throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 40
`Entered: May 26, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC., SAMSUNG ELECTRONICS LTD, and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-000331
`Patent 8,336,772 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`1 Samsung’s challenge to claims 26 and 32 of US Patent No. 8,336,772 B2
`in CBM2015-00059 was consolidated with this proceeding. Paper 24, 9–10.
`
`
`
`
`
`
`
`
`
`

`
`CBM2015-00033
`Patent 8,336,772 B2
`
`A. Background
`
`INTRODUCTION
`
`Apple Inc. (“Apple”) filed a Corrected Petition to institute covered
`
`business method patent review of claims 25, 26, 30, and 32 of U.S. Patent
`
`No. 8,336,772 B2 (Ex. 1401, “the ’772 patent”) pursuant to § 18 of the
`
`Leahy-Smith America Invents Act (“AIA”). Paper 5 (“Pet.”). Patent
`
`Owner, Smartflash LLC (“Smartflash”), filed a Preliminary Response.
`
`Paper 8 (“Prelim. Resp.”). On May 28, 2015, we instituted a covered
`
`business method patent review (Paper 11, “Institution Decision” or “Inst.
`
`Dec.”) based upon Apple’s assertion that claims 25, 26, 30, and 32 are
`
`directed to patent ineligible subject matter under 35 U.S.C. § 101. Inst. Dec.
`
`19.
`
`Subsequent to institution, Smartflash filed a Patent Owner Response
`
`(Paper 23, “PO Resp.”) and Apple filed a Reply (Paper 26, “Reply”) to
`
`Patent Owner’s Response.
`
`On January 15, 2015, Samsung Electronics America, Inc. and
`
`Samsung Electronics, Co., Ltd. (collectively, “Samsung”) filed a Petition to
`
`institute covered business method patent review of claims 5, 10, 14, 26 and
`
`32 of the ’772 patent on the ground that they are directed to patent ineligible
`
`subject matter under 35 U.S.C. § 101. Samsung Electronics America, Inc.
`
`and Samsung Electronics, Co., Ltd. v. Smartflash LLC, Case CBM2015-
`
`00059 (Paper 2, “Samsung Petition”). On June 29, 2015, Samsung filed a
`
`Motion for Joinder (CBM2015-00059, Paper 11) seeking to consolidate its
`
`challenge to claims 26 and 32 with the covered business method patent
`
`2
`
`

`
`CBM2015-00033
`Patent 8,336,772 B2
`
`review in CBM2015-00033.2 On August 5, 2015, we granted Samsung’s
`
`Petition and consolidated Samsung’s challenge to claims 26 and 32 with this
`
`proceeding. Paper 24; Samsung Electronics America, Inc. and Samsung
`
`Electronics, Co., Ltd. v. Smartflash LLC, Case CBM2015-00059, slip. op. at
`
`9–10 (PTAB Aug. 5, 2015) (Paper 13).
`
`An oral hearing was held on January 6, 2016, and a transcript of the
`
`hearing is included in the record (Paper 38, “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 Apple has shown by a
`
`preponderance of the evidence that claims 25, 26, 30, and 32 of the ’772
`
`patent are directed to patent ineligible subject matter under 35 U.S.C. § 101.
`
`B. The ’772 Patent
`
`The ’772 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. 1401, 1:24–28. 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 1:32–58. The ’772 patent describes providing portable data storage
`
`
`2 Samsung’s Motion requested that its challenge to claims 26 and 32 be
`consolidated with this case. CBM2015-00059, Paper 11. Samsung’s
`Motion also requested that its challenge to claims 5 and 10 be consolidated
`with CBM2015-00031, and that its challenge to claim 14 be consolidated
`with CBM2015-00032. CBM2015-00031 and CBM2015-00032 were both
`filed by Apple and involve claims 1, 5, 8, and 10, and claims 14, 19, and 22,
`respectively, of the ’772 patent.
`
`3
`
`

