents. A “covered
`business methodpatent”is a patent that “claims a method or corresponding
`apparatus for performingdata processing or other operationsused in the
`practice, administration, or managementofa financial productorservice,
`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 methodto beeligible for review. See
`
`Transitional Program for Covered Business Method Patents—Definitions of
`Covered Business Method Patent and Technological Invention;Final Rule,
`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”) (Comment8).
`
`.
`1. Financial Product or Service
`Apple asserts that “because claim 18 explicitly describes receiving
`and responding to payment data, as well as outputtingpaymentdata, it
`clearly relates to a financial activity and providing a financial service.” 112
`
`Pet. 11; 113 Pet. 16. Based on this record, we agree with Apple that the
`
`subject matter recited by claim 18 is directed to activities that are financial in
`
`nature, namely data access conditioned on paymentvalidation. Claim 18
`recites “receiving payment data from the requesterrelating to paymentfor
`99 66
`
`the requested data,”
`
`“reading paymentdistribution information from a data
`
`store,” and “outputting paymentdata to a payment system for distributing
`
`the paymentfor the requested data.” We are persuaded that “[rJeceiving
`
`paymentdata from the requester relating to payment for the requested data”
`and “reading paymentdistribution information from a data store” are
`financialactivities and “outputting paymentdata to a paymentsystem for
`
`
`
`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`distributing the paymentfor the requested data” amounts to a financial
`
`service. This is consistent with the Specification of the °317 patent, which
`confirms claim 18’s connection to financialactivities by stating that the ,
`invention “relates to a portable data carrier for storing and paying for data.”
`
`Ex. 1001, 1:19-20. The Specification also states repeatedly that the
`disclosed invention involves managing accessto data based on payment
`
`validation. See, e.g., Ex. 1001, 1:55-63, 2:12-26, 3:22—30, 3:51-56, 7:59-
`
`8:6, 8:18-31.
`
`Smartflash disagrees that claim 18 satisfies the financial-in-nature
`
`requirement of AIA § 18(d)(1), arguing that section should be interpreted
`narrowly to cover only technologyusedspecifically in the financial or
`banking industry. 112 Prelim. Resp. 3-7; 113 Prelim. Resp. 3-7.
`Smartflash cites to variousportions of the legislative history as support for
`
`its proposed interpretation. Id.
`Wedo notagree that the phrase “financial product or service”in
`§ 18(d)(1) is as limited as Smartflash proposes. The AIA doesnotinclude as
`
`a prerequisite for covered business methodpatentreview,a “nexus”to a
`“financial business,”but rather a “method or corresponding apparatus for
`performing data processing or other operations used in the practice,
`administration, or managementofa financial productor service.” AIA
`§ 18(d)(1). Further, contrary to Smartflash’s view ofthe legislative history,
`the legislative history indicates that the phrase “financialproductor service”
`is not limited to the products or services of the “financial services industry”
`andis 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 encompasspatents ‘claiming
`
`
`
`CBM2014-00112 and CBM2014-001 13
`Patent 7,942,317 B2
`
`activities that are financial in nature, incidental to a financial activity or
`
`complementary to a financial activity.’” Jd. (citing 157 Cong. Rec. $5432
`
`(daily ed. Sept. 8, 2011) (statement of Sen. Schumer)).
`In addition, Smartflash asserts that claim 18 is not directed to an
`apparatus or methodthatis financial in nature because claim 18 “omits the
`specifics of how paymentis made.” 112 Prelim. Resp. 7; 113 Prelim.
`Resp. 7. Weare not persuaded by this argument because § 18(d)(1) ofthe
`AJA doesnot include such a requirement, nor does Smartflash point to any
`other authority that makes such a requirement. 112 Prelim. Resp.8;
`113 Prelim. Resp. 8. We determine that because paymentis required by
`
`claim 18, as Smartflash acknowledges(id.), the financial-in-nature
`
`requirement of § 18(d)(1) is satisfied.
`
`Forthe reasons stated above, and based on theparticular facts of this
`proceeding, we conclude that the 7317 patent includesat least one claim that
`meets the financial-in-nature requirement of § 18(d)(1) of the AIA.
`
`2. Exclusionfor Technological Inventions
`Appleasserts that claim 18 does not fall within § 18(d)(1)’s exclusion
`for “technological inventions.” 112.Pet. 11-15; 113 Pet. 16-20. In
`particular, Apple argues that claim 18 “does not claim ‘subject matter as a
`whole [that] recites a technologicalfeature that is novel and unobviousover
`the prior art[] and solves a technical problem using a technicalsolution.’”
