us to. 0V
`Trials
`Tel: 571-272-7822
`
`Paper 46
`Entered: March 30, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner,
`
`V.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-00017
`
`Patent 8,061,598 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`
`Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 US. C. § 328(a) and 37 CFR. § 42. 73
`
`
`Trials
`Tel: 571-272-7822
`
`Paper 46
`Entered: March 30, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner,
`
`V.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-00017
`
`Patent 8,061,598 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`
`Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 US. C. § 328(a) and 37 CFR. § 42. 73
`
`
`
`CBM2015-00017
`
`Patent 8,061,598 B2
`
`A. Background
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”), filed a Corrected Petition to institute
`
`covered business method patent review of claims 1, 2, 7, 15, and 31 of US.
`
`Patent No. 8,061,598 B2 (Ex. 1201, “the ’598 patent”) pursuant to § 18 of
`
`the Leahy-Smith America Invents Act (“AIA”). Paper 9 (“Pet”). We
`
`instituted a covered business method patent review (Paper 22, “Institution
`
`Decision” or “Inst. Dec.”) based upon Petitioner’s assertion that claims 1, 2,
`
`15, and 31 (“the challenged claims”) are directed to patent ineligible subject
`
`matter under 35 U.S.C. § 101. Inst. Dec. 19. Because we had already
`
`instituted a review of claim 7 under § 101 in CBM2014-00193, we declined
`
`to institute a review of claim 7 under this ground in this case. Id. at 16.
`
`Subsequent to institution, Smartflash LLC (“Patent Owner”) filed a
`
`Patent Owner Response (Paper 32, “PO Resp”) and Petitioner filed a Reply
`
`(Paper 34, “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 44 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 CPR. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by a
`
`preponderance of the evidence that claims 1, 2, 15, and 31 of the ”598 patent
`
`are directed to patent ineligible subject matter under 35 U.S.C. § 101.
`
`B. Related Matters and Estoppel
`
`The ’598 patent is the subject of the following district court cases:
`
`Smartflash LLC v. Apple Inc., Case No. 6:13-cv-447 (E.D. Tex. 2014);
`
`Smartflash LLC v. Samsung Electronics C0., Case No. 6:13-cv-448 (E.D.
`
`Tex. 2014); Smartflash LLC v. Google, Inc, Case No. 6:14-cv-435 (E.D.
`
`
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`CBM2015-00017
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`Patent 8,061,598 B2
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`Tex. 2014); Smartflash LLC v. Apple Inc, Case No. 6:15-cv-145 (E.D. Tex.
`
`2015). Paper 43, 4—5.
`
`In a previous covered business method patent review, CBM2014-
`
`00108, we issued a Final Written Decision determining that claim 26 is
`
`unpatentable under 35 U.S.C. § 103. CBM2014-00108, Paper 50.
`
`We also concurrently issue a Final Written Decision in CBM2014-
`
`00193 finding that claim 7 of the ’598 patent is directed to patent-ineligible
`
`subject matter under 35 U.S.C. § 101.
`
`C. The ’598 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. 1201, 1:21—25. Owners of proprietary 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 without fear of data pirates. Id. at 2:11—15.
`
`As described, the portable data storage device is connected to a
`
`terminal for internet access. Id. at 1159—67. The terminal reads payment
`
`information, validates that information, and downloads data into the portable
`
`storage device from a 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 the alleged invention may be implemented in many ways.
`
`
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`CBM2015-00017
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`Patent 8,061,598 B2
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`See, e. g, id. at 25 149—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 Claims
`
`The claims under review are claims 1, 2, 15, and 31 of the ’598 patent.
`
`Claims 1 and 31 are independent, and claims 2 and 15 depend from claim 1.
`
`Claims 1 and 31 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.
`
`Ex. 1201, 25:54—67.
`
`31. A method of controlling access to content data, the
`method comprising:
`
`receiving a data access request from a user for a content
`data item, reading the use status data and one or more use rules
`from parameter memory that pertain to use of the requested
`content data item;
`
`
`
`CBM2015-00017
`
`Patent 8,061,598 B2
`
`evaluating the use status data using the one or more use
`rules to determine whether access to the content data item is
`
`permitted; and
`
`enabling access to the content data item responsive to a
`determination that access to the content data item is permitted.
`
`Id. at 28:18—30.
`
`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 interpretthe 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
`
`The Petition challenges claims 1, 2, 7, 15, and 31 as directed to
`patent-ineligible subject matter under 35 U.S.C. § 101. Pet. 26—38.
