UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2014-00112!
`Patent 7,942,317 B2
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`' Case CBM2014-00113 has been consolidated with the instant proceeding.
`
`

`

`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Patent Owner
`
`Smartflash LLC hereby appeals to the United States Court of Appeals for the
`
`Federal Circuit from the Final Written Decision entered on September 25, 2015
`
`(Paper 48) and from all underlying orders, decisions, rulings and opinions
`
`regarding U.S. Patent No. 7,942,317 (the “’317 Patent’’) including the Decision -
`
`Institution of Covered Business Method Patent Review entered on September30,
`
`2014 (Paper 7) and the Order denying Patent Owner’s request for authorization to
`
`file a motion for additional discovery entered on November 13, 2014 (Paper 13).
`
`For the limited purpose of providing the Director with the information
`
`requested in 37 C.F.R. § 90.2(a)(3)(ii), Patent Owneranticipates that the issues on
`
`appeal may includethe following, as well as any underlying findings,
`
`determinations, rulings, decisions, opinions, or other related issues:
`
`e Whether the Board erred in finding that claims 1, 6-8, 12, 13, 16, and
`
`18 of the °317 Patent are unpatentable under 35 U.S.C. § 103(a) as
`
`obvious over the combination of U.S. Patent No. 5,530,235 (“Stefik
`
`°235”) and U.S. Patent No. 5,629,980 (“Stefik ’980”);
`
`e Whetherthe Board erred in finding that claims 1, 6-8, 12, 13, 16, and
`
`18 of the ’317 Patent are unpatentable under 35 U.S.C. § 103(a) as
`
`obvious over U.S. Patent No. 5,915,019 (“Ginter”);
`
`

`

`e Whether the Board erred in denying Patent Owner’s Motion to
`
`Exclude (Paper38);
`
`e Whether the Board erred in finding that the subject matter of the ‘317
`
`Patent is directed to activities that are financial in nature and in
`
`instituting Covered Business Method review of the ‘317 Patent; and
`
`e Whether the Board erred in denying Patent Owner’s request for
`
`discovery.
`
`Copies of this Notice of Appeal are being filed simultaneously with the
`
`Director, the Patent Trial and Appeal Board, and the Clerk of the United States
`
`Court of Appeals for the Federal Circuit.
`
`Any required fee may be charged to Deposit Account No. 501860.
`
`Dated: November 25, 2015
`
`/ Michael R. Casey /
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist
`Jackson & Gowdey, LLP
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned herebycertifies that this PATENT OWNER’S NOTICE
`
`OF APPEALwasfiled with the Patent Trial and Appeal Board using the PRPS
`
`System and wasserved, by agreement of the parties, November25, 2015, by
`
`emailing copies to counsel for the Petitioner as follows:
`
`J. Steven Baughman (steven.baughman@ropesgray.com)
`Ching-Lee Fukuda (ching-lee.fukuda@ropesgray.com)
`Megan Raymond (megan.raymond@ropesgray.com
`ApplePTABService-SmartFlash@ropesgray.com
`
`The undersigned hereby furthercertifies that on November 25, 2015 this
`
`PATENT OWNER’S NOTICE OF APPEAL(andits three attached decisions)
`
`were filed with the Federal Circuit via CM/ECF(along with three courtesy copies
`
`by handdelivery) and two (2) copies were served on the U.S. Patent and
`
`Trademark Office via in-hand delivery as follows:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulaney Street
`Alexandria, VA 22314-5793
`
`Dated: November25, 2015
`
`/ Michael R. Casey /
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist
`Jackson & Gowdey, LLP
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`

`

`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 48
`Entered: September 25, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`SMARTFLASHLLC,
`Patent Owner.
`
`Case CBM2014-00112!
`Patent 7,942,317 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M. PLENZLER,and
`MATTHEWR. CLEMENTS, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 US.C. § 328(a) and 37 C.F.R. § 42.73
`
`' Case CBM2014-00113 has been consolidated with the instant proceeding.
`
`