`112 Pet. 11; 113 Pet. 16-20 (quoting 37 C.F.R. § 42.301(b)). Smartflash
`disagrees and argues that claim 18, as a whole, recitesat least one
`
`technological feature. 112 Prelim. Resp. 11; 113 Prelim. Resp. 17.
`Weare persuaded that claim 18 as a whole does notrecite a
`technological feature that is novel and unobviousoverthe prior art. Claim
`
`10
`
`
`
`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`18 recites a “payment system.” The Specification, however, discloses that
`
`‘the required payment system may be onethatis already in use or otherwise
`
`commercially available. For example, the payment validation system “may
`
`be part of the data supplier’s computer systemsor it may be a separate
`
`system such as an e-paymentsystem.” Ex. 1001 8:18—22; see alsoid. at
`8:60-63. Claim 18 also recites a “data store.” This component, however, is
`
`described as generic memory. 112 Pet. 12-13; 113 Pet 18. The
`
`Specification discloses, for instance, that “(t]he data storage meansis based
`ona standard smart card.” Ex. 1001, 11:28—30; 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 overa 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.
`In addition, the °317 patent makesclearthat 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 ’317 patent
`
`states that “there is an urgent need to find a way to address the problem of
`data piracy”(id. at 1:50—51), while acknowledgingthat the “physical
`
`embodiment of the system is notcritical and a skilled person will understand
`
`that the terminals, data processing systemsandthe like canall take a variety
`
`of forms”(id. at 12:29-32). Thus, we determine that claim 18 is merely the
`recitation of a combination of knowntechnologies, which indicatesthatit is.
`not a patent for a technological invention. See Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012).
`|
`Smartflash also argues that claim 18 falls within § 18(d)(1)’s
`
`exclusion for “technological inventions” becauseit is directed towards
`
`11
`
`
`
`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`solving the technological problem of“transmitting requested data to a
`
`requester, e.g., as part of a convenient, legitimate acquisition of data from a
`
`data supplier” with the technological solution of a “data store, from which
`paymentdistribution information is read, in combination with a payment
`system.” 112 Prelim. Resp. 8-9; 113 Prelim. Resp. 8-9. Weare not
`persuadedbythis argument because, as Apple argues, the problem being
`solved by claim 18 is a business problem—data piracy. 112 Pet. 14; 113
`Pet. 19. For example, the Specification states that “[b]inding the data access
`and payment together allows the legitimate owners ofthe data tomake the
`data available themselves over the internet without fear of loss of revenue,
`thus undermining the position of data pirates.” Ex. 1001, 2:7-11.
`
`_ Therefore, based on the particular facts of this proceeding, we conclude that
`claim 18-does not recite a technological invention andis eligible for a
`covered business method patent review.
`
`3. Conclusion
`
`In view of the foregoing, we conclude that the ’317 patent is a covered
`business method patent under AIA § 18(d)(1) andis eligible for review
`
`using the transitional covered business method patent program.
`
`C. Anticipation by Stefik ’235 and Stefik 980
`Stefik ’235 teaches a portable Document Card (“DocuCard”) for
`storing information in a digital form,storing usage rights for the
`information, processing user-initiated functions and requests to access
`documentsstored therein, interfacing to external devices for reading and
`writing digital information, and allowing a userto directly interact with the
`
`DocuCard. Ex. 1013, 2:29-40, 7:35-42.
`
`12
`
`
`
`CBM2014-00112 and CBM2014-00113
`Patent7,942,317 B2
`
`Stefik ’980 teaches a “repository” for storing digital works,
`
`controlling access to digital works, billing for access to digital works and
`maintaining the security and integrity ofthe system. Ex. 1014, 6:57-61.
`Petitioner asserts that claims 1, 6-8, 12—14, 16, and 18 are anticipated
`by Stefik °235 and Stefik 980. 112 Pet. 28-47. We are notpersuadedthat
`Petitioner has shownthat every claim limitation, and sub part, ofclaims L,
`6-8, 12-14, 16, and 18 are set forth in the prior art in the same form and
`order as in the claim. See In re Omeprazone Patent Litigation, 483 F.3d
`
`1364, 1373 (Fed. Cir. 2007); Continental Can Co. v Monsanto Co., 948 F.2d
`
`1264, 1267 (Fed. Cir. 1991).