`
`According to the Petition, the challenged claims are directed to an abstract
`
`idea without additional elements that transform the claims into apatent-
`
`eligible application of that idea. Id. Patent Owner argues that the
`
`challenged claims are statutory because they are “rooted in computer
`
`technology in order to overcome a problem specifically arising in the realm
`
`of computer networks,” that of “data content piracy.” PO Resp. 1.
`
`
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`CBM2015-00017
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`Patent 8,061,598 B2
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`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. Hulu, LLC, 772 F.3d 709, 713—714 (Fed. Cir.
`
`2014). Here, the challenged claims recite a “machine”—-i.e., a “portable
`
`data carrier” (claim 1)—and a “process”—i.e., a “method” (claim 31)——
`
`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 7., 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, 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 these 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
`
`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
`
`
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`CBM2015-00017
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`Patent 8,061,598 B2
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`(“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 economic 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 claims are directed to the abstract
`
`idea of “paying for and/or controlling access to content.” Pet. 26.
`
`Specifically, Petitioner contends that “[m]ethod claim 31 and device claims
`
`1, 2 and 15 are drawn to the concept of controlling access in that they recite
`
`steps to and ‘code to’ evaluate rules to determine whether access is
`
`permitted.” Id. at 29. Although Patent Owner does not concede, in its brief,
`
`that the challenged claims are 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 44 (transcript of oral hearing),
`
`46:21—47: 11 (Patent Owner arguing that the challenged claims do not cover
`
`an abstract idea, but conceding this argument was not made in the briefs).
`
`We are persuaded that the challenged claims are drawn to a patent-
`
`ineligible abstract idea. Specifically, the challenged claims are directed to
`
`
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`CBM2015-00017
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`Patent 8,061,598 B2
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`performing the fundamental economic practice of conditioning and
`
`controlling access to content (claims 1, 2, 15, and 31). For example, claim 1
`
`recites “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.” Claim 31 recites
`
`“evaluating the use status data using the one or more use rules to determine
`
`whether access to the content data item is permitted” and “enabling access to
`
`the content data item responsive to a determination that access to the content
`
`data item is permitted.”
`
`As discussed above, the ’598 patent discusses addressing recording
`
`industry concerns of data pirates offering unauthorized access to widely
`
`available compressed audio recordings. Ex. 1201, 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 that
`
`data by intemet 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 1:59—2:4. 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 claims are not limited to the Internet. The underlying concept of
`
`the challenged claims, particularly when viewed in light of the Specification,
`
`is paying for and/or controlling access to content, as Petitioner contends. As
`
`
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`CBM2015-00017
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`Patent 8,061,598 B2
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`discussed further below, this is a fundamental economic practice long in
`
`existence in commerce. See Bilski, 561 US. at 611.
`
`We are, thus, persuaded, based on the Specification and the language
`
`of the challenged claims, that claims 1, 2, 15 and 31 of the ’598 patent are
`
`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 that “the Challenged Claims do nothing more than
`
`recite routine, conventional computer functions in implementing an abstract
`
`
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`CBM2015-00017
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`Patent 8,061,598 B2
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`idea.” Pet. Reply 8. We are persuaded that claims 1, 2, 15, and 31 of the
`
`’598 patent do not add an inventive concept sufficient to ensure that 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 the rationale
`
`articulated in the Petition that the additional elements of the challenged
`
`claims are either field of use limitations and/or generic features of a
`
`computer that do not bring the challenged claims within § 101 patent
`
`eligibility. Pet. 30—36.
`
`a. Technical Elements
`
`Petitioner argues that the challenged claims are unpatentable because
`
`they “are directed only to an abstract idea with nothing more than ‘Well-
`
`understood, routine, conventional activity’ added.” Pet. 30—31 (citations
`
`omitted). Patent Owner disagrees, arguing that the challenged claims are
`
`patentable because they recite “specific ways of using distinct memories,
`
`data types, and use rules that amount to significantly more than the
`
`underlying abstract idea.” PO Resp. 11—12 (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 claims, which simply require generic computer
`
`components (e.g., interfaces, memory, program store, and processor). See
`
`Pet. Reply 5—8, 13—14 (citing Ex. 1201, 4:4—5, 16:46—50, 1817—11). With
`
`respect to the “portable data carrier” recited in claim 1, for example, the
`
`10
`
`
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`CBM2015-00017
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`Patent 8,061,598 B2
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`Specification states it may be a generic device such as “a standard smart
`
`card.” Ex. 1201, 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.
