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 CBM2014-001921
`Patent 8,033,458 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`1 CBM2015-00119 (Patent 8,033,458 B2) has been consolidated with this
`proceeding.
`
`

`
`CBM2014-00192
`Patent 8,033,458 B2
`
`INTRODUCTION
`
`A. Background
`Samsung Electronics America, Inc., Samsung Electronics Co., Ltd.,
`and Samsung Telecommunications America, LLC (“Samsung”)2 filed a
`Petition to institute covered business method patent review of claim 11 (the
`“challenged claim”) of U.S. Patent No. 8,033,458 B2 (Ex. 1001, “the ’458
`patent”) pursuant to § 18 of the Leahy-Smith America Invents Act (“AIA”).3
`Paper 2 (“Pet.”). On April 2, 2015, we instituted a transitional covered
`business method patent review (Paper 7, “Institution Decision” or “Inst.
`Dec.”) based upon Petitioner’s assertion that claim 11 is directed to patent
`ineligible subject matter under 35 U.S.C. § 101. Inst. Dec. 18.
`On April 30, 2015, Apple Inc. (“Apple”) filed a Petition to institute
`covered business method patent review of claim 11 of the ’458 patent based
`on the same ground. CBM2015-00119 (Paper 2, “Apple Pet.”). Apple
`simultaneously filed a “Motion for Joinder” of their newly filed case with
`Samsung’s previously instituted case. CBM2015-00119 (Paper 3, “Apple
`Mot.”). On August 6, 2015, we granted Apple’s Petition and consolidated
`the two proceedings.4 Paper 29; CBM2015-00119, Paper 11.
`Subsequent to institution, Smartflash LLC (“Patent Owner”) filed a
`Patent Owner Response (Paper 21, “PO Resp.”)5 and Samsung and Apple
`
`
`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 Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011).
`4 For purposes of this decision, we will cite only to Samsung’s Petition.
`5 Paper 21 is the redacted version of the Patent Owner Response. Paper 20
`is the unredacted version of that Response.
`
`2
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`CBM2014-00192
`Patent 8,033,458 B2
`
`(collectively, “Petitioner”) filed a Reply (Paper 28, “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 (“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 claim 11 of the ’458 patent is directed to
`patent ineligible subject matter under 35 U.S.C. § 101.
`B. The ’458 Patent
`The ’458 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 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 ’458 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 1:59–67. 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.
`
`3
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`Patent 8,033,458 B2
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`The ’458 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. Challenged Claims
`Petitioner challenges claim 11, which depends from independent
`claim 6. Claims 6 and 11 are reproduced below:
`6. A data access device for retrieving stored data from
`a data carrier, the device comprising:
`a user interface;
`a data carrier interface;
`a program store storing code implementable by a
`processor; and
`a processor coupled to the user interface, to the data
`carrier interface and to the program store for
`implementing the stored code, the code comprising:
`code to retrieve use status data indicating a use
`status of data stored on the carrier, and use rules
`data indicating permissible use of data stored on
`the carrier;
`code to evaluate the use status data using the use
`rules data to determine whether access is
`permitted to the stored data; and
`code to access the stored data when access is
`permitted.
`
`Id. at 27:8–23.
`11. A data access device according to claim 6 wherein
`said use rules permit partial use of a data item stored on
`the carrier and further comprising code to write partial
`use status data to the data carrier when only part of a
`stored data item has been accessed.
`
`4
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`CBM2014-00192
`Patent 8,033,458 B2
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`Id. at 28:14–18.
`
`ANALYSIS
`
`A. Claim Construction
`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 C.F.R. § 42.300(b). Applying that standard, we interpret the claim terms
`of the ’458 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 11 as directed to patent-ineligible subject
`matter under 35 U.S.C. § 101. Pet. 19–35. Petitioner submitted a
`declaration from Jeffrey Bloom, Ph.D. in support of its Petition. Ex. 1003
`(“Bloom declaration”)6.
`Patent Owner contends that the challenged claims are patent-eligible.
`
`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
`
`
`6 In its Response, Patent Owner argues that the Bloom declaration should be
`given little or no weight. PO Resp. 3–6. Because Patent Owner has filed a
`Motion to Exclude that includes a request to exclude the Bloom 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, discussed below.
`
`5
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`matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713–14 (Fed. Cir.
`2014). Here, the challenged claim recites a “machine,” i.e., a “data access
`device.” 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 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 of human 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 conceptual framework for organizing
`information . . . .” (emphasis added)). This is similar to the Supreme Court’s
`formulation in Bilski v. Kappos, 561 U.S. 593, 611 (2010) (emphasis added),
`noting that the concept of risk hedging is “a fundamental economic practice
`
`6
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`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 “regulating authorized use of information.” Pet. 22. 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. 9–25; see also Tr. 46:21–47:11
`(Patent Owner arguing that the challenged claims are not abstract ideas, but
`conceding this argument was not made in the briefs).
