Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 56
`Entered: March 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-000161
`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 Apple Inc. has been dismissed as Petitioner from this proceeding with
`respect to claim 1. Paper 50.
`
`
`Tel: 571-272-7822
`
`Paper 56
`Entered: March 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-000161
`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 Apple Inc. has been dismissed as Petitioner from this proceeding with
`respect to claim 1. Paper 50.
`
`
`
`CBM2015-00016
`Patent 8,033,458 B2
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”), filed a Corrected Petition to institute
`covered business method patent review of claims 1, 6, 8, 10, and 11 of U.S.
`Patent No. 8,033,458 B2 (Ex. 1201, “the ’458 patent”) pursuant to § 18 of
`the Leahy-Smith America Invents Act (“AIA”).2 Paper 9 (“Pet.”). On April
`10, 2015, we instituted a transitional covered business method patent review
`(Paper 23, “Institution Decision” or “Inst. Dec.”) based upon Petitioner’s
`assertion that claims 1, 6, 8, and 10 are directed to patent ineligible subject
`matter under 35 U.S.C. § 101 and that claim 11 is unpatentable under 35
`U.S.C. § 112 ¶ 2.3 Inst. Dec. 26.
`Subsequent to institution, Smartflash LLC (“Patent Owner”) filed a
`Patent Owner Response (Paper 33, “PO Resp.”) and Petitioner filed a Reply
`(Paper 35, “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 53 (“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 6, 8, and 10 of the ’458 patent are
`directed to patent ineligible subject matter under 35 U.S.C. § 101 and that
`claim 11 is unpatentable under 35 U.S.C. § 112 ¶ 2. We terminate this
`proceeding with respect to claim 1.
`
`
`2 Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011).
`3 Petitioner cites 35 U.S.C. § 112(b). We note, however, that the ’458 patent
`was filed in 2010 (prior to application of the AIA). The pre-AIA laws,
`therefore, apply to the challenges to the ’458 patent.
`
`2
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`B. Related Matters and Termination
`In a previous covered business method patent review, CBM2014-
`00106, we issued a Final Written Decision determining claim 1 unpatentable
`under 35 U.S.C. § 103. CBM2014-00106, Paper 52. Because Apple was
`the petitioner in that proceeding, we found that § 325(e)(1) estops Apple
`from filing or maintaining a proceeding before the Office with respect to
`claim 1, i.e., the same claim, in this case. Paper 50 (“Estoppel Order”), 4.
`We, therefore, ordered Apple not to present argument with respect to the
`patentability of that claim at the oral hearing on November 9, 2015. Id. at 8.
`On March 15, 2016, Patent Owner filed an authorized motion to
`terminate this proceeding with respect to claim 1 stating that “[o]n March 4,
`2016, pursuant to Fed. R. App. P. 42(b), the United States Court of Appeals
`for the Federal Circuit dismissed [Patent Owner’s] appeal of [the final
`written decision in CBM2014-00106 determining] that claim 1 of the ’458
`Patent is unpatentable.” Paper 55, 3.4
`We are persuaded that the particular facts of this proceeding now
`counsel in favor of termination with respect to claim 1. 37 C.F.R. § 42.72.
`Claim 1 of the ’458 patent has been finally cancelled and any decision we
`might reach in this proceeding regarding the patentability of this claim
`would be moot and purely advisory. We do not see how the just, speedy,
`and inexpensive resolution of every proceeding (37 C.F.R. § 42.1(b)) would
`be secured by rendering a final written decision with respect to claim 1.
`
`
`4 Fed. R. App. P. 42 provides for dismissal of an appeal at the request of the
`parties or on motion by the appellant.
`
`3
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`Patent 8,033,458 B2
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`C. 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. 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 ’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.
`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.”).
`D. Challenged Claims
`Petitioner challenges claims 6, 8, 10, and 11. Claim 6 is independent,
`with claims 8, 10, and 11 depending from claim 6, and claim 6 is reproduced
`below:
`
`6. A data access device for retrieving stored data from
`a data carrier, the device comprising:
`
`4
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`CBM2015-00016
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`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.
`
`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.