`

`CBM2014-00112
`Patent 7,942,317 B2
`
`I.
`
`INTRODUCTION
`A.
`Background
`Petitioner, Apple Inc. (“Apple”), filed two Petitionsto institute covered
`business method patent review of claims1, 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 CBM2014-001 13 (Paper 2, “113
`Pet.”).”? On September 30, 2014, we consolidated CBM2014-00112 and
`
`CBM2014-00113 and instituted a transitional covered business method patent
`review (Paper7, “Decision to Institute” or “Dec.”’) based upon Petitioner’s
`
`assertion that claims 1, 6-8, 12, 13, 16, and 18 are unpatentable based on the
`
`following grounds:
`
`Basis Claims Challenged
`Reference[s]
`
`Stefik 235° and Stefik 980 §103(@)|1,6-8, 12, 13, 16,
`
`| and 18
`| Ginter’ §103(a)|1, 6-8, 12, 13, 16,
`.
`and 18
`
`
`
`
`
`
`Dec. 22. Petitioner provides declarations from Anthony J. Wechselberger
`
`(“Wechselberger Decl.’’) in support ofits petitions. 112 Ex. 1021; 113 Ex. 1121.
`
`* Unless otherwise specified, hereinafter, paper numbers refer to paper numbersin
`_CBM2014-00112.
`> Exhibits with numbers 1001-1029 werefiled in CBM2014-00112 and
`those with numbers 1101-1129 were filed in CBM2014-00113. For
`purposesof this decision, where the two cases have duplicate exhibits, we
`refer to the exhibit filed in CBM2014-00112.
`—4U.S, Patent No. 5,530,235 (June 25, 1996) (Ex. 1013, “Stefik ’235”).
`> U.S. Patent No. 5,629,980 (May 13, 1997) (Ex. 1014, “Stefik °980”).
`© U.S. Patent No. 5,915,019 (June 22, 1999) (Ex. 1015, “Ginter”).
`
`

`

`CBM2014-00112
`Patent 7,942,317 B2
`
`Subsequentto institution, Patent Ownerfiled a Patent Owner Response
`
`(Paper 22, “PO Resp.”) and, in support, a declaration from Jonathan Katz, Ph.D.
`
`(Ex. 2031, “Katz Declaration”). Petitioner filed a Reply (Paper 30, “Pet. Reply”)
`
`to Patent Owner’s Response.
`
`An oral hearing washeld on July 7, 2015, and a transcript of the hearing is
`
`includedin the record (Paper 47, “Tr.’’).
`
`Wehavejurisdiction under 35 U.S.C. § 6(c). This Final Written Decisionis
`
`issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`
`For the reasonsthat follow, we determine that Petitioner has shownby a
`
`preponderance ofthe evidence that claims 1, 6-8, 12, 13, 16, and 18 of the 7317
`
`patent are unpatentable.
`
`B.
`
`The ’317 Patent
`
`The °317 patent relates to “a portable data carrier for storing and paying for
`
`data and to computer systemsfor providing access to 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 makeproprietary data available over the internet
`
`without authorization. Jd. at 1:38—51. The ’317 patent describes providing
`
`portable data storage together with a means for conditioning accessto that data
`
`upon validated payment. Jd. 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. Jd. at 1:55-63. The terminal reads payment information,validates
`
`that information, and downloadsdata into the portable storage device from a data
`
`