`We agree that the challenged claim is drawn to a patent-ineligible
`abstract idea. Specifically, the challenged claim is directed to conditioning
`and controlling access to content (which is analogous to the characterization
`of the abstract idea proposed by Petitioner). For example, claim 6 (from
`which claim 11 depends) recites “code to evaluate the use status data using
`the use rules data to determine whether access is permitted to the stored
`data” and “code to access the stored data when access is permitted” and
`
`7
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`Patent 8,033,458 B2
`
`claim 11 recites “code to write partial use status data” and that “wherein said
`use rules permit partial use of a data item.”7
`As discussed above, the ’458 patent discusses addressing recording
`industry concerns of data pirates offering unauthorized access to widely
`available compressed audio recordings. Ex. 1001, 1:20–55. The ’458 patent
`proposes to solve this problem by restricting access to data on a device based
`upon satisfaction of use rules linked to payment data. Id. at 9:7–25. The
`’458 patent makes clear that the claimed subject matter is directed to paying
`for data and providing access to data. See id. at 2:20–23 (“This invention is .
`. . particularly . . . relate[d] . . . to computer systems for providing access to
`data.”). Although the specification discusses data piracy on the Internet (see
`id. at 1:29–39), the challenged claims are not limited to the Internet. The
`underlying concept of the challenged claims, particularly when viewed in
`light of the ’458 patent specification, is controlling access to content, as
`Petitioner contends. As discussed further below, this is a fundamental
`economic practice long in existence in commerce. See Bilski, 561 U.S. at
`611.
`
`We are, thus, persuaded, based on the ’458 patent specification and
`the language of the challenged claim, that claim 11 is directed to an abstract
`idea. See Alice, 134 S. Ct. at 2356 (holding that the concept of
`
`
`7 Although our final decision in CBM2015-00016 determined claim 11 to be
`indefinite, that determination does not prevent us from determining whether
`claim 11 is patent-eligible under § 101. For example, the determination that
`claim 11 is indefinite was based on the uncertainty as to whether “said use
`rules” in claim 11 refers to the “use rule data” recited in claim 6 or a new
`“use rule” limitation. Neither interpretation saves the claim from being
`directed to an abstract idea. Nor does either interpretation involve an
`inventive concept, as discussed below.
`
`8
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`
`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 ’458 patent . . . cover nothing
`more than the basic financial idea of enabling limited use of paid for and/or
`licensed content using ‘conventional’ computer systems and components.”
`Pet. Reply 11 (quoting Ex. 1003 ¶ 126). Petitioner persuades us that claim
`11 of the ’458 patent does 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
`
`9
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`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 claims are generic features of a computer that do not bring the
`challenged claim within § 101 patent eligibility. Pet. 23–29; Pet. Reply 11–
`20.
`
`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 ’458 patent itself as “both ‘conventional’ and as
`being used ‘in a conventional manner.’” Pet. 23 (citing Ex. 1001, 4:4–5,
`16:46–49, 21:33–38)). 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. 15–16 (quoting Ex. 2049, 19). We
`agree with Petitioner for the following reasons.
`The specification of the ’458 patent treats as well-known all
`potentially technical aspects of the claims, which simply require generic
`computer components (e.g., interfaces, program store, and processor). The
`linkage of existing hardware devices to existing supplier-defined access
`rules appear to be “‘well-understood, routine, conventional activit[ies]’
`previously known to the industry.” Alice, 134 S. Ct. at 2359; Mayo,
`132 S. Ct. at 1294.
`
`10
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`Patent 8,033,458 B2
`
`Further, the claimed computer code simply performs generic
`computer functions, such as retrieving, accessing, evaluating, and writing.
`See Pet. 23–29. The recitation of these generic computer functions is
`insufficient to confer specificity. See Content Extraction and Transmission
`LLC v. Wells Fargo Bank, 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 11 “recite[s] specific ways
`of using distinct memories, data types, and use rules that amount to
`significantly more than the underlying abstract idea.” See PO Resp. 15. The
`challenged claim does not recite any particular or “distinct memories.” To
`the extent Patent Owner argues that the claimed “program store” recited in
`claim 6 is a memory, Patent Owner does not provide any argument as to how
`it is constructed or implemented in an unconventional manner. Moreover,
`the challenged claim lists several generic data types, such as “use status
`data,” “use rules data,” and “code.” We are not persuaded that the listing of
`these data types, by itself, amounts to significantly more than the underlying
`abstract idea. Patent Owner does not point to any inventive concept in the
`’458 patent related to the way these data types are constructed or used. The
`recitation of generic 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.’”)
`
`11
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`CBM2014-00192
`Patent 8,033,458 B2
`
`(brackets in original). In addition, the ’458 patent simply recites data types
`with no description of the underlying implementation or programming that
`results in these data types. 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.”).
`In addition, because the recited elements can be implemented on a
`general purpose computer, the challenged claim does not cover a “particular
`machine.” Pet. 31–33; see Bilski, 561 U.S. 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 claim does not
`transform an article into a different state of thing. Pet. 33–35.
`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.
