Trials@uspto.gov
`Tel: 571—272-7822
`
`Paper 45
`Entered: March 30, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC., and
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`Petitioner
`
`and
`
`APPLE INC.,
`
`Petitioner,
`
`V.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2014-001931
`
`Patent 8,061,598 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`CLEIVIENTS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 US. C. § 328(a) and 37 CFR. § 42. 73
`
`1 CBM2015-00120 (Patent 8,061,598 B2) was consolidated with this
`proceeding.
`
`
`Tel: 571—272-7822
`
`Paper 45
`Entered: March 30, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC., and
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`Petitioner
`
`and
`
`APPLE INC.,
`
`Petitioner,
`
`V.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2014-001931
`
`Patent 8,061,598 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`CLEIVIENTS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 US. C. § 328(a) and 37 CFR. § 42. 73
`
`1 CBM2015-00120 (Patent 8,061,598 B2) was consolidated with this
`proceeding.
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`A. Background
`
`INTRODUCTION
`
`Samsung Electronics America, Inc., Samsung Electronics Co., Ltd.,
`
`and Samsung Telecommunications America, LLC (“Samsung”),2 filed a
`
`Corrected Petition to institute covered business method patent review of
`
`claim 7 (the “challenged claim”) of US. Patent No. 8,061,598 B2 (Ex. 1001,
`
`“the ’598 patent”) pursuant to § 18 of the Leahy-Smith America Invents Act
`
`(“AIA”). Paper 2 (“Pet.”). On April 2, 2015, we instituted a covered
`
`business method patent review (Paper 7, “Institution Decision” or “Inst.
`
`Dec.”) based upon Samsung’s assertion that claim 7 (“the challenged
`
`claim”) is directed to patent ineligible subject matter under 35 U.S.C. § 101.
`
`Inst. Dec. 19.
`
`On April 30, 2015, Apple Inc. (“Apple”) filed a Petition to institute
`
`covered business method patent review of the same claim of the ’598 patent
`
`based on the same ground. Apple Inc. v. Smartflash LLC, Case CBM2015-
`
`00120 (Paper 2, “Apple Pet”). Apple simultaneously filed a “Motion for
`
`Joinder” of its newly filed case with Samsung’s previously instituted case.
`
`CBM2015-00120 (Paper 3, “Apple Mot.”). On August 6, 2015, we granted
`
`Apple’s Petition and consolidated the two proceedings.3 Paper 29; Apple
`
`Inc. v. Smartflash LLC, Case CBM2015-00120, (Paper 13).
`
`2 Samsung Telecommunications America, LLC, a petitioner at the time of
`filing, merged with and into Samsung Electronics America, Inc. as of
`January 1, 2015. Paper 6.
`
`3 For purposes of this decision, we will cite only to Samsung’s Petition.
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`Subsequent to institution, Smartflash LLC (“Patent Owner”) filed a
`
`Patent Owner Response (Paper 20, “PO Resp.”) and Petitioner filed a Reply
`
`(Paper 31, “Pet. Reply”) to Patent Owner’s Response.
`
`An oral hearing was held on November 9, 2015, and a transcript of the
`
`hearing is included in the record. Paper 43 (“TL”).
`
`This Final Written Decision is issued pursuant to 35 U.S.C. § 328(a)
`
`and 37 C.F.R. § 42.73. For the reasons that follow, we determine that
`
`Petitioner has shown by a preponderance of the evidence that claim 7 of the
`
`’598 patent is directed to patent ineligible subject matter under 35 U.S.C.
`
`§ 1 O 1 .
`
`B. Related Matters and Estoppel
`
`In a previous covered business method patent review, CBM2014—
`
`00108, we issued a Final Written Decision determining claim 26 of the ’598
`
`patent unpatentable under 35 U.S.C. § 103. Apple Inc. v. Smart/lash LLC,
`
`Case CBM2014-00108, (PTAB Sept. 25, 2015) (Paper 50).