`

`CBM2014-00112
`Patent 7,942,317 B2
`
`supplier. Jd. The data on the portable storage device can be retrieved and output
`
`from a mobile device. Jd. at 1:64—67.
`
`The ’317 patent makesclear that the actual implementation of 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 the system are
`
`possible and the inventionis not limited to the described embodiments.”’).
`
`C.
`
`Related Matters
`
`The parties indicate that Smartflash has sued Apple for infringementof the
`
`’317 patent andidentify the following district court case: Smartflash LC v. Apple
`
`Inc., Case No. 6:13-cv-447 (E.D. Tex.). See, e.g., 112 Pet. 15-16; 112 Papers4, 5.
`
`Patent Ownerindicates that other patents in the same patent family are the subject of
`
`several other district court cases. Paper 32, 2-3.
`
`In addition to the 112 and 113 Petitions, Apple, as well as other Petitioners,
`
`has filed numerousother Petitions for covered business method patent review
`
`challenging claims of patents owned by Smartflash and disclosing similar subject
`
`matter.
`
`D.
`
`The Instituted Claims
`
`Weinstituted review of claims 1, 6-8, 12, 13, 16, and 18 of the 317 patent.
`
`Dec. 22. Claims 1, 8, 12, 16, and 18 are independent. Claims 6 and 7 depend from
`
`claim 1 and claim 13 dependsfrom claim 12. Claims 1 and 8 are illustrative of the
`
`claimsat issue and recite the following:
`
`A computer system for providing data to a data requester,
`1,
`the system comprising:
`
`a communication interface;
`
`a data accessdata 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;
`
`

`

`CBM2014-00112
`Patent 7,942,317 B2
`
`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 paymentdata, to read data
`for the requested data item from a content provider; and
`
`code to transmit the read data to the requester over the communications
`interface.
`
`Ex. 1001, 25:55—26:8.
`8.
`A method ofproviding data to a data requester comprising:
`
`|
`
`receiving a request for a data item from the requester;
`
`receiving paymentdata from the requester relating to 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.
`
`ld. al 26:36-43.
`
`I.
`
`EVIDENTIARY MATTERS
`
`A.
`Wechselberger Declarations
`In its Response, Patent Owner urges that the 112 and 113 Wechselberger
`
`declarations should be givenlittle or no weight. PO Resp. 4—8; see Tr. 72:23-
`
`73:17. In its Preliminary Response, Patent Owner argued that we should disregard
`
`the declarations, but we determined that Patent Ownerdid notoffer any evidence
`
`that Mr. Wechselberger“used incorrectcriteria, failed to consider evidence,oris
`
`

`

`CBM2014-00112
`Patent 7,942,317 B2
`
`not an expert in the appropriate field.” Dec. 4n.9. Patent Owner renewsits
`
`contention arguing that because Mr. Wechselberger’s declarations do notstate the
`ce
`
`evidentiary weight standard that he usedin arriving at his conclusions, he
`
`“‘used
`
`incorrect criteria.” PO Resp. 5. Referring to excerpts from Mr. Wechselberger’s
`
`deposition, Patent Owner contendsthat he “could neither articulate what the
`
`difference was between ‘substantial evidence’ and “preponderanceof the
`
`evidence,’ nor could he articulate which standard he was supposed to use when
`
`alleging invalidity of claims in a patent.” Jd. at 5—7. Thus, concludes Patent
`
`Owner, we can only afford little or no weight to his testimony, otherwise we would
`eee
`
`be accepting his opinion without knowing
`
`“‘the underlying facts .
`
`.
`
`. on which the
`
`opinion is based’ (i.e., how much evidence he thinks show any ofhis opinions
`
`discussed therein).” Jd. at 7.
`
`In its Reply, Petitioner argues that “Mr. Wechselbergeris a highly-qualified
`
`expert,” that Patent Owner offers no evidence disputing that he is a qualified
`
`expert, and that an expert is not required to recite or apply the “preponderance of
`
`standard’ expressly in order for the expert opinion to be accorded weight.” Pet.
`
`Reply 20-21 (citation omitted).
`
`Patent Ownerhasnotarticulated a persuasive reason for giving Mr.
`
`Wechselberger’s declarations, as a whole, little or no weight in our analysis.
`Patent Ownerhas not cited any authority requiring an expert to recite or apply the
`“preponderanceof the evidence” standard in order for the expert opinion to be
`
`accorded weight. Under 37 C.F.R. 42.1(d), we apply the preponderance ofthe
`
`evidence standard in determining whether Petitioner has established
`
`unpatentability. In doing so,it is within our discretion to determine the appropriate
`
`weight to be accorded to the evidence presented, including the weight accorded to
`
`expert opinion, based on the disclosure of the underlying facts or data upon which
`
`

