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
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2014-001121
`Patent 7,942,317 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M. PLENZLER, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`1 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 Petitions to institute covered
`
`business method patent review of claims 1, 6–8, 12–14, 16, and 18 (“the
`
`challenged claims”) of U.S. Patent No. 7,942,317 B2 (Ex. 1001, “the ’317
`
`patent”) pursuant to § 18 of the Leahy-Smith America Invents Act (“AIA”).
`
`CBM2014-00112 (Paper 2, “112 Pet.”) and CBM2014-00113 (Paper 2, “113
`
`Pet.”).2 On September 30, 2014, we consolidated CBM2014-00112 and
`
`CBM2014-00113 and instituted a transitional covered business method patent
`
`review (Paper 7, “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:
`
`Reference[s]3
`
`Basis
`
`Claims Challenged
`
`Stefik ’2354 and Stefik ’9805
`
`§ 103(a)
`
`Ginter6
`
`§ 103(a)
`
`1, 6–8, 12, 13, 16,
`and 18
`1, 6–8, 12, 13, 16,
`and 18
`
`Dec. 22. Petitioner provides declarations from Anthony J. Wechselberger
`
`(“Wechselberger Decl.”) in support of its petitions. 112 Ex. 1021; 113 Ex. 1121.
`
`
`2 Unless otherwise specified, hereinafter, paper numbers refer to paper numbers in
`CBM2014-00112.
`3 Exhibits with numbers 1001–1029 were filed in CBM2014-00112 and
`those with numbers 1101–1129 were filed in CBM2014-00113. For
`purposes of this decision, where the two cases have duplicate exhibits, we
`refer to the exhibit filed in CBM2014-00112.
`4 U.S. Patent No. 5,530,235 (June 25, 1996) (Ex. 1013, “Stefik ’235”).
`5 U.S. Patent No. 5,629,980 (May 13, 1997) (Ex. 1014, “Stefik ’980”).
`6 U.S. Patent No. 5,915,019 (June 22, 1999) (Ex. 1015, “Ginter”).
`
`2
`
`

`
`CBM2014-00112
`Patent 7,942,317 B2
`
`Subsequent to institution, Patent Owner filed 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 was held on July 7, 2015, and a transcript of the hearing is
`
`included in the record (Paper 47, “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 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by a
`
`preponderance of the evidence that claims 1, 6–8, 12, 13, 16, and 18 of the ’317
`
`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 systems for 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 make proprietary data available over the internet
`
`without authorization. Id. at 1:38–51. The ’317 patent describes providing
`
`portable data storage together with a means for conditioning access to that data
`
`upon validated payment. Id. at 1:55–2:3. This combination allows data owners to
`
`make their data available over the internet without fear of data pirates. Id. at 2:3–
`
`11.
`
`As described, the portable data storage device is connected to a terminal for
`
`internet access. Id. at 1:55–63. The terminal reads payment information, validates
`
`that information, and downloads data into the portable storage device from a data
`
`3
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`

`
`CBM2014-00112
`Patent 7,942,317 B2
`
`supplier. Id. The data on the portable storage device can be retrieved and output
`
`from a mobile device. Id. at 1:64–67.
`
`The ’317 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.”).
`
`C.
`
`Related Matters
`
`The parties indicate that Smartflash has sued Apple for infringement of the
`
`’317 patent and identify 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 Papers 4, 5.
`
`Patent Owner indicates 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 numerous other Petitions for covered business method patent review
`
`challenging claims of patents owned by Smartflash and disclosing similar subject
`
`matter.
`
`D.
`
`The Instituted Claims
`
`We instituted 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 depends from claim 12. Claims 1 and 8 are illustrative of the
`
`claims at issue and recite the following:
`
`A computer system for providing data to a data requester,
`1.
`the system comprising:
`
`a communication interface;
`
`a data access data store for storing records of data items available from the
`system, each record comprising a data item description and a pointer to a data
`provider for the data item;
`
`4
`
`