`
`C. The ’5 98 Patent
`
`The ’598 patent relates to “a portable data carrier for storing and
`
`paying for data and to computer systems for providing access to data to be
`
`stored,” and the “corresponding methods and computer programs.”
`
`Ex. 1001, 1:21—25. Owners of pr0prietary data, especially audio recordings,
`
`have an urgent need to address the prevalence of “data pirates” who make
`
`proprietary data available over the Internet without authorization. Id. at
`
`1:29—55. The ’598 patent describes providing portable data storage together
`
`with a means for conditioning access to that data upon validated payment.
`
`Id. at 1:59—2:11. This combination allows data owners to make their data
`
`available over the Internet with less fear of piracy. Id. at 2: 1 1—15.
`
`
`
`CBM2014—00193
`
`Patent 8,061,598 B2
`
`As described, the portable data storage device is connected to a
`
`terminal for Internet access. Id. at 1:59—67. The terminal reads payment
`
`information, validates that information, and downloads data into the portable
`
`storage device from the data supplier. Id. The data on the portable storage
`
`device can be retrieved and output from a mobile device. Id. at 2: 1-5. The
`
`’598 patent makes clear that the actual implementation of these components
`
`is 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 invention is not limited to the described
`
`embodiments .
`
`.
`
`. .”).
`
`D. Challenged Claim
`
`Petitioner4 challenges claim 7 of the ’598 patent. Claim 7 depends
`
`from claim 1, which is not explicitly challenged in this proceeding. Claims
`
`1 and 7 recite the following:
`
`1.
`
`A portable data carrier comprising:
`
`an interface for reading and writing data from and to the portable data
`carrier;
`
`content data memory, coupled to the interface, for storing one or more
`content data items on the carrier;
`
`use rule memory to store one or more use rules for said one or more
`content data items;
`'
`
`a program store storing code implementable by a processor;
`
`and a processor coupled to the content data memory, the use rule
`memory, the interface and to the program store for implementing
`code in the program store,
`
`wherein the code comprises code for storing at least one content data
`item in the content data memory and at least one use rule in the use
`rule memory.
`
`4 We refer to Samsung and Apple‘collectively as “Petitioner.”
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`Ex. 1001, 25 :54—67.
`
`A portable data carrier as claimed in claim 1, further
`7.
`comprising payment data memory to store payment data and code to
`provide the payment data to a payment validation system.
`
`Id. at 26:25—28.
`
`A. Claim Construction
`
`ANALYSIS
`
`In a covered business method patent review, claim terms are given
`
`their broadest reasonable interpretation in light of the specification in which
`
`they appear and the understanding of others skilled in the relevant art. See
`
`37 CPR. § 42.300(b). Applying that standard, we interpret the claim terms
`
`of the ’598 patent according to their ordinary and customary meaning in the
`
`context of the patent’s written description. See In re Translogic Tech, Inc,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes of this Decision, we
`
`need not construe expressly any claim term.
`
`B. Statutory Subject Matter
`
`Petitioner challenges claim 7 as directed to patent-ineligible subject
`
`matter under 35 U.S.C. § 101. Pet. 20—32. According to Petitioner, the
`
`challenged claim is directed to an abstract idea without additional elements
`
`that transform the claim into a patent-eligible application of that idea. Id.
`
`Petitioner submits a declaration from Jeffrey A. Bloom, Ph.D. in support of
`
`its Petition.5 Ex. 1003. Patent Owner argues that the subject matter claimed
`
`5 In its Response, Patent Owner argues that this declaration should be given
`little or no weight. PO Resp. 3—4. Because Patent Owner has filed a Motion
`to Exclude that includes a request to exclude Dr. Bloom’s Declaration in its
`entirety, or in the alternative, portions of the declaration based on essentially
`the same argument, we address Patent Owner’s argument as part of our
`analysis of the motion to exclude, below.