`To the extent Patent Owner argues that the challenged claim includes
`an “inventive concept” because of the specific combination of elements in
`the challenged claim, we disagree. Patent Owner contends that
`[b]y using a system that combines on the data carrier both the
`digital content and use rules/use status data, and by using “code
`to evaluate the use status data using the use rules data to
`determine whether access is permitted to the stored data” and
`“code to access the stored data when access is permitted,” 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.
`
`12
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`Patent 8,033,458 B2
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`PO Resp. 11. Patent Owner further contends that “the claimed data access
`terminals enable the tracking of partial use of a stored data item (e.g., so that
`the rest can be used/played back later)” and
`[b]y 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.
`
`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.8 See, e.g., Pet. 40–41 (citing Ex. 1004,
`Abstract (describing a transportable unit storing both content and a control
`processor for controller access to that content)); Pet. 46 (citing Ex. 1005,
`
`
`8 We have already determined in a final written decision on the ’458 patent,
`addressing claim 6 from which claim 11 depends, that the concept of
`combining the content and conditions for providing access to the content on
`the same device was known. See Case CBM2015-00016, Paper 56, 13–14.
`
`13
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`6:58–61 (“Among other things, repositories are used to store digital works,
`control access to digital works, bill for access to digital works and maintain
`the security and integrity of the system); see also Ex. 1005, 18:9–16
`(“Defining usage rights in terms of a language in combination with the
`hierarchical representation of a digital work enables the support of a wide
`variety of distribution and fee schemes. An example is the ability to attach
`multiple versions of a right to a work. So a creator may attach a PRINT
`right to make 5 copies for $10.00 and a PRINT right to make unlimited
`copies for $100.00. A purchaser may then choose which option best fits his
`needs.”). To the extent Patent Owner argues that the challenged claim
`covers 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., “track[ing] whether a renter had ‘finished with’ the
`DVD yet” (PO Resp. 11)), we remain unpersuaded that the claim recites an
`inventive concept. 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.
`
`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 claims are rooted in computer technology in order to
`overcome a problem specifically arising in the realm of computer networks.”
`PO Resp. 12 (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
`1245, 1257 (Fed. Cir. 2014)). Patent Owner contends that the challenged
`
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`claim is “directed to particular devices that can download and store digital
`content into a data carrier.” Id. at 11. Patent Owner contends that
`[b]y using a system that combines on the data carrier both the
`digital content and use rules/use status data, and by using “code
`to evaluate the use status data using the use rules data to
`determine whether access is permitted to the stored data” and
`“code to access the stored data when access is permitted,” 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.
`
`Id.
`
`Petitioner responds that the challenged claim is distinguishable from
`the claims in DDR Holdings. Pet. Reply 18–20. 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
`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,
`
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`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 claims “are
`rooted in computer technology in order to overcome a problem specifically
`arising in the realm of computer networks—that of digital data piracy” and
`“address . . . a challenge particular to the Internet.” PO Resp. 12. 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,
`potential data piracy of CDs is addressed by copyright protection. See Ex.
`1001, 5:9–12 (“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 technology. See Pet. Reply 14–16.
`Even accepting Patent Owner’s assertion that the challenged claim
`addresses data piracy on the Internet (PO Resp. 11), we are not persuaded
`that it does so by achieving a result that overrides the routine and
`
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`conventional use of the recited devices and functions. In fact, the
`differences between the challenged claim and the claim at issue in DDR
`Holdings are made clear by Patent Owner in its tables mapping claims 6 and
`11 of the ’458 patent to claim 19 of the patent at issue in DDR Holdings. PO
`Resp. 13–15. Patent Owner compares the limitation highlighted by the
`Federal Circuit in DDR Holdings with the “code to access the stored data
`when access is permitted” in claim 6.9 Id. Patent Owner, however, fails to
`identify how this limitation in claim 6 is analogous to the corresponding
`DDR Holdings limitation. Unlike the claims in DDR Holdings, this
`limitation, like all the other limitations of the challenged claim, is “specified
`at a high level of generality,” which the Federal Circuit has found to be
`“insufficient to supply an ‘inventive concept.’” Ultramercial, 772 F.3d at
`716. The limitations of the challenged claim 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).
`The challenged claim is like the claims at issue in Ultramercial. The
`Ultramercial claims condition and 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 claim comprise this abstract
`concept of conditioning and controlling access to data. See id. at 715.
`Adding routine, additional steps such as accessing stored data when access is
`permitted does not transform an otherwise abstract idea into patent-eligible
`subject matter. See id. at 716 (“Adding routine additional steps such as
`
`
`9 Patent Owner does not identify any of the additional features specifically
`recited in claim 11 as corresponding to the limitation from DDR Holdings.
`
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`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. Preemption
`Petitioner argues that “claim 11 of the ’458 patent preempts all
`effective uses of the abstract idea of regulating authorized use of
`information.” Pet. 29. Patent Owner responds that the challenged claim
`does not result in inappropriate preemption. PO Resp. 18–24. 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 19 (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 20–24.
`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
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`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 preempti