`

`CBM2014-00112
`Patent 7,942,317 B2
`
`the opinion is based. Thus, we decline to make a determination about Mr.
`
`Wechselberger’s opinion, as a whole. Rather, in our analysis, we will consider, as
`
`it arises, relevant opinion from Mr. Wechselberger and give it due weight, if
`
`appropriate.
`
`B.
`
`Katz Declaration
`
`Petitioner contendsthat “Dr. Katz’s unsupported opinions,to the extent that
`
`they are given any weightat all, should be given far less weight than Mr.
`
`Wechselberger’s.” Pet. Reply 16-20. Specifically, Petitioner argues that Dr. Katz
`
`is not qualified as a person of ordinary skill in the art undereither party’s
`
`definition, he repeatedly stated that “he was ‘not sure’ about various technologies
`
`that are indisputably in the relevant prior art, and that he does not know what a
`
`POSITA would have understood aboutthat technology,” and he repeatedly stated
`
`that “he was‘not sure’ how a POSITA wouldinterpret several passages ofthe
`cited prior art and several passages of the challenged patent[].” Pet. Reply 2-3,
`
`16-20; Tr. 50:8-57:19. Thus, concludes Petitioner, “Dr. Katz (a) does not know
`
`this information andis therefore not a qualified expert and/or (b) did not properly
`
`consider the scope and content of the prior art or a POSITA’s understanding ofthe
`
`prior art.” Jd. at 20.
`
`Wedecline to make a determination as to Dr. Katz’s testimony as a whole.
`
`As noted above, we have the discretion to determine the appropriate weightto be
`
`accorded to the evidence presented, including the weight accorded to expert
`
`opinion, based on the disclosure of the underlying facts or data upon which the
`
`opinion is based. Thus, in our analysis, we will consider,as it arises, relevant
`
`opinion from Dr. Katz and give it due weight, if appropriate.
`
`

`

`CBM2014-00112
`Patent 7,942,317 B2
`
`Ill. ANALYSIS
`
`A. Claim Construction
`
`Weconstrue all terms, whether or not expressly discussed here, using the
`
`broadest reasonable construction in light of the ’317 patent specification. See
`
`37 C.F.R. § 42.300(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
`
`1278-80 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable
`
`interpretation standard in enacting the AIA,” and “the standard was properly
`
`adopted by PTO regulation.”). Applying that standard, we interpret the claim
`
`terms of the ’317 patent according to their ordinary and customary meaning in the
`
`context of the ’317 patent’s written description. See In re Translogic Tech., Inc.,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007). In the Decision to Institute, we construed
`
`the term “use rule data” as “data for a rule specifying a condition under which
`
`access to content is permitted.” Dec. 7. Neither party contests this construction.
`
`We discern no reason to deviate from this construction of “use rule data.” For
`
`purposesofthis Final Written Decision, we additionally expressly construe
`
`“paymentdata.”
`
`“payment data”
`
`Petitioner asserts that “[f]or review purposes, [payment data] is construed to
`
`mean ‘data representing payment made for requested content data’ andis distinct
`
`trom ‘access control data.”” 112 Pet. 17; 113 Pet. 22 (emphasis added). Patent
`
`Ownerdisagrees, arguing that the term “payment data” should be interpreted to
`
`mean“data that can be used to make paymentfor content.” PO Resp. 8 (emphasis
`
`added).
`
`AlthoughPetitioner and Patent Owner disagree on the proper broadest
`
`reasonable construction of the term “paymentdata,” both proposed constructions
`
`incorporate an element of timing. The main dispute betweenthe parties is the
`
`