`
`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 communications interface payment data comprising
`data relating to payment for the requested data item;
`
`code responsive to the request and to the received payment data, to read data
`for the requested data item from a content provider; and
`
`code to transmit the read data to the requester over the communications
`interface.
`
`Ex. 1001, 25:55–26:8.
`
`8.
`
`A method of providing data to a data requester comprising:
`
`receiving a request for a data item from the requester;
`
`receiving payment data 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.
`
`Id. at 26:36–43.
`
`II.
`
`EVIDENTIARY MATTERS
`
`A. Wechselberger Declarations
`
`In its Response, Patent Owner urges that the 112 and 113 Wechselberger
`
`declarations should be given little 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 Owner did not offer any evidence
`
`that Mr. Wechselberger “used incorrect criteria, failed to consider evidence, or is
`
`5
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`

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`CBM2014-00112
`Patent 7,942,317 B2
`
`not an expert in the appropriate field.” Dec. 4 n.9. Patent Owner renews its
`
`contention arguing that because Mr. Wechselberger’s declarations do not state the
`
`evidentiary weight standard that he used in arriving at his conclusions, he “‘used
`
`incorrect criteria.’” PO Resp. 5. Referring to excerpts from Mr. Wechselberger’s
`
`deposition, Patent Owner contends that he “could neither articulate what the
`
`difference was between ‘substantial evidence’ and ‘preponderance of the
`
`evidence,’ nor could he articulate which standard he was supposed to use when
`
`alleging invalidity of claims in a patent.” Id. at 5–7. Thus, concludes Patent
`
`Owner, we can only afford little or no weight to his testimony, otherwise we would
`
`be accepting his opinion without knowing “‘the underlying facts . . . on which the
`
`opinion is based’ (i.e., how much evidence he thinks show any of his opinions
`
`discussed therein).” Id. at 7.
`
`In its Reply, Petitioner argues that “Mr. Wechselberger is 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 Owner has not articulated a persuasive reason for giving Mr.
`
`Wechselberger’s declarations, as a whole, little or no weight in our analysis.
`
`Patent Owner has not cited any authority requiring an expert to recite or apply the
`
`“preponderance of 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 of the
`
`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
`
`6
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`

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`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 contends that “Dr. Katz’s unsupported opinions, to the extent that
`
`they are given any weight at 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 under either 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 about that technology,” and he repeatedly stated
`
`that “he was ‘not sure’ how a POSITA would interpret several passages of the
`
`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 and is 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 of the
`
`prior art.” Id. at 20.
`
`We decline to make a determination as to Dr. Katz’s testimony as a whole.
`
`As noted above, we have the 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 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.
`
`7
`
`

`
`CBM2014-00112
`Patent 7,942,317 B2
`
`III. ANALYSIS
`
`A. Claim Construction
`
`We construe 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
`
`purposes of this Final Written Decision, we additionally expressly construe
`
`“payment data.”
`
`“payment data”
`
`Petitioner asserts that “[f]or review purposes, [payment data] is construed to
`
`mean ‘data representing payment made for requested content data’ and is distinct
`
`from ‘access control data.’” 112 Pet. 17; 113 Pet. 22 (emphasis added). Patent
`
`Owner disagrees, arguing that the term “payment data” should be interpreted to
`
`mean “data that can be used to make payment for content.” PO Resp. 8 (emphasis
`
`added).
`
`Although Petitioner and Patent Owner disagree on the proper broadest
`
`reasonable construction of the term “payment data,” both proposed constructions
`
`incorporate an element of timing. The main dispute between the parties is the
`
`8
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`

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`CBM2014-00112
`Patent 7,942,317 B2
`
`timing of “payment data.” For example, Petitioner argues that the ’317 patent’s
`
`definition of the term “encompasses data 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 may either be data relating to an actual
`payment made to the data supplier, or it may be a record of a 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
`
`“payment data” exists prior to the payment operation, i.e., “used for making a
`
`payment.” PO Resp. 8–9. In support of its argument that “‘payment data’ is used
`
`for making a payment,” Patent Owner refers to the following disclosure from the
`
`Specification7: “[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.” Id. (citing Ex. 1001, 20:59–62).
`
`We are persuaded that the broadest reasonable interpretation of the term
`
`“payment data,” encompasses both Petitioner’s and Patent Owner’s definitions of
`
`the term. As used in the ’317 patent, “payment data” encompasses data relating to
`
`future, current, and past payments. In other words, we are persuaded that the ’317
`
`patent does not incorporate an element of timing into the definition of payment
`
`data. First, the plain and ordinary meaning of the two words that make up the
`
`term—“payment” and “data”—do not incorporate any notion of time and nothing
`
`about their combination changes that determination.
`
`
`7 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.
`
`9
`
`