`
`CBM2015-00033
`Patent 8,336,772 B2
`
`together with a means for conditioning access to that data upon validated
`
`payment. Id. at 1:62–2:3. According to the ’772 patent, this combination of
`
`the payment validation means with the data storage means allows data
`
`owners to make their data available over the internet without fear of data
`
`pirates. Id. at 2:10–18.
`
`As described, the portable data storage device is connected to a
`
`terminal for internet access. Id. at 1:62–2:3. 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 2:4–7. The
`
`’772 patent makes clear that the actual implementation of these components
`
`is not critical and the alleged invention may be implemented in many ways.
`
`See, e.g., id. at 25:59–62 (“The skilled person will understand that many
`
`variants to the system are possible and the invention is not limited to the
`
`described embodiments . . . .”).
`
`C. Illustrative Claims
`
`Apple challenges claims 25, 26, 30, and 32 of the ’772 patent. Claims
`
`25 and 30 are independent and claims 26 and 32 depend from claims 25 and
`
`30, respectively. Claims 25 and 30 are reproduced below:
`
`25. A handheld multimedia terminal for retrieving and
`accessing protected multimedia content, comprising:
`
`a wireless interface configured to interface with a wireless
`network for communicating with a data supplier;
`
`non-volatile memory configured to store multimedia
`content, wherein said multimedia content comprises one or more
`of music data, video data and computer game data;
`
`a program store storing processor control code;
`
`4
`
`

`
`CBM2015-00033
`Patent 8,336,772 B2
`
`a processor coupled to said non-volatile memory, said
`program store, said wireless interface and
`
`a user interface to allow a user to select and play said
`multimedia content;
`
`a display for displaying one or both of said played
`multimedia content and data relating to said played multimedia
`content;
`
`wherein the processor control code comprises:
`
`code to request identifier data identifying one or
`more items of multimedia content available for retrieving
`via said wireless interface;
`
`code to receive said identifier data via said wireless
`interface, said identifier data identifying said one or more
`items of multimedia content available for retrieving via
`said wireless interface;
`
`code to request content information via said
`wireless interface, wherein said content information
`comprises one or more of description data and cost data
`pertaining to at least one of said one or more items of
`multimedia content identified by said identifier data;
`
`code to receive said content information via said
`wireless interface;
`
`code to present said content information pertaining
`to said identified one or more items of multimedia content
`available for retrieving to a user on said display;
`
`code to receive a first user selection selecting at
`least one of said one or more items of multimedia content
`available for retrieving;
`
`code responsive to said first user selection of said
`selected at least one item of multimedia content to transmit
`payment data relating to payment for said selected at least
`one item of multimedia content via said wireless interface
`for validation by a payment validation system;
`
`code to receive payment validation data via said
`wireless interface defining if said payment validation
`
`5
`
`

`
`CBM2015-00033
`Patent 8,336,772 B2
`
`system has validated payment for said selected at least one
`item of multimedia content; and
`
`code responsive to said payment validation data to
`retrieve said selected at least one item of multimedia
`content via said wireless interface from a data supplier and
`to write said retrieved at least one item of multimedia
`content into said non-volatile memory, code to receive a
`second user selection selecting one or more of said items
`of retrieved multimedia content to access;
`
`code to read use status data and use rules from said
`non-volatile memory pertaining to said second selected
`one or more items of retrieved multimedia content; and
`
`code to evaluate said use status data and use rules to
`determine whether access is permitted to said second
`selected one or more items of retrieved multimedia
`content,
`
`wherein said user interface is operable to enable a
`user to make said first user selection of said selected at
`least one item of multimedia content available for
`retrieving,
`
`wherein said user interface is operable to enable a
`user to make said second user selection of said one or more
`items of retrieved multimedia content available for
`accessing, and
`
`wherein said user interface is operable to enable a
`user to access said second user selection of said one or
`more item of retrieved multimedia content responsive to
`said code to control access permitting access to said
`second selected one or more items of retrieved multimedia
`content.
`
`Ex. 1401, 29:40–30:47.
`
`30. A data access terminal for controlling access to one
`or more content data items stored on a data carrier, the data
`access terminal comprising:
`
`a user interface;
`
`6
`
`