`
`Further, the claimed computer code performs generic computer
`
`functions, such as storing, retrieving, receiving, reading, evaluating, and
`
`enabling access to. See Pet. 32—33. The recitation of these generic
`
`computer functions is insufficient to confer specificity. See Content
`
`Extraction and Transmission LLC v. Wells Fargo Bank, Nat ’1 Ass ’n, 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 claims 1, 2, 15, and 31 “recite
`
`specific ways of using distinct memories, data types, and use rules that
`
`amount to significantly more than” paying for and/or controlling access to
`
`content. See PO Resp. 11—12. The challenged claims generically recite
`’9 4‘
`
`several memories, including “content data memory,
`
`use rule memory,” “a
`
`program store,” and “payment data memory,” and generically recite several
`9’
`‘6
`,3 6‘
`
`data types, 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 underlying abstract idea. 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
`
`ll
`
`
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`CBM2015-00017
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`Patent 8,061,598 B2
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`simply discloses these memories and data types with no description of the
`
`underlying implementation or programming. See Content Extraction and
`
`Transmission LLC, 776 F.3d at 1347 (“The concept of data collection,
`
`recognition, and storage is undisputedly well-known. Indeed, humans have
`
`always performed these'functions.”). This recitation of generic computer
`
`memories and data types, being used in the conventional manner, is
`
`insufficient to confer the specificity required to elevate the nature of the
`
`claim into a patent-eligible application. 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).
`
`In addition, because the recited elements can be implemented on a
`
`general purpose computer, the challenged claims do not cover a “particular
`
`machine.” Pet. 38; see Bilski, 561 US. at 604—05 (stating that machine-or-
`
`transformation test remains “a useful and important clue” for determining
`
`whether an invention is patent eligible). And the challenged claims do not
`
`transform an article into a different state or thing. Pet. 38.
`
`Thus, we determine, the potentially technical elements of the
`
`challenged claims 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 claims are directed to statutory subject
`
`12
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`CBM2015-00017
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`Patent 8,061,598 B2
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`matter because the claimed solution is “‘necessarily rooted in computer
`
`technology in order to overcome a problem specifically arising in the realm
`
`of computer networks.’” PO ReSp. 1 (quoting DDR Holdings, LLC v.
`
`Hotelscom, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Patent Owner
`
`contends that
`
`By using a system that combines on the data carrier the digital
`content data item and at least one use rule (claim 1), and “code
`to provide access to the at
`least one content data item in
`accordance with the at least one use rule” (claim 2), or “a content
`access PIN memory store to store a PIN number for controlling
`access to the content data memory” (claim 15), or “evaluating the
`use status data using the one or more use rules to determine
`whether access to the content data item is permitted; and enabling
`access to the content data item responsive to a determination that
`access to the content data item is permitted” (claim 31), access
`control to the digital content data item can be continuously
`enforced prior to access to the digital content data item, allowing
`subsequent use (e.g., playback) of the digital content to be
`portable and disconnected, and additional content can be
`obtained.
`
`Id. at 10—1 1.
`
`Petitioner responds that the challenged claims are distinguishable
`
`from the claims in DDR Holdings. Pet. Reply 9—17. 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 Intemet-centric problem over “the ‘brick and
`
`mortar’ contex ” 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
`
`'13
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`
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`CBM2015-00017
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`Patent 8,061,598 B2
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`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 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 that the challenged claims are 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 claims are “rooted in
`
`computer technology in order to overcome a problem specifically arising in
`
`the realm of computer networks”—that of “data content piracy”—(PO Resp.
`
`1), and “address the technological problem created by the nature of digital
`
`content and the Internet” (id. at 11—12). Data piracy exists in contexts other
`
`than the Internet. See Pet. Reply 10—13 (identifying other contexts in which
`
`data piracy is a problem). For example, data piracy existed in the contexts
`
`14
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`CBM2015-00017
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`Patent 8,061,598 B2
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`of compact discs, the pay TV industry, software data, and DVDs. Id. at 11
`
`(citing Ex. 1219 11 77; Ex. 1201, 59—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”); Ex. 1215, 1:13—23. Further, whatever the
`
`problem, the solution provided by the challenged claims is not rooted in
`specific computer technology, but is based on controlling access based on
`
`payment or rules. See Pet. Reply 11-12 (citing Ex. 1219 11‘“ 37, 75—77; Ex.
`
`1208, Abstract, 4:27—35).