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`by claim 7 is statutory because it is “‘rooted in computer technology in order
`
`to overcome a problem specifically arising in the realm of computer
`
`networks,’” that of “data content piracy on the Internet.” PO Resp. 1
`
`(quoting DDR Holdings, LLC v. Hotels. com, LP, 773 F.3d 1245, 1257
`
`(Fed. Cir. 2014)).
`
`1. Abstract Idea
`
`Under 35 U.S.C. § 101, we must first identify whether an invention
`
`fits within one of the four statutorily provided categories of patent-
`
`eligibility: “processes, machines, manufactures, and compositions of
`
`matter.” Ultramercial, Inc. v. Hula, LLC, 772 F.3d 709, 713—714 (Fed. Cir.
`
`2014). Here, the challenged claim recites a “machine,” i.e., a “portable data
`
`carrier,” under § 101. Section 101, however, “contains an important implicit
`
`exception [to subject matter eligibility]: Laws of nature, natural phenomena,
`
`and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank
`
`Int ’l., 134 S. Ct. 2347, 2354 (2014) (citing Assoc. for Molecular Pathology
`
`v. Myriad Genetics, Inc, 133 S. Ct. 2107, 2116 (2013) (internal quotation
`
`marks and brackets omitted)). In Alice, the Supreme Court reiterated the
`
`framework set forth previously in Mayo Collaborative Services v.
`
`Prometheus Laboratories, Inc.,‘132 S. Ct. 1289, 1293 (2012) “for
`
`distinguishing patents that claim laws of nature, natural phenomena, and
`
`abstract ideas from those that claim patent-eligible applications of those
`
`concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to
`
`“determine whether the claims at issue are directed to one of those patent-
`
`ineligible concepts.” Id.
`
`According to the Federal Circuit, “determining whether the section
`
`101 exception for abstract ideas applies involves distinguishing between
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`patents that claim the building blocks ofhuman ingenuity—and therefore
`
`risk broad pre-emption of basic ideas—and patents that integrate those
`
`building blocks into something more, enough to transform them into specific
`
`patent—eligible inventions.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793
`
`F.3d 1306, 1332 (Fed. Cir. 2015) (emphasis added); accord id. at 1333—34
`
`(“It is a building block, a basic conceptualframework for organizing
`
`information .
`
`.
`
`. .” (emphasis added)). This is similar to the Supreme Court’s
`
`formulation in Bilski v. Kappos, 561 US. 593, 611 (2010) (emphasis added),
`noting that the concept of risk hedging is “afundamental econornic practice
`
`long prevalent in our system of commerce.” See also buySAFE, Inc. v.
`
`Google, Inc, 765 F.3d 1350, 1353—54 (Fed. Cir. 2014) (stating that patent
`
`claims related to “long-familiar commercial transactions” and relationships
`(i.e., business methods), no matter how “narrow” or “particular,” are
`
`directed to abstract ideas as a matter of law). As a further example, the
`
`“concept of ‘offer based pricing’ is similar to other ‘fundamental economic
`
`concepts’ found to be abstract ideas by the Supreme Court and [the Federal
`
`Circuit].” OIP Techs., Inc. v. Amazon. com, Inc., 788 F.3d 1359, 1362 (Fed.
`
`Cir. 2015) (citations omitted).
`
`Petitioner argues that the challenged claim is directed to the abstract
`
`idea of “enabling limited use of paid-for/licensed content.” Pet. 23.
`
`Although Patent Owner does not concede, in its brief, that the challenged
`claim is directed to an abstract idea, it does not persuasively explain how the
`
`claimed subject matter escapes this classification. PO Resp. 9—20; see also
`
`Paper 43 (transcript of oral hearing) 46:21—47:11 (Patent Owner arguing that
`
`the subject matter of the claim is not an abstract idea, but conceding this
`
`argument was not made in the briefs).
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`We are persuaded that the challenged claim is drawn to a patent-
`
`ineligible abstract idea. Specifically, the challenged claim is directed to
`performing the fundamental economic practice of conditioning and
`
`.