`
`Petitioner relies on the multiple repositories acting in different
`
`capacities described in Stefik ’235 and Stefik ’980, as disclosing several of
`
`the claim limitations of independentclaims 1, 8, 12, 16, and 18. See, e.g,
`112 Pet. 28-47 (claim 1), 50 (claim 8, refers to claim 1 claim chart), 50-63
`(claim 12), 68-73 (claim 16, refers to claim 1 claim chart), 73-77 (claim 18,
`refers to claim 1 claim chart). While Stefik 980discloses repositories that
`mayactin different capacities(see, e.g, Ex. 1014, Abstract; Ex. 1014, 4:9—
`10 (“[a] repository has two primary operating modes, a server mode and a
`
`requester mode”)), Petitioner does not persuasively establish morelikely
`than not that either Stefik ’235 or Stefik °980 discloses a system of
`repositories that is configured in the exact form and orderas in independent
`
`claims 1, 8, 12, 16, and 18. Rather, Petitioner argues Stefik teaches that the
`
`repositories described in Stefik ’235 and ’980 may be configuredin the exact
`
`form and orderas in independent claims 1, 8, 12, 16, and 18. See, e.g., 112
`Pet. 31 (“A DocuCard can be inserted into a PCMCIA slot of another
`
`repository or can interface with a second DocuCard.”) (emphasis added)
`
`13
`
`
`
`CBM2014-00112 and CBM2014-001 13
`Patent 7,942,317 B2
`
`(citations omitted); Ex. 1013, 6:32-43 (“The repositories and rendering
`
`systems to which a DocuCard mayinterface wouldfulfill the functional
`requirementsas defined in the aforementioned ‘System For Controlling The
`Distribution and Use of Digital Works’ application.”) (emphasis added).
`
`Thus, Petitioner has failed to establish that it is more likely than not
`
`that it would prevail in demonstrating that independentclaims1, 8, 12, 16,
`
`and 18 are unpatentable as anticipated by the Stefik references. For the
`
`same reasons, we determinethat Petitioner has failed to establish thatit is
`
`morelikely than not that it would prevail in demonstrating that dependent
`claims 6, 7, 13, and 14 are unpatentable as anticipated by the Stefik
`references.
`
`D. Additional Grounds Based on Stefik 235 and Stefik ’980
`Petitioner asserts that claims 1, 6-8, 12—14, 16, and 18 would have
`been obvious overthe Stefik references alone. 112 Pet. 25-77. Petitioner
`
`also contendsthat claims 1, 6-8, 12-14, 16, and 18 would have been
`obviousoverStefik and Poggio. Id. at 28-77. We find Petitioner’s
`
`contentions that claims 1, 6-8, 12, 13, 16, and 18 would have been obvious
`over the combination of Stefik ’235 and Stefik °980 persuasive, but are not
`persuaded by Petitioner’s contentions regarding claim 14 for the reasons
`discussed below.
`|
`
`1. Claims 1, 6-8, 12, 13, 16, and 18
`In light of the arguments and evidence, Petitioner has established that
`it is more likely than not that claims 1, 6-8, 12, 13, 16, and 18 would have
`been obvious over the combination ofStefik ’235and Stefik 980. See id.at
`
`25-77.
`
`14
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`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`Weare not persuaded by Patent Owner’s argumentthat there is no
`evidencethat one of ordinary skill in the art would have combinedthe
`
`teachings of the Stefik ’235 patent with the teachings of the Stefik °980
`patent because Patent Owner’s argument is based on an unproven premise
`that the Stefik ’235’s reference to the Stefik ’980 patent must uniquely
`identify the Stefik ’980 patent. 112 Prelim. Resp. 13-14. One reference
`need notidentify explicitly another reference in order to form the basis for
`an obviousness combination. Wealso are not persuaded by Patent Owner’s
`argumentthat because Petitioner has not proven that Stefik ’235 and Stefik
`"980qualify as a single reference, all combinations including those
`references fail. 112 Prelim. Resp. 14. Petitioner argues that “there is
`
`explicit motivation to implementthe repository disclosed by Stefik ’980
`using the Document Card (DocuCard) of Stefik ’235.” 112 Pet. 21, n.12
`(citing Ex. 1013, 2:47—52; Ex. 1014, 16:56—-58; Ex. 1021 4 51, 53). Stefik
`’980 teachesthat “the repository could be embeddedin a ‘card’that is
`inserted into an available slot in a computer system” (Ex. 1014, 16:56—58),
`and Stefik ’235 teaches a repository embeddedin a card (Ex. 1013, 2:47—
`
`52). On the record before us, we are persuaded that Petitioner has provided
`
`sufficiently an articulated reasoning with somerational underpinning to
`
`support the legal conclusion of obviousness over a combination ofStefik
`°235 and Stefik °980. See KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418
`(2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`Wediscuss dependent claims 6, 7, and 13 as examples.