`

`CBM2014-00112
`Patent 7,942,317 B2
`
`timing of “payment data.” For example, Petitioner argues that the ’317 patent’s
`
`definition of the term “encompassesdata relating to either current or past
`
`payment.” Pet. Reply 4. In support, Petitioner refers (id. at 3-4) to the following
`
`disclosure from the ’317 patent Specification:
`
`“(t]he payment data received mayeither be data relating to an actual
`payment madeto the data supplier, or it may be a record ofa payment
`made to an e-payment system... .”
`
`Ex. 1001, 6:57-61 (emphasis added).
`
`Patent Owner, on the other hand, argues that the ’317 patent discloses that
`
`“paymentdata” exists prior to the paymentoperation,1.e., “used for making a
`eee
`
`payment.” PO Resp. 8-9. In support ofits argumentthat
`
`“‘payment data’ is used
`
`for making a payment,” Patent Ownerrefers to the following disclosure from the
`Specification’: “[P]ayment data for making a payment. .
`. is received from the
`
`smart Flash card by the content access terminal and forwarded to an e-payment
`
`system.” Jd. (citing Ex. 1001, 20:59-62).
`
`Weare persuadedthat the broadest reasonable interpretation of the term
`
`“paymentdata,” encompasses both Petitioner’s and Patent Owner’s definitions of
`
`the term. As used in the "317 patent, “payment data” encompassesdata relating to
`
`future, current, and past payments. In other words, we are persuaded that the °317
`
`patent does not incorporate an elementoftiming into the definition of payment
`
`data. First, the plain and ordinary meaning of the two wordsthat make up the
`
`term—“‘payment” and “data’”—do not incorporate any notion of time and nothing
`
`about their combination changes that determination.
`
`” We note that Patent Owner mistakenly refers to the disclosure from the “’221
`patent”in at least one instance. PO Resp. 9. We, however, interpret this as a
`reference to the ’317 patent.
`
`

`

`CBM2014-00112
`Patent 7,942,317 B2
`
`Second, the ’317 patent specification supports “payment data” representing
`
`data existing prior to, concurrent with, and after paymentof the requested content.
`
`For example, the ’317 patent states that “payment data for making a paymentto the
`
`system owneris received from the smart Flash card by the content access terminal
`
`and forwarded to an e-paymentsystem.” Ex. 1001, 20:59-62. We agree with
`
`Patent Ownerthat this language indicates that payment data exists prior to the
`
`payment being madefor the requested content. See PO Resp. 8-9. Petitioner does
`
`not address this language. See Pet. Reply 3-4. In addition, we agree with
`
`Petitioner that the language in the ’317 patent, “payment data received may either
`
`be data relating to an actual payment madeto the data supplier, or it may be a
`
`record of a payment made to an e-paymentsystem,” (Ex. 1001, 6:57—-60) clearly
`showsthat “payment data,” includes data for payments that have already been
`made. See Pet. Reply 3-4.
`
`Moreover, the plain and ordinary meaning of data doesnot allow forit to
`
`change character based on whenit is used in a transaction. For example, a credit
`
`card numberis “data relating to payment” before the numberis processed, while
`
`the numberis being processed, and after the numberis processed. See, e.g,, Ex.
`
`1015, 232:14—24 (providing credit or debit card information to a retail terminal).
`
`Thus, without an express description to the contrary, we presumethat “payment
`
`data” retains the same meaning before, during, and after the paymentoperation.
`
`Neither party points to any such contrary description.
`
`Indeed, the ’317 patent describes “payment data” in several instances as data
`
`relating to paymentfor the requested data item. Ex. 1001, 10:5-6, 10:27-28,
`
`10:38-39. Thus, we are persuaded that the broadest reasonable interpretation of
`“payment data” as used in the ’317 patentis “data relating to paymentfor the
`requested data item.”
`
`10
`
`

`

`CBM2014-00112
`Patent 7,942,317 B2
`
`B. Obviousness over 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. After considering the
`
`arguments and evidence presented in the Petition and the Preliminary Response
`
`(112, Paper 6), we instituted trial with respect to claims 1, 6-8, 12, 13, 16, and 18
`
`concluding that Petitioner waslikely to prevail in showing unpatentability under
`
`35 U.S.C. § 103(a) over the combination of Stefik ’235 and Stefik ’°980. Dec. 22.
`
`After considering the arguments and evidence presented duringthetrial, our
`
`determination remains unchanged.
`
`1. Overview ofStefik ’235 (Ex. 1013)
`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.
`
`2. Overview ofStefik 980 (Ex. 1014)
`Stefik ’980 teaches a “repository” for storing digital works, controlling
`
`accessto digital works,billing for access to digital works and maintaining the
`
`security and integrity of the system. Ex. 1014, 6:57-61.
`
`1]
`
`