`
`CBM2014-00112
`Patent 7,942,317 B2
`
`Second, the ’317 patent specification supports “payment data” representing
`
`data existing prior to, concurrent with, and after payment of the requested content.
`
`For example, the ’317 patent states that “payment data for making a payment to the
`
`system owner is received from the smart Flash card by the content access terminal
`
`and forwarded to an e-payment system.” Ex. 1001, 20:59–62. We agree with
`
`Patent Owner that this language indicates that payment data exists prior to the
`
`payment being made for 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 made to the data supplier, or it may be a
`
`record of a payment made to an e-payment system,” (Ex. 1001, 6:57–60) clearly
`
`shows that “payment data,” includes data for payments that have already been
`
`made. See Pet. Reply 3–4.
`
`Moreover, the plain and ordinary meaning of data does not allow for it to
`
`change character based on when it is used in a transaction. For example, a credit
`
`card number is “data relating to payment” before the number is processed, while
`
`the number is being processed, and after the number is 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 presume that “payment
`
`data” retains the same meaning before, during, and after the payment operation.
`
`Neither party points to any such contrary description.
`
`Indeed, the ’317 patent describes “payment data” in several instances as data
`
`relating to payment for 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 patent is “data relating to payment for 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 over the 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 was likely 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 during the trial, our
`
`determination remains unchanged.
`
`1. Overview of Stefik ’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 documents stored therein,
`
`interfacing to external devices for reading and writing digital information, and
`
`allowing a user to directly interact with the DocuCard. Ex. 1013, 2:29–40, 7:35–
`
`42.
`
`2. Overview of Stefik ’980 (Ex. 1014)
`
`Stefik ’980 teaches a “repository” for storing digital works, controlling
`
`access to digital works, billing for access to digital works and maintaining the
`
`security and integrity of the system. Ex. 1014, 6:57–61.
`
`11
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`

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`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 argument and agree that
`
`Petitioner has shown sufficiently that Stefik8 teaches these limitations. See 112
`
`Pet. 28–77. We turn now to the disputed limitations.
`
`“payment data”
`
`
`
`Claims 8, 12, and 18
`
`Patent Owner contends that 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 payment for 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 of payment data provided from
`
`the data carrier to the electronic payment system.” Claim 18 recites “receiving
`
`payment data from the requester relating to payment for the requested data” and
`
`“outputting payment data to a payment system for distributing the payment for the
`
`requested data.” (emphasis added).
`
`Petitioner contends that Stefik teaches the claimed “payment data” because
`
`Stefik describes “reporting transaction information and fees to a credit server or
`
`billing clearinghouse.” 112 Pet. 71–72, 75. For example, Setfik describes
`
`“generat[ing] billing information for the access which is transmitted to a credit
`
`
`8 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 Owner not 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.
`
`12
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`