`
`controlling access to content based on payment. For example, claim 7
`
`recites “payment data memory to store payment data and code to provide the
`
`payment data to a payment validation system.” Furthermore, as discussed
`
`above, the ’598 patent discusses addressing recording industry concerns of
`
`data pirates offering unauthorized access to widely available compressed
`
`audio recordings. Ex. 1001, 1:20—55. The Specification explains that these
`
`pirates obtain data either by unauthorized or legitimate means and then make
`
`the data available over the Internet without authorization. Id. The
`
`Specification further explains that once data has been published on the
`
`Internet, it is difficult to police access to and use of it by Internet users who
`
`may not even realize that it is pirated. Id. The ’598 patent proposes to solve
`
`this problem by restricting access to data on a portable data carrier based
`
`upon payment validation. Id. at 1259—224. The ’598 patent makes clear that
`
`the crux of the claimed subject matter is restricting access to stored data
`
`based on supplier-defined access rules and validation of payment. Id. at
`
`1:59—2:15.
`
`Although the Specification refers to data piracy on the Internet, the
`
`challenged claim is not limited to the Internet. The underlying concept of
`
`the challenged claim, particularly when viewed in light of the Specification,
`
`is conditioning and controlling access to content based upon payment. As
`
`discussed further below, this is a fundamental economic practice long in
`
`existence in commerce. See Bilski, 561 US. at 611.
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`We are, thus, persuaded, based on the Specification and the language
`
`of the challenged claim, that claim 7 is directed to an abstract idea. See
`
`Alice, 134 S. Ct. at 2356 (holding that the concept of intermediated
`
`settlement at issue in Alice was an abstract idea); Accenture Global Servs.,
`
`GmbH v. Guidewire Software, Inc, 728 F.3d 1336, 1344 (Fed. Cir. 2013)
`
`(holding the abstract idea at the heart of a system claim to be “generating
`
`tasks [based on] rules .
`
`.
`
`. to be completed upon the occurrence of an event”).
`
`2. Inventive Concept
`“A claim that recites an abstract idea must include ‘additional
`
`features’ to ensure ‘that the [claim] is more than a drafting effort designed to
`
`monopolize the [abstract idea].”’ Alice, 134 S. Ct. at 2357 (quoting Mayo,
`
`132 S. Ct. at 1297). “This requires more than simply stating an abstract idea
`
`while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly,
`
`the prohibition on patenting an ineligible concept cannot be circumvented by
`
`limiting the use of an ineligible concept to a particular technological
`
`environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the
`
`mere recitation of generic computer components performing conventional
`
`functions is not enough. See Alice, 134 S. Ct. at 2360 (“Nearly every
`
`computer will include a ‘communications controller’ and ‘data storage unit’
`
`capable of performing the basic calculation, storage, and transmission
`
`functions required by the method claims”).
`
`Petitioner argues “[t]he claims of the ’598 patent .
`
`.
`
`. cover nothing
`
`more than the basic financial idea of enabling limited use of paid for and/0r
`licensed content using ‘conventional’ computer systems and components.”
`
`Pet. Reply 11 (quoting Ex. 1003 fl 126). Petitioner persuades us that claim 7
`
`of the ’598 patent does not add an inventive concept sufficient to ensure that
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`the patent in practice amounts to significantly more than a patent on the
`
`abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global
`
`Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of
`
`“generating tasks [based on] rules ‘.
`
`.
`
`. to be completed upon the occurrence
`
`of an event” to be unpatentable even when applied in a computer
`
`environment and within the insurance industry). Specifically, we agree with
`
`and adopt Petitioner’s rationale that the additional elements of the
`
`challenged claim are generic features of a computer that do not bring the
`
`challenged claim within § 101 patent eligibility. Pet. 23—27; Pet. Reply 11—
`
`19.