`
`5
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`B. Statutory Subject Matter
`Petitioner challenges claims 6, 8, and 10 (“the challenged claims”) as
`directed to patent-ineligible subject matter under 35 U.S.C. § 101.5 Pet. 24–
`36. Petitioner submitted a declaration from Anthony J. Wechselberger
`(“Wechselberger declaration”)6 in support of its petition. Ex. 1220.
`Patent Owner contends that the challenged claims are patent-eligible.
`PO Resp. 10–27.
`
`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, 713–14 (Fed. Cir.
`2014). Here, each of the challenged claims 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.
`
`
`5 We do not address claim 1 because, as noted above, this Decision
`terminates the proceeding with respect to that claim.
`6 In its Response, Patent Owner argues that the Wechselberger declaration
`should be given little or no weight. PO Resp. 4–5. Because Patent Owner
`has filed a Motion to Exclude that includes a request to exclude the
`Wechselberger 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.
`
`6
`
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`CBM2015-00016
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`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
`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).
`
`7
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`Patent 8,033,458 B2
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`Petitioner argues that the challenged claims are directed to the abstract
`idea of “paying for and/or controlling access to content.” Pet. 24.
`Specifically, Petitioner contends that “claims 6, 8, [and] 10 [] 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 26.
`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. 10–27; 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 claims are drawn to a patent-ineligible
`abstract idea. Specifically, the challenged claims are directed to performing
`the fundamental economic practice of controlling access to content. For
`example, claim 6 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.”
`As discussed above, the ’458 patent discusses addressing recording
`industry concerns of data pirates offering unauthorized access to widely
`available compressed audio recordings. Ex. 1201, 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. As
`Petitioner notes (Pet. 26), the ’458 patent makes clear that the claimed
`subject matter is directed to paying for data and providing access to data.
`See Ex. 1201 at 2:20–23 (“This invention is . . . particularly . . . relate[d] to a
`portable data carrier for storing and paying for data and to computer systems
`for providing access to data.”). Although the specification discusses data
`
`8
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`CBM2015-00016
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`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 claims, that claims 6, 8, and 10 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’
`
`9
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`capable of performing the basic calculation, storage, and transmission
`functions required by the method claims.”).
`Petitioner argues “the Challenged Claims do nothing more than recite
`routine, conventional computer functions in implementing an abstract idea.”
`Pet. Reply 7. Petitioner persuades us that claims 6, 8, and 10 of the ’458
`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 Petitioner’s
`rationale 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 claim within § 101 patent eligibility. Pet. 27–34.
`
`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. 28 (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. 18–19 (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
`
`10
`
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`CBM2015-00016
`Patent 8,033,458 B2
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`computer components (e.g., interfaces, program store, and processor). The
`linkage of existing hardware devices to 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.
`Further, the claimed computer code simply performs generic computer
`functions, such as accessing, retrieving, and evaluating data. See Pet. 29–30.
`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 claims 6, 8, and 10 “recite
`specific ways of using distinct memories, data types, and use rules that
`amount to significantly more than” conditioning and controlling access to
`content based on payment. See PO Resp. 18. The challenged claims do not
`recite any particular or “distinct memories.” To the extent Patent Owner
`argues that the claimed “program store” is a memory, Patent Owner does not
`provide any argument as to how it is constructed or implemented in an
`unconventional manner. Moreover, the claims recite several generic data
`types, such as “code,” “use status data,” and “use rules data.” We are not
`persuaded that the recitation 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 claims into a patent-eligible
`
`11
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`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, 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 claims do not cover a “particular
`machine.” Pet. 36; 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 claims do not
`transform an article into a different state or thing. Pet. 36.
`Thus, we determine the potentially technical elements of the 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.
`To the extent Patent Owner argues that the challenged claims include
`an “inventive concept” because of the specific combination of elements in
`the challenged claims, 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
`
`12
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`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.
`PO Resp. 12. Patent Owner further contends that “the claimed portable data
`carriers 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.
`
`None of the claims currently involved in the § 101 challenge in this
`proceeding recite “partial use status data.”7 Nevertheless, the concept of
`storing two different types of information in the same place or on the same
`device is an age old practice. For example, storing names and phone
`numbers (two different types of information) in the same place, such as a
`book, or on a storage device, such as a memory device was known. That
`Patent Owner alleges two specific types of information—content and the
`conditions for providing access to the content—are stored in the same place
`or on the same storage device does not alter our determination. The concept
`was known and Patent Owner has not persuaded us that applying the concept
`to these two specific types of information results in the claim reciting an
`inventive concept. Furthermore, the prior art discloses products that could
`store both the content and conditions for providing access to the content.