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`CBM2014-00112
`Patent 7,942,317 B2
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`server” (Ex. 1014, 7:33–36) and explains that “[f]or the most part, billing
`
`transactions are well understood in the state of the art” (id. at 29:58–64). 112 Pet.
`
`71–72; Pet. Reply 8. Stefik further describes that “[t]he user on the DocuCard now
`
`uses the user interface to assign payment of any fees associated with the
`
`transaction to be executed” (Ex. 1013, 6:66–7:1) and “[t]his logging in process
`
`may also activate credit accounts” (id. at 6:60–65). 112 Pet. 24, 42–43; Pet. Reply
`
`8. We are persuaded by Petitioner’s position that Stefik teaches “payment data,”
`
`which we construe as “data relating to payment for the requested data item.”
`
`Patent Owner contends that “payment data” is not rendered obvious by
`
`Stefik. PO Resp. 14–15. In support, however, Patent Owner refers to Petitioner’s
`
`contentions regarding the limitation reciting “an electronic payment system for
`
`confirming an electronic payment,” not Petitioner’s contentions regarding
`
`“payment data.” Id. at 14 (citing 1129 Pet. 55–56). Moreover, Patent Owner
`
`summarily states that Stefik “is still discussing post-usage processing,” and
`
`concludes that because Petitioner has adopted an incorrect interpretation of
`
`“payment data,” the 112 Petition has not shown that “payment data” is rendered
`
`obvious by Stefik. PO Resp. 15. At the hearing, Patent Owner conceded that if we
`
`do not adopt its construction of “payment data” and instead adopt Petitioner’s
`
`construction, it has no remaining argument as to why Stefik does not teach
`
`“payment data.” Tr. 77:10–78:14. We adopt an even broader construction of
`
`“payment data” than that proposed by Petitioner. Our construction of “payment
`
`data” does not including a timing component, and Patent Owner’s argument is
`
`based on the timing of payment data. PO Resp. 14–15. Thus, Patent Owner has
`
`not persuaded us that Stefik does not teach “payment data.”
`
`
`9 We also note that Patent Owner erroneously refers to the 113 Petition, which
`discusses Ginter. PO Resp. 14.
`
`13
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`CBM2014-00112
`Patent 7,942,317 B2
`
`“pointer to a data provider for the data item” and “resource locator identifying a
`data provider”
`
`Claims 1, 6, 7, and 16
`
`Patent Owner contends that claims 1, 6, 7, and 16 would not have been
`
`obvious over Stefik. PO Resp. 10–13. Independent claim 1, and thus claims 6 and
`
`7, based on their dependency from claim 1, recite “a data access data store for
`
`storing records of data items available from the system, each record comprising a
`
`data item description and a pointer to a data provider for the data item.” Similarly,
`
`independent claim 16 recites “a data access data store for storing records of data
`
`items available from the system, each record comprising a data item description
`
`and a resource locator identifying a data provider for the data item.”
`
`Stefik discloses that the file information for a “document,” i.e., data, is
`
`comprised of a “‘contents file’ and a ‘description file.’” Ex. 1013, 7:35–36; see
`
`Ex. 1014, 9:21–23. The “contents file” contains the documents, which are stored
`
`on a “DocuCard.” Ex. 1013, 6:10, 7:19–20; see Ex. 1014, 14:37–38. “The
`
`‘contents’ file is a stream of addressable bytes.” Ex. 1013, 6:36–38; see Ex. 1014,
`
`9:23–26. For example, a document is stored starting at a relative address of 0.
`
`Ex. 1013, 7:42–55, Fig. 4; Ex. 1014, 9:34–46, Fig. 5.
`
`Stefik states that the descriptor file contains “a pointer to the document in
`
`the content part.” Ex. 1013, 7:35–58, Fig. 4; see Ex. 1014, 9:21–49, Fig. 5.
`
`Specifically, as Petitioner argues (Pet. Reply 5–7), Stefik teaches that the
`
`description tree [i.e., description file] is comprised of “descriptor blocks (d-
`
`blocks),” wherein “d-block 500 includes an identifier 501” and “a starting address
`
`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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`39:14–40:8. Identifier 501 is comprised of a “unique number assigned 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.
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`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 descriptor file.
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`112 Pet. 33, 69 (claim chart for claim 16 referring to claim 1). According to
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`Petitioner, Stefik’s “pointers” (i.e., descriptor blocks) identify the device (i.e., the
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`data provider) where content is stored, which can be stored separately from the
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`descriptor file, 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 contends that the pointer
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`points to the location of the first bits that make up the data item).
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`We determine that Petitioner has shown by a preponderance of the 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
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`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
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`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 store stores records comprising location data comprising one or
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`more pointers to a location(s) where the data item can be downloaded).
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`Patent Owner contends that the various citations 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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`acknowledges that Stefik’s descriptor file contains “a pointer to the document in
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`the content part,” but asserts that “this is a pointer to the content part 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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`provider for the data item.” PO Resp. 12–13 (citing Ex. 1013, 7:35–42). Patent
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`Owner’s argument is 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 number assigned to the DocuCard where the 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–
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`40:8. Furthermore, Patent Owner’s contention that Stefik’s descriptor blocks “are
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`pointers to other d-blocks in the description file” (PO Resp. 13) is not consistent
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`with Stefik’s disclosure. See Ex. 1013, 7:60–67; Ex. 1014, 9:52–58.
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`Accordingly, we are persuaded that Stefik’s descriptor block teaches the