`
`a. Technical Elements
`
`Petitioner argues that the challenged claim is unpatentable because it
`
`is directed to an abstract idea and any technical elements it recites are
`
`repeatedly described by the ’598 patent itself as “both ‘conventional’ and as
`
`being used ‘in a conventional manner.”’ Pet. 23 (citing Ex. 1001, 4:4—5,
`
`16:46—49, 2 1 :33—3 8). Patent Owner disagrees, arguing that the challenged
`
`claim is patentable because it “recite[s] specific ways of using distinct
`
`memories, data types, and use rules that amount to significantly more than
`
`the underlying abstract idea.” PO Resp. 11 (quoting Ex. 2049, 19). We
`
`agree with Petitioner for the following reasons.
`
`The ’598 patent treats as well-known all potentially technical aspects
`
`of the challenged claim, which simply require generic computer components
`
`(e.g., interfaces, memory, program store, and processor). See Pet. Reply 13
`
`(citing Ex. 1003 11 24; Ex. 1001, 424—5, 16:46—53, 18:7—11). With respect to
`
`the “portable data carrier” recited in claim 1, for example, the Specification
`
`states it may be a generic device such as “a standard smart card.” Ex. 1001,
`
`10
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`11:27—29; see also id. at 14:25—29 (“[l]ikewise data stores 136, 138 and 140
`
`may comprise a single physical data store or may be distributed over a
`
`plurality of physical devices and may even be at physically remote locations
`
`from processors 128-134 and coupled to these processors via internet 142”),
`
`Fig. 6. With respect to the “payment validation system” recited in claim 7,
`
`the Specification states that it “may be part of the data s'upplier’s computer
`
`systems or it may be a separate e-payment system.” Id. at 8:63—65); see also
`
`13:36—38 (“an e-payment system according to, for example, MONDEX,
`
`Proton, and/or Visa cash compliant standards”).
`
`Further, the claimed computer code performs generic computer
`
`functions, such as storing, retrieving, receiving, reading, evaluating, and
`
`enabling access to. See Pet. 23—29; Pet. Reply 14—16. The recitation of
`
`these generic computer functions is insufficient to confer specificity. See
`
`. Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat ’l
`
`Assoc, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The concept of data
`
`collection, recognition, and storage is undisputedly well-known. Indeed,
`
`humans have always performed these functions”).
`
`Moreover, we are not persuaded that claim 7 “recite[s] specific ways
`
`of using distinct memories, data types, and use rules that amount to
`
`significantly more than” conditioning and controlling access to content
`
`based on payment. See PO Resp. 11. The challenged claim recites several
`,3 “
`
`memories, including “content data memory,
`
`use rule memory,” “a
`
`program store,” and “payment data memory,” and several data types,
`,3 ‘6
`’9 ‘6
`3,
`‘6
`D, ‘4
`
`including “data,
`
`content data items,
`
`use rules,
`
`code,
`
`payment data,”
`
`and “use status data.” We are not persuaded that the recitation of these
`
`memories and data types, by itself, amounts to significantly more than the
`
`11
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`underlying abstract idea. Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct.
`
`at 1294) (“We have described step two of this analysis as a search for an
`
`‘inventive concept’—i.e., an element or combination of elements that is
`
`‘sufficient to ensure that the patent in practice amounts to significantly more
`than a patent on the [ineligible concept] itself.’”) (brackets in original).
`
`Patent Owner does not point to any inventive concept in the ’598 patent
`
`related to the way these memories or data types are constructed or used. In
`
`fact, the ’598 patent simply discloses these memories and data types with no
`
`description of the underlying implementation or programming that results in
`
`these data constructs. See Content Extraction, 776 F.3d at 1347 (“The
`
`concept of data collection, recognition, and storage is undisputedly well-
`
`known. Indeed, humans have always performed these functions”).
`
`In addition, because the recited elements can be implemented on a
`general purpose computer, the challenged claim does not cover a “particular
`
`machine.” Pet. 29—3 1; see Bilski, 561 US at 604—05 (stating that machine-
`
`or-transformation test remains “a usefiJl and important clue” for determining
`
`whether an invention is patent eligible). And the challenged claim does not
`
`transform an article into a different state of thing. Pet. 31—32.