`

`CBM2014-00112
`Patent 7,942,317 B2
`
`3. Analysis
`
`The parties focus on only certain claim limitations. For the remaining
`
`limitations, we have reviewed Petitioner’s evidence and argumentand agreethat
`Petitioner has shownsufficiently that Stefik® teaches these limitations. See 112
`
`Pet. 28-77. We turn nowto the disputed limitations.
`
`“payment data”
`
`Claims 8, 12, and 18
`
`
`Patent Owner contendsthat claims 8, 12, and 18 would not have been
`
`obvious over Stefik. PO Resp. 14-15. Claim 8 recites “receiving payment data
`
`from the requester relating to paymentfor the requested data.” Claim 12 recites “a
`
`data access system comprising: a data supply computer system for forwarding data
`
`from a data provider to a data access terminal; ... wherein data is forwarded from
`
`the data provider to the data carrier on validation ofpayment data provided from
`
`the data carrier to the electronic payment system.” Claim 18 recites “receiving
`
`payment data from the requester relating to paymentfor the requested data” and
`
`“outputting payment data to a payment system for distributing the paymentfor the
`
`requested data.” (emphasis added).
`
`Petitioner contends that Stefik teaches the claimed “payment data” because
`
`Stefik describes “reporting transaction information andfees to a credit server or
`
`billing clearinghouse.” 112 Pet. 71-72, 75. For example, Setfik describes
`
`“generat[ing] billing information for the access which1s transmitted to a credit
`
`® Petitioner refers to Stefik °235 and Stefik ’980 collectively as “Stefik,”
`contending that Stefik ’235 incorporates Stefik ’980 by reference, and providing
`rationale for combining the teachings from the two references. 112 Pet. 20-21
`n.12; PO Resp. 10-15 (Patent Ownernot disputing Petitioner’s contention
`regarding “‘Stefik” being a single reference, or Petitioner’s rationale for combining
`the teachings of Stefik ’235 and Stefik ’980). We follow Petitioner’s
`nomenclature.
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`server” (Ex. 1014, 7:33—36) and explainsthat “[f]or the mostpart,billing
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`transactions are well understoodin the state of the art” (id. at 29:58-64). 112 Pet.
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`71-72; Pet. Reply 8. Stefik further describes that “[t]he user on the DocuCard now
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`uses the user interface to assign payment of any fees associated with the
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`transaction to be executed” (Ex. 1013, 6:66—7:1) and “[t]his logging in process
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`mayalso activate credit accounts”(id. at 6:60-65). 112 Pet. 24, 42-43; Pet. Reply
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`8. We are persuadedby Petitioner’s position that Stefik teaches “payment data,”
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`which weconstrue as “data relating to paymentfor the requested data item.”
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`Patent Owner contends that “paymentdata” is not rendered obvious by
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`Stefik. PO Resp. 14-15. In support, however, Patent Ownerrefers to Petitioner’s
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`contentions regarding the limitation reciting “an electronic payment system for
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`confirming an electronic payment,” not Petitioner’s contentions regarding
`“paymentdata.” Jd. at 14 (citing 112” Pet. 55-56). Moreover, Patent Owner
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`summarily states that Stefik “is still discussing post-usage processing,” and
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`concludes that because Petitioner has adopted an incorrect interpretation of
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`“payment data,” the 112 Petition has not shownthat “payment data” is rendered
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`obvious by Stefik. PO Resp. 15. At the hearing, Patent Owner concededthat if we
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`do not adoptits construction of “payment data” and instead adopt Petitioner’s
`construction, it has no remaining argumentas to why Stefik does not teach
`“paymentdata.” Tr. 77:10—78:14. We adopt an even broaderconstruction of
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`“payment data” than that proposed by Petitioner. Our construction of “payment
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`data” does not including a timing component, and Patent Owner’s argumentis
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`based on the timing of payment data. PO Resp. 14-15. Thus, Patent Ownerhas
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`not persuaded usthat Stefik does not teach “paymentdata.”
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`* We also note that Patent Ownererroneously refers to the 113 Petition, which
`discusses Ginter. PO Resp. 14.
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`“pointer to a data providerfor the data item” and “resource locator identifying a
`data provider”