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`claimed “pointer” and “resource locator” of claims 1 and 16, respectively. For the
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`same reasons, we determine that Stefik teaches the claimed “pointer” of dependent
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`claims 6 and 7.
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`C. Obviousness over Ginter
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`Petitioner contends that 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
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`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 concluding that
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`Petitioner was likely 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 of Ginter (Ex. 1015)
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`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
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`The parties focus on only one claim limitation. For the remaining
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`limitations, we have reviewed Petitioner’s evidence and argument and agree that
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`Petitioner has shown sufficiently that Ginter teaches these limitations. See 113 Pet.
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`40–78. We turn now to the disputed limitation.
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` “payment data”
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`
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`Patent Owner contends that claims 1, 6–8, 12, 13, 16, and 18 would not have
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`been obvious over Ginter. PO Resp. 16–20. Each of these claims recites “payment
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`data,” either explicitly or implicitly based on the dependency of the claim. For
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`example, claim 1 recites “code to receive from the communications interface
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`payment data comprising data relating to payment for the requested data item” and
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`“code responsive to the request [for a data item] and to the received payment data,
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`to read data for the requested data item from a content provider.” As noted above,
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`we construe “payment data” as “data relating to payment for the requested data
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`item.”
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`
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`In its Petition, Petitioner refers to Ginter’s disclosure of “audit information”
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`and “real-time debits from bank accounts” as teaching the claimed “payment data.”
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`See e.g., 113 Pet. 44–45 n.16 (citing Ex. 1015, 63:34–41), 54, 73. Petitioner
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`further contends that to the extent Ginter’s audit information does not relate to
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`payment for a currently-requested content object, Ginter renders this obvious. 113
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`Pet. 45 n.16. In support, Petitioner refers to Ginter’s disclosure of paying for
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`content with “real-time debits from bank accounts” and argues that a skilled artisan
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`would have found it “obvious to apply Ginter’s teaching of using audit information
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`as payment data to a real-time transaction in order to reflect payment for a
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`currently–requested [content].” Pet. 45 n.16 (citing Ex. 1015, 63:34–41); Tr.
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`16:24–17:4.
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`In its Response, Patent Owner argues that “audit information is for tracking
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`post-usage information, not current purchase information.” PO Resp. 19. In
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`support, Patent Owner refers to Ginter’s disclosure that “‘the clearinghouse may
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`analyze the contained audit information to determine whether it indicates misuse of
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`the applicable [content],’” which Patent Owner argues indicates that the tracked
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`usage has already occurred. Id. (citing Ex. 1015, cols. 161 and 162). Patent
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`Owner also contends that changing “from post-usage tracking to pre-purchase
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`processing would change the principle upon which Ginter works, which indicates
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`nonobviousness.” Id. (citation omitted); Tr. 82:18–23, 84:1–5, 85:23–87:3.
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`Patent Owner’s responsive arguments do not dispute that the audit
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`information is “data representing payment for . . . requested content data,” which is
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`the basis for Petitioner’s contentions. See e.g., 113 Pet. 44–45 n.16 (citing Ex.
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`1015, 63:34–41), 54, 73. Patent Owner’s arguments are focused solely on the
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`timing of the audit information (i.e., the timing of usage in relation to when
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`payment is made) in Ginter. See PO Resp. 18–20 (“in the context of Ginter, the
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`audit information is for tracking post-usage information, not current purchase
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`information”).
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`Moreover, in its Reply, Petitioner refers to Ginter’s disclosure of
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`“‘prepayments, credits, [and] real-time debits’” and argues that Ginter expressly
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`teaches that “payment is made before content access or usage is allowed.” Pet.
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`Reply 13 (citing Ex. 1015, 63:34–41); see also Pet. Reply 14–15 (citing Ex. 1015,
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`Fig. 44A, 44B, 179:27–36, 179:57–60, 270:19–22, 270:33–36, 281:37–39).
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`We determine that Petitioner ha