`
`Thus, we determine, the potentially technical elements of the claim
`
`are nothing more than “generic computer implementations” and perform
`
`functions that are “purely conventional.” Alice, 134 S. Ct. at 2358—59;
`
`Mayo, 132 S. Ct. at 1294.
`
`b. DDR Holdings
`
`Relying on the Federal Circuit’s decision in DDR Holdings, Patent
`
`Owner asserts that the challenged claim is directed to statutory subject
`
`matter because the claimed solution is “necessarily rooted in computer
`
`12
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`technology in order to overcome a problem specifically arising in the realm
`
`of computer networks.”’ PO Resp. 1 (quoting DDR Holdings, LLC v.
`
`H0tels.c0m, LP, 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Patent Owner
`
`contends that the challenged claim is “directed to a particular device that can
`
`download and store digital content into a data carrier along with at least one
`
`use rule,” and that
`
`By using a system that combines on the data carrier the digital
`content, at least one use rule, payment data, and “code to provide
`the payment data to a payment validation system,” access control
`to the digital content can be continuously enforced prior to access
`to the digital content, allowing subsequent use (e.g., playback) of
`the digital content
`to be portable and disconnected, and
`additional content can be obtained.
`
`Id. at 10.
`
`Petitioner responds that the challenged claim is distinguishable from
`
`the claims in DDR Holdings. Pet. Reply 17—19. The DDR Holdings patent
`is directed at retaining website visitors when clicking on an advertisement
`
`hyperlink within a host website. 773 F.3d at 1257. Conventionally, clicking
`
`on an advertisement hyperlink would transport a visitor from the host’s
`
`website to a third party website. Id. The Federal Circuit distinguished this
`
`Internet-centric problem over “the ‘brick and mortar’ context” because
`
`“[t]here is .
`
`.
`
`. no possibility that by walking up to [a kiosk in a warehouse
`
`store], the customer will be suddenly and completely transported outside the
`
`warehouse store and relocated to a separate physical venue associated with
`
`the third party.” Id. at 1258. The Federal Circuit further determined that the
`
`DDR Holdings claims specify “how interactions with the Internet are
`
`manipulated to yield a desired result—a result that overrides the routine and
`
`conventional sequence of events ordinarily triggered by the click of a
`
`13
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`hyperlink.” Id. The unconventional result in DDR Holdings is the website
`
`visitor is retained on the host website, but is still is able to purchase a
`
`product from a third—party merchant. Id. at 1257—58. The limitation referred
`
`to by the Federal Circuit in DDR Holdings recites “using the data retrieved,
`
`automatically generate and transmit to the web browser a second web page
`
`that displays:
`
`(A) information associated with the commerce object
`
`associated with the link that has been activated, and (B) the plurality of
`
`visually perceptible elements visually corresponding to the source page.” Id.
`
`at 1250. Importantly, the Federal Circuit identified this limitation as
`
`differentiating the DDR Holdings claims from those held to be unpatentable
`
`in Ultramercial, which “broadly and generically claim ‘use of the Internet’
`
`to perform an abstract business practice (with insignificant added activity)”
`
`Id. at 1258.
`
`We agree with Petitioner that the challenged claim is distinguishable
`
`from the claims at issue in DDR Holdings. As an initial matter, we are not
`
`persuaded by Patent Owner’s argument that the challenged claim “[is]
`
`rooted in computer technology in order to overcome a problem specifically
`
`arising in the realm of computer networks,” that of “data content piracy on
`
`the Internet.” PO Resp. 1. Data piracy exists in contexts other than the
`
`Internet. See Pet. Reply 16—17 (identifying other contexts in which data
`
`piracy is a problem). For example, data piracy was a problem with compact
`
`discs. See Ex. 1001, 519—12 (“where the data carrier stores .
`
`.