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`
`
`Claims 1, 7, and 16 6,
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`
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`-Patent Owner contendsthat claims 1, 6, 7, and 16 would not have been
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`obvious over Stefik. PO Resp. 10-13. Independent claim 1, and thus claims 6 and
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`7, based on their dependency from claim 1, recite “a data access data store for
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`storing records of data items available from the system, each record comprising a
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`data item description and a pointer to a data providerfor the data item.” Similarly,
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`independentclaim 16 recites ‘“‘a data access data store for storing recordsof data
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`items available from the system, each record comprising a data item description
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`and a resource locator identifying a data providerfor the data item.”
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`Stefik discloses that the file information for a “document,”i.e., data, is
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`comprised ofa “contents file’ and a ‘descriptionfile.’” Ex. 1013, 7:35-36; see
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`Ex. 1014, 9:21-23. The “contents file” contains the documents, which are stored
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`on a “DocuCard.” Ex. 1013, 6:10, 7:19-20; see Ex. 1014, 14:37-38. “The
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`‘contents’ file is a stream of addressable bytes.” Ex. 1013, 6:36—-38; see Ex. 1014,
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`9:23-26. For example, a documentis stored starting at a relative addressof0.
`Ex. 1013, 7:42—55, Fig. 4; Ex. 1014, 9:3446, Fig.5.
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`Stefik states that the descriptor file contains ‘ta pointer to the documentin
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`the content part.” Ex. 1013, 7:35-58, Fig. 4; see Ex. 1014, 9:21-49,Fig.5.
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`Specifically, as Petitioner argues (Pet. Reply 5—7), Stefik teaches that the
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`description tree [i.e., description file] is comprised of “descriptor blocks (d-
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`blocks),” wherein “d-block 500 includes an identifier 501” and “a starting address
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`502 providing the start address of the first byte of the work[i.e., data].” Ex. 1013,
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`6:2-17, 7:60—67, Fig. 5a; see Ex. 1014, 9:26—27, 9:52-58, Fig. 7; Tr. 37:17-38:2,
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`39:1440:8. Identifier 501 is comprised of a “unique numberassigned to the
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`DocuCard[i.e., where data is stored] upon manufacture.” Ex. 1013, 8:4-8; see Ex.
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`1014, 9:62-65. Stefik further explains that the description file may be stored
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`independently from the contents file. Ex. 1013, 6:2-17, 7:21-41; see Ex. 1014,
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`14:28—36, Fig. 12.
`
`With respect to the claimed “pointer” in claim 1 and claimed “resource
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`locator”in claim 16, Petitioner refers to Stefik’s “d-blocks”in the descriptorfile.
`
`112 Pet. 33, 69 (claim chart for claim 16 referring to claim 1). According to
`
`Petitioner, Stefik’s “pointers”(1.e., descriptor blocks) identify the device(i.e., the
`
`data provider) where content is stored, which can be stored separately from the
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`descriptorfile, and the “‘start address of the first byte of work.’” See Pet. Reply 5—
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`7 (citation omitted); Tr. 29:12—30:17, 31:6—21 (Petitioner contendsthat the pointer
`
`points to the location of the first bits that make up the data item).
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`Wedetermine that Petitioner has shownby a preponderanceofthe evidence
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`that Stefik teaches the claimed “pointer to a data provider” and “resource locator
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`identifying a data provider,” as required by claims 1 and 16, respectively. Based
`on the disclosures in Stefik, we are persuaded by Petitioner’s contention that a
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`skilled artisan would understand Stefik’s descriptor blocks as pointing to the
`
`DocuCard(i.e., the data provider or resource locator) where content is stored and
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`the start address,i.e., location, of the first byte of the data time. See Pet. Reply 5—