`
`Even accepting Patent Owner’s assertion that the challenged claims
`
`address data piracy on the Internet (PO Resp. 10—12), we are not persuaded
`
`that they do 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 claims and the claims at issue in DDR
`
`Holdings are made clear by comparing the challenged claims of the ’598
`
`patent to claim 19 of the patent at issue in DDR Holdings. For example,
`
`claim 2 of the ’598 patent recites “code to provide access to the at least one
`
`content data item in accordance with the at least one use rule.” There is no
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`language in this claim, in any of the other challenged claims, or in the
`
`specification of the ’598 patent, that demonstrates that the generic'computer
`
`components—“code to provide access” and “content data item” and “use
`
`rule”—function in an unconventional manner or employ sufficiently specific
`3,
`(C
`
`programming. Instead, the “code to provide access,
`
`content data item,”
`
`and “use rule” limitations, for example, like all the other limitations of the
`
`challenged claims, are “specified at a high level of generality,” which the
`
`Federal Circuit has found to be “insufficient to supply an inventive concept.”
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`15
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`Patent 8,061,598 B2
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`Ultramercial, Inc, 772 F.3d at 716. This limitation merely relies 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 claims, were also directed to a method for distributing media
`
`products. Whereas the challenged claims control access to content based on
`
`a use rule or use status data, the Ultramercial claims control access based on
`
`viewing an advertisement. 772 F.3d at 712. Similar to the claims in
`
`Ultramercial, the majority of limitations in the challenged claims comprise
`
`this abstract concept of controlling access to content. See id. at 715. Adding
`3’
`‘6
`)3 6‘
`routine additional hardware, such as “interfaces, memory,
`
`program
`
`store,” and “processor,” and routine additional steps such as receiving an
`
`access request for content, reading use status data and use rules, evaluating
`
`use status data using the use rules, and enabling access to the content 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 claims are closer to
`
`the claims at issue in Ultramercial than to those at issue in DDR Holdings.
`
`c. Patent Owner ’s Alleged Inventive Concept
`
`To the extent Patent Owner argues the challenged claims include an
`
`“inventive concept” because of the specific combination of elements in the
`
`challenged claims, we disagree. Specifically, Patent Owner refers to the
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`16
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`Patent 8,061,598 B2
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`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. 7 (quoting Ex. 1201, 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/use status data, access
`
`control to the digital content can be continuously enforced prior to access to
`
`the digital content.” Id. Patent Owner concludes that
`
`By comparison, unlike a system that uses use rules/use status
`data as claimed, when a DVD was physically rented for a rental
`period, there was no mechanism to write partial use status data
`to the DVD when only part of the DVD had been accessed (e.g.,
`to track whether a renter had “finished with” the DVD yet).
`
`Id. at 7—8.
`
`As Petitioner notes, the concepts of continuous enforcement, and
`
`subsequent, portable, and disconnected use are not recited in the challenged
`
`claims. Pet. Reply 6 n.2. We additionally note that none of the challenged
`
`claims recite “partial use status data.” Moreover, 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 payment data—
`
`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
`
`17
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`Patent 8,061,598 B2
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`discloses products that could store both the content and conditions
`
`(including payment validation) for providing access to the content. See, e. g.,
`
`Pet. 7—8 (citing Ex. 1216); Ex. 1216, 10:24—30 (describing “a rental product
`
`.
`
`.
`
`. formatted to include a time bomb or other disabling device which will
`
`disable the product at the end of the rental period”); see also Pet. 40 (citing
`
`Ex. 1212); Ex. 1212, Abstract (describing “[a] system for controlling use
`
`and distribution of digital works .
`
`.
`
`. the owner of a digital work attaches
`
`usage rights to that work”). To the extent Patent Owner argues that the
`
`challenged claims cover storing, on the same device, both content and a
`
`particular type of condition for providing access to content or information
`
`necessary to apply that condition (e.g., continuous enforcement of access to
`
`the digital content and purchase of additional content (PO Resp. 10—11)), we
`
`I do not agree that this, by itself, is sufficient to elevate the challenged claims
`
`to patent-eligible subject matter. Because the concept of combining the
`
`content and conditions for providing access to the content on the same
`
`device was known, claiming a particular type of condition does not make the
`
`claim patent eligible under § 101.
`
`d. Preemption
`
`The Petition states that the “broad filnctional nature [of the challenged
`
`claim] firmly triggers preemption concerns.” Pet. 36. Patent Owner
`
`responds that the challenged claims do not result in inappropriate
`
`preemption. PO Resp. 13—20. According to Patent Owner, the challenged
`
`claims do 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 13
`
`(citing DDR Holdings, 773 F.3d at 1259). Patent Owner also asserts that the
`
`18
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`Patent 8,061,598 B2
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`existence of a large number of non-infringing alternatives shows that the
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`challenged claims do not raise preemption concerns. Id. at 18—20.
`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
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`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 .
`
`.
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`. future
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`invention” to some extent, Mayo, 132 S. Ct. at 1292, and, conver
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