`
`. music, the
`
`purchase outright option may be equivalent to the purchase of a compact
`
`disc (CD), preferably with some form of content copy protection such as
`
`digital watermarking”). Further, whatever the problem, the solution
`
`provided by the challenged claim is not rooted in specific computer
`
`14
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`technology, but is based on conditioning and controlling access to content
`
`only when payment is validated. See Pet. Reply 16—19.
`
`Even accepting Patent Owner’s assertion that the challenged claim
`
`addresses data piracy on the Internet (PO Resp. 1), we are not persuaded that
`
`it does so by achieving a result that overrides the routine and conventional
`
`use of the recited devices and functions. In fact, the differences between the
`
`challenged claim and the claims at issue in DDR Holdings are made clear by
`
`comparing the challenged claim of the ’598 patent to claim 19 of the patent
`
`at issue in DDR Holdings. For example, claim 7 of the ’598 patent recites
`
`“code to provide the payment data to a payment validation system.” There
`
`is no language in this claim, in claim 1 from which it depends, or in the
`
`Specification, that demonstrates that the generic computer components—
`
`“code to provide the payment data” and “payment validation system”—
`
`function in an unconventional manner or employ sufficiently specific
`
`programming. Instead, unlike the claims in DDR Holdings, these
`
`limitations, like all the other limitations of the challenged claim, are
`
`“specified at a high level of generality,” which the Federal Circuit has found
`
`to be “insufficient to supply an ‘inventive concept.’” Ultramercial, Inc., 772
`
`F.3d at 716. They merely rely on conventional devices and computer
`
`processes operating in their “normal, expected manner.” OIP Techs., 788
`
`F.3d at 1363 (citing DDR Holdings, 773 F.3d at 1258—59).
`
`On the other hand, the claims at issue in Ultramercial, like the
`
`challenged claim, were also directed to a method for distributing media
`
`products. Instead of conditioning and controlling access to data based on
`payment, as in the challenged claim, the Ultramercial claims condition and
`
`control access based on viewing an advertisement. 772 F.3d at 712. Similar
`
`15
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`to the claims in Ultramercial, the majority of limitations in the challenged
`
`claim comprise this abstract concept of conditioning and controlling access
`
`to data. See id. at 715. Adding routine additional steps such as
`
`communicating with the data supplier, reading payment data, forwarding
`
`payment data, receiving payment validation data, retrieving data from the
`
`data supplier, writing data to a data carrier, and transmitting a portion of the
`
`payment validation data does not transform an otherwise abstract idea into
`
`patent-eligible subject matter. See id. {at 716 (“Adding routine additional
`
`steps such as updating an activity log, requiring a request from the consumer
`
`to View the ad, restrictions on public access, and use of the Internet does not
`
`transform an otherwise abstract idea into patent-eligible subject matter.”).
`
`We are, therefore, persuaded that the challenged claim is closer to the
`
`claims at issue in Ultramercial than to those at issue in DDR Holdings.
`
`c. Patent Owner ’5 Alleged Inventive Concept
`
`To the extent Patent Owner argues the challenged claim includes an
`
`“inventive concept” because of the specific combination of elements in the
`
`challenged claim, we disagree. Specifically, Patent Owner refers to the
`
`following disclosure from the ’598 patent:' “[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.” PO Resp. 8 (quoting Ex. 1001, 5:29—33). Referring to this
`
`disclosure, Patent Owner argues that “[b]y using a system that combines on
`
`the data carrier the digital content, the use rules, and payment data, access
`
`control to the digital content can be continuously enforced prior to access to
`
`the digital conten .” Id. Patent Owner concludes that “[b]y comparison,
`
`16
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`unlike a system as claimed, when a DVD was physically rented for a rental
`
`period, there was no mechanism associated with the DVD to purchase
`
`additional content.” Id. at 8—9.