`Claim 6
`
`Claim 6 recites “[a] computer system as claimed in claim 1, further
`
`comprising an access control data store coupled to said processor for storing
`
`15
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`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`access control data comprising a requester identifier, corresponding
`
`requester system access data and payment system data for identifying a
`
`payment system for use by the requester.” For this limitation, Petitioner
`
`refers to disclosure from Stefik °235 teaching that “[a] Login transaction is
`
`the process by whicha user logs onto a repository, typically by entering a
`
`Personal Identification Number(PIN). In this case, the user of the DocuCard
`is logging onto the DocuCard. This logging in process mayalso activate
`credit accounts.” 112 Pet. 48 (citing Ex. 1013, 6:60-65).
`Claim 7
`|
`Claim 7 recites “Ta] computer system as claimedin claim 1, further
`comprising content synthesis code to generate substantially complete item
`
`data from partial item data provided from two or more sources.” Forthis
`limitation, Petitioner refers to disclosure from Stefik ’235 teachingthat
`
`“(flor composite documents comprised of multiple individual digital works,
`
`the description part is an acyclic structure (e.g. a tree structure) wherein each
`node correspondsto one or moreofthe multiple individual digital works.”
`112 Pet. 49 (citing Ex. 1013, 7:42-50). Stefik ’980 also discloses the
`following extract transaction.
`
`A extract transaction is a request to copy a part of a digital work
`and to create a new workcontaining it. The extraction operation
`differs from copying in that it can be used to separate a part of a
`digital work from d-blocks or shells that place additional
`restrictions or fees on it. The extraction operation differs from
`the edit operation in that it does not change the contents of a
`work, only its embedding in d-blocks. Extraction creates a new
`digital work.
`
`Ex. 1014, 39:57-64
`
`Claim 13
`
`16
`
`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`Claim 13 recites “[a] data access system according to claim 12 further
`.
`comprising a paymentdistribution store and wherein the electronic payment
`
`system makes payments according to data in the paymentdistributionstore-
`
`‘associated with the forwarded data on confirmation of the payment and/or
`| provision of the forwarded data to the card.” Forthis limitation, Petitioner
`refers to disclosure from Stefik ’980, which indicates that data content has
`
`information associated withit, including “[a] handle identifying a revenue
`
`ownerfor a digital work,” “used for reporting usage fees.” Ex. 1014, 9:21—
`
`29, 10:24-32, Table 1.
`For the reasonsset forth above, Petitioner has established that it is
`morelikely than not that it would prevail in demonstrating that claims 1, 6—
`
`8, 12, 13, 16, and 18 would have been obvious over the combination of
`Stefik ’235 and Stefik °980. We deny as redundant the asserted groundthat
`claims 1, 6-8, 12, 13, 16, and 18 would have been obvious over Stefik °235,
`
`Stefik ’°980, and Poggio. See 37 C.F.R. § 42.208(a).