`See, e.g., Pet. 7–8 (citing Ex. 1216, Abstract); see also Ex. 1216, 10:24–30
`(discussing “a time bomb or other disabling device which will disable the
`
`7 The “partial use” limitation is found in claim 11.
`
`13
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`product at the end of the rental period.”). 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., “track[ing] whether a
`renter had ‘finished with’ the DVD yet” (PO Resp. 8)), we remain
`unpersuaded that the claims recite 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 claims are 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
`claims are “directed to particular devices that can download and store digital
`content into a data carrier.” Id. at 11–12. 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. at 12.
`Petitioner responds that the challenged claims are distinguishable
`from the claims in DDR Holdings. Pet. Reply 8–17. The DDR Holdings
`
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`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, 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.
`
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`We agree with Petitioner 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
`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 10–11 (identifying other contexts in which data piracy is a problem).
`For example, data piracy is a problem with compact discs. See Ex. 1201
`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
`claims is not rooted in specific computer technology. See Pet. Reply 13–15.
`Even accepting Patent Owner’s assertion that the challenged claims
`address data piracy on the Internet (PO Resp. 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 Patent Owner in its table mapping claim 6 of the ’458 patent to claim 19
`of the patent at issue in DDR Holdings. PO Resp. 16–18. 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. Id. Patent Owner, however, fails to identify how this limitation of claim
`6 from the ’458 patent is analogous to the corresponding DDR Holdings
`limitation. Unlike the claims in DDR Holdings, these limitations, like all the
`
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`Patent 8,033,458 B2
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`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.’” Ultramercial, 772 F.3d at 716. They merely rely
`on conventional devices and computer processes operating in their “normal,
`expected manner.” OIP Techs., 788 F.3d at 1363 (citing DDR Holdings, 773
`F.3d at 1258-59).
`The challenged claims are 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 claims 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
`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. Preemption
`Petitioner argues that “the challenged claims’ broad functional
`[nature] firmly triggers preemption concerns” (Pet. 30), which “drive
`Mayo’s two-part test to determine patent eligibility, which serves as a proxy
`for making judgments about the relative scope of future innovation
`foreclosed by a patent” (Pet. Reply 17). Patent Owner responds that the
`challenged claims “do not result in inappropriate preemption of the ‘idea of
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`CBM2015-00016
`Patent 8,033,458 B2
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`paying for and controlling access to data’ . . . or the ‘idea of paying for and
`controlling access to content.’” PO Resp. 20. According to Patent Owner,
`the challenged claims do not attempt to preempt every application of the
`idea, but rather recite a “‘specific way . . . that incorporates elements from
`multiple sources in order to solve a problem faced by [servers] on the
`Internet.’” Id. at 20 (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 claims of the ’458 patent do not raise preemption
`concerns. Id. at 22–23, 25–27.
`Patent Owner’s preemption argument does not alter our § 101
`analysis. The Supreme Court has described the “pre-emption concern” as
`“undergird[ing] [its] § 101 jurisprudence.” Alice, 134 S. Ct. at 2358. The
`concern “is a relative one: how much future innovation is foreclosed relative
`to the contribution of the inventor.” Mayo, 132 S. Ct. at 1303. “While
`preemption may signal patent ineligible subject matter, the absence of
`complete preemption does not demonstrate patent eligibility.” Ariosa
`Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
`Importantly, the preemption concern is addressed by the two-part test
`considered above. See id. After all, every patent “forecloses . . . future
`invention” to some extent, Mayo, 132 S. Ct. at 1292, and, conversely, every
`claim limitation beyond those that recite the abstract idea limits the scope of
`the preemption. See Ariosa, 788 F.3d at 1379 (“The Supreme Court has
`made clear that the principle of preemption is the basis for the judicial
`exception to patentability. . . . For this reason, questions on preemption are
`inherent in and resolved by the § 101 analysis.”).
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`The two-part test elucidated in Alice and Mayo does not require us to
`anticipate the number, feasibility, or adequacy of non-infringing alternatives
`to gauge a pat
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