`
`The concept of storing two different types of information in the same
`
`place or on the same device is an age old practice. For example, storing
`
`names and phone numbers (two different types of information) in the same
`
`place, such as a book, or on a storage device, such as a memory device was
`
`known. That Patent Owner alleges two specific types of information-—
`
`content and the conditions for providing access to the content—are stored in
`
`the same place or on the same storage device does not alter our
`
`determination. The concept was known and Patent Owner has not persuaded
`
`us that applying the concept to these two specific types of information
`
`results in the claim reciting an inventive concept. Furthermore, the prior art
`
`discloses products that could store both the content and conditions for
`
`providing access to the content. See, e. g., Pet. 35 (citing Ex. 1006, 11:25—27
`
`(“The application embeds a digital code in every copy of the Content that
`
`defines the allowable number of secondary copies and play backs”), 37—38
`
`(citing Ex. 1004, Abstract (describing a transportable unit storing both
`
`content and a control processor for controller access to that content)).
`
`Because the concept of combining the content and conditions for providing
`
`access to the content on the same device was known, it does not make the
`
`claim patent eligible under § 101.
`
`d. Preemption
`
`Petitioner argues that the challenged claim “preempts all effective
`
`uses of the abstract idea of enabling limited use of paid-for/licensed
`
`content.” Pet. 27. Patent Owner responds that the challenged claim does not
`
`17
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`result in inappropriate preemption. PO Resp. 12—17. According to Patent
`
`Owner, the challenged claim does not attempt to preempt every application
`
`of the idea, but rather recites a “‘specific way .
`
`.
`
`. that incorporates elements
`
`from multiple sources in order to solve a problem faced by [servers] on the
`
`Internet.’” Id. at 12—13 (citing DDR Holdings, 773 F.3d at 1259). Patent
`
`Owner also asserts that the existence of a large number of non-infringing
`
`alternatives shows that the challenged claim does not raise preemption
`
`concerns. Id. at 15, 17.
`
`Patent Owner’s preemption argument does not alter our § 101
`
`analysis. The Supreme Court has described the “pre-emption concern” as
`
`“undergird[ing] [its] § 101 jurisprudence.” Alice, 134 S. Ct. at 2358. The
`
`concern “is a relative one: how much future innovation is foreclosed
`
`relative to the contribution of the inventor.” Mayo, 132 S. Ct. at 1303.
`
`“While preemption may signal patent ineligible subject matter, the absence
`
`of complete preemption does not demonstrate patent eligibility.” Ariosa
`
`Diagnostics, Inc. v. Sequenom, Inc, 788 F.3d 1371, 1379 (Fed. Cir. 2015).
`
`Importantly, the preemption concern is addressed by the two-part test
`
`considered above. See id. After all, every patent “forecloses .
`
`.
`
`. future
`
`invention” to some extent, Mayo, 132 S. Ct. at 1292, and, conversely, every
`
`claim limitation beyond those that recite the abstract idea limits the scope of
`
`the preemption. See Ariosa, 788 F.3d at 1379 (“The Supreme Court has
`
`made clear that the principle of preemption is the basis for the judicial
`exception to patentability. .
`.
`. For this reason, questions on preemption are
`
`inherent in and resolved by the § 101 analysis”).
`
`The two-part test elucidated in Alice and Mayo does not require us to
`
`anticipate the number, feasibility, or adequacy of non-infringing alternatives
`
`18
`
`
`
`CBM2014-00193
`
`Patent 8,061,598 B2
`
`to gauge a patented invention’s preemptive effect in order to determine
`
`. whether a claim is patent-eligible under § 101. See Pet. Reply 19—22
`
`(arguing that Patent Owner’s position regarding non-infringement and
`
`existence of non-infringing alternatives to the challenged claim are
`
`immaterial to the patent eligibility inquiry).
`
`The relevant precedents simply direct us to ask whether the claim
`
`involves one of the patent-ineligible categories, and, if so, whether
`
`additional limitations contain an “inventive concept” that is “sufficient to
`
`ensure that the claim in practice amounts to ‘significantly more’ than a
`
`patent on an ineligible concept.” DDR Holdings, 773 F.3d at 1255. This is
`
`the basis for the rule that the unpatentability of abstract ideas “cannot be
`
`circumvented
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