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`7. As such, Stefik’s descriptor blocks, like the pointers described in the ’317
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`patent, identify a location(s) where a data item can be downloaded. See Ex. 1001,
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`14:61-65 (data storestores records comprising location data comprising one or
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`more pointers to a location(s) where the data item can be downloaded).
`
`Patent Ownercontendsthat the variouscitations referred to by Petitioner do
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`not satisfy either “pointer” or “resource locator.” Tr. 118:20—-119. Patent Owner
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`acknowledgesthat Stefik’s descriptor file contains “‘a pointer to the documentin
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`the contentpart,” but asserts that “this is a pointer to the contentpart itself, not the
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`claimed ‘data provider for the data item’”or “a resource locator identifying a data
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`providerfor the data item.” PO Resp. 12-13 (citing Ex. 1013, 7:35—42). Patent
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`Owner’s argumentis conclusory and not persuasive. Tr. 114:3-118:14; PO
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`Resp. 12-13. As we discuss above, Stefik’s descriptor blocks include an identifier
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`comprising a unique numberassigned to the DocuCard wherethe data is stored and
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`a start address for the location of the first byte of the data. Ex. 1013, 6:2-17, 7:60—
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`67, Fig. 5a; see Ex. 1014, 9:26-27, 9:52-58, Fig. 7; see Tr. 37:17-38:2, 39:14—
`40:8. Furthermore, Patent Owner’s contentionthat Stefik’s descriptor blocks “are
`pointers to other d-blocksin the description file” (PO Resp. 13) is not consistent
`
`with Stefik’s disclosure. See Ex. 1013, 7:60-67; Ex. 1014, 9:52-58.
`
`Accordingly, we are persuadedthat Stefik’s descriptor block teaches the
`
`claimed “pointer” and “resource locator” of claims 1 and 16, respectively. For the
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`same reasons, we determinethat Stefik teaches the claimed “pointer” of dependent
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`claims 6 and 7.
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`C. Obviousness over Ginter
`
`Petitioner contendsthat claims 1, 6—8, 12—14, 16, and 18 would have been
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`obvious over Ginter. 113 Pet. 22, 40-78. After considering the arguments and
`
`evidence presented in the Petition and the Preliminary Response (113, Paper 6), we
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`instituted trial with respect to claims 1, 6-8, 12, 13, 16, and 18 concludingthat
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`Petitioner waslikely to prevail in showing unpatentability under 35 U.S.C.
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`§ 103(a) over Ginter. Dec. 19, 22. After considering the arguments and evidence
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`presented during the trial, our determination remains unchanged.
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`1. Overview ofGinter (Ex. 1015;
`Ginter discloses a portable “virtual distribution environment”that can
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`“control and/or meter or otherwise monitor use of electronically stored or
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`disseminated information.” Ex. 1015, Abstract, Fig. 71, 52:26-27.
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`2. Analysis
`The parties focus on only one claim limitation. For the remaining
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`limitations, we have reviewedPetitioner’s evidence and argument and agree that
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`Petitioner has shownsufficiently that Ginter teaches these limitations. See 113 Pet.
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`40-78. Weturn now to the disputed limitation.
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`“payment data”
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`Patent Owner contendsthat claims 1, 6-8, 12, 13, 16, and 18 would not have
`
`been obvious over Ginter. PO Resp. 16-20. Each of these claimsrecites “payment
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`data,” either explicitly or implicitly based on the dependencyof the claim. For
`example, claim 1 recites “code to receive from the communicationsinterface
`paymentdata comprising data relating to paymentfor the requested data item” and
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`“code responsive to the request [for a data item] and to the received paymentdata,
`
`to read data for the requested data item from a content provider.” As noted above,
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`weconstrue “payment data” as “data relating to payment f