`|
`2. Claim 14
`|
`Claim 14recites “[a] data access system according to claim 12 further
`~
`comprising a data use rule data store and wherein data use rule data is
`providedto the data carrier with the forwarded data for controlling user
`
`access to the forwarded data.” Petitioner’s claim chart states that the
`“
`claimed “use rule data” correspondsto Stefik’s “(e.g., conflict rules;
`descriptortree files containing usage rights and access conditions).” 112
`Pet. 66. Petitioner also refers to disclosure from Stefik ’980 teaching that
`
`“Tejach usage right might have one or more specified conditions which must
`
`be satisfied before the right may be exercised.” Jd. at 67; see Ex. 1014,
`
`
`
`CBM2014-00112 and CBM2014-001 13
`Patent 7,942,317 B2
`
`6:46—48.'° Petitioner provides insufficient explanation, however, as to how
`Stefik’s “usage rights” operate. Petitioner also does notshowsufficiently
`why “usage rights” satisfies “use rule data.” Even though “usage rights”
`may have “conditions,” they are not necessarily rules, and Petitioner has not
`persuaded us otherwise. For example, rights portion 504 is described as “a
`
`data structure, such as a look-up table, wherein the various information
`associated with a right is maintained.” Pet. 67 (citing Ex. 1013, 8:8-10); see
`Ex. 1014, 9:54-10:1. An exemplary data structureis illustrated in Figure 10
`of Stefik ’°980 and the information contained in such a data structure is
`indicated in Table 1. Ex. 1014, 10:28-32. Table1 ofStefik °980 discloses,
`for example, a “Loan—Period”property with a value in “Time-Units” that is
`an “[ijndicator of the maximum numberof time-units that a document can
`
`be leased out.” Petitioner, however, does not explain sufficiently why a
`
`“¥.oan-Period,” by itself, without, for example, corresponding content data
`item price, satisfies “data for a rule specifying a condition under which
`access to contentis permitted,” as we haveconstrued “userule data.”
`Petitioner does not refer to Poggio as teaching this limitation. 112 Pet. 66—
`
`68.
`
`|
`
`Forthe reasons set forth above, Petitioner has not establishedthat,
`morelikely than not, it would prevail in demonstrating that claim 14 would
`have been obvious over the combination of Stefik °235 and Stefik °980 or
`over Stefik ’235, Stefik °980, and Poggio.
`
`'° We note that Petitioner mistakenly cites to Stefik ’235 (Ex. 1013) as citing
`this disclosure. Pet. 66-67.
`
`18
`
`
`
`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`E. Obviousness over Ginter
`Petitioner contends that claims 1, 6-8, 12-14, 16, and 18 would have
`been obvious over Ginter. 113 Pet. 22, 40-78.
`,
`Ginter discloses a portable “virtual distribution environment”
`(“VDE”) that can “control and/or meter or otherwise mohitor use of
`electronically stored or disseminated information.” Ex. 1115, Abstract,
`Fig. 71, 52:26-27.
`.
`
`1. Claims 1, 6-8, 12, 13, 16, and 18
`In light ofthe arguments and evidence, Petitioner has establishedthat
`it is more likely than not that claims 1, 6-8, 12, 13, 16, and18 are
`|
`unpatentable as obvious over Ginter.
`Weare not persuaded by Patent Owner’s argumentthat Petitioner has
`
`not provided evidencethat one of ordinary skill in the art would have
`modified Ginter in a way to render obvious the claimed subject matter. 113
`Prelim. Resp. 12..For example, Petitioner points to Ginter’s teaching “the
`knownflexibility in such distribution systems, andunderscoresthat one of
`ordinary skill would have known that combinations between and among
`disclosures of such distribution systems would have been obviousto one of
`ordinary skill in the art.” 113 Pet. 28-29 (citing Ex. 1015, 255:22-43; Ex.
`1121 458). We are, therefore, persuaded that Petitioner has provided
`
`sufficiently an articulated reasoning with somerational underpinning to
`
`support the conclusion that a person of ordinary skill would also have found
`claims 1, 6—8, 12, 13, 16, and 18 obviousin light of the teachings of Ginter.
`See KSR Int’l, 550 U.S.at 418.
`|
`|
`
`|
`
`19
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`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`2. Claim 14
`
`-Claim 14 recites “[a] data access system according to claim 12 further
`
`comprising a data use rule data store and wherein data use rule datais
`
`provided to thedata carrier with the forwarded data for controlling user
`
`_access to the forwarded data.” (Emphasis added). Petitioner’s claim chart
`states that the claimed“use rule data” correspondsto Ginter’s “(e.g., billing
`
`method map MDEand/or budget method UDE).” 113 Pet. 70-72.
`Petitioner does not provide adequate argument or explanation as to
`why Ginter’s billing method map MDEand/or budget UDEsatisfies the
`
`claimed “use rule data.” Without corresponding argument and explanation,
`
`Petitioner’s claim chart does not persuade usthat morelikely than not
`Ginter’s billing method MDEor budget method UDEsatisfies the claimed
`| “use rule data.”
`Our review of Ginter does not perstiade us otherwise. Ginter
`describes billing method map MDEas“a price list, table, or pa
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