`
`CBM2015-00033
`Patent 8,336,772 B2
`
`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 request identifier data identifying one or
`more content data items available for retrieving;
`
`code to receive said identifier data identifying said
`one or more content data items available for retrieving;
`
`code to request content information pertaining to at
`least one of said one or more content data items identified
`by said identified data;
`
`code to receive said content information; code to
`present said content information to a user via said user
`interface pertaining to said identified one or more content
`data items available for retrieving;
`
`code to receive a first user selection selecting at
`least one of said one or more of said content data items
`available for retrieving;
`
`code responsive to said first user selection of said
`selected at least one content data item to transmit payment
`data relating to payment for said selected at least one
`content item for validation by a payment validation
`system;
`
`code to receive payment validation data defining if
`said payment validation system has validated payment for
`said selected at least one content data item;
`
`code responsive to the payment validation data to
`retrieve said selected at least one content data item from a
`data supplier and to write said retrieved at least one
`content data item into said data carrier;
`
`code to receive a second user selection selecting one
`of said one or more of said retrieved content data items to
`access;
`
`7
`
`

`
`CBM2015-00033
`Patent 8,336,772 B2
`
`code to read use status data and use rules from said
`data carrier pertaining to said second selected one or more
`retrieved content data items; and
`
`code to evaluate said use status data and use rules to
`determine whether access is permitted to said second
`selected one or more retrieved content data items.
`
`Ex. 1401, 30:65–31:43.
`
`A. Claim Construction
`
`ANALYSIS
`
`Consistent with the statute and the legislative history of the AIA,3 the
`
`Board interprets claim terms in an unexpired patent according to the
`
`broadest reasonable construction in light of the specification of the patent in
`
`which they appear. See In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
`
`1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC
`
`v. Lee, 136 S. Ct. 890 (mem.) (2016); 37 C.F.R. § 42.100(b). Under that
`
`standard, and absent any special definitions, we give claim terms their
`
`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art at the time of the invention. See In re Translogic Tech., Inc.,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim
`
`terms must be set forth with reasonable clarity, deliberateness, and precision.
`
`See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`For purposes of this Decision, we do not need to expressly construe
`
`any claim term.
`
`
`3 Leahy-Smith America Invents Act, Pub. L. No. 11229, 125 Stat. 284
`(2011) (“AIA”).
`
`8
`
`

`
`CBM2015-00033
`Patent 8,336,772 B2
`
`B. Statutory Subject Matter
`
`Apple challenges claims 25, 26, 30, and 32 as directed to patent-
`
`ineligible subject matter under 35 U.S.C. § 101. Pet. 20–31. Apple submits
`
`a declaration from Anthony J. Wechselberger (“Wechselberger
`
`Declaration”).4 Ex. 1419.
`
`According to Apple, claims 25, 26, 30, and 32 are directed to an
`
`abstract idea and do not disclose an “inventive concept” that is “significantly
`
`more” than the abstract idea. Pet. 20–31. Smartflash argues that claims 25,
`
`26, 30, and 32 are directed to statutory subject matter because they are
`
`“‘rooted in computer technology in order to overcome a problem specifically
`
`arising in the realm of computer networks’ – that of digital data piracy.” PO
`
`Resp. 18 (citations omitted). Specifically, Smartflash asserts that “the
`
`claims are directed to particular devices that can download and store digital
`
`content into non-volatile memory / a data carrier.” Id. at 17.
`
`1. Abstract Idea
`
`Under 35 U.S.C. § 101, we must first identify whether an invention
`
`fits within one of the four statutorily provided categories of patent-
`
`eligibility: “processes, machines, manufactures, and compositions of
`
`matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713–714 (Fed. Cir.
`
`2014). Here, claims 25 and 26 recite a “handheld multimedia terminal” and
`
`claims 30 and 32 recite a “data access terminal,” which fall into the
`
`
`4 In its Response, Patent Owner argues that the Wechselberger Declaration
`should be given little or no weight. PO Resp. 4–11. 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.
`
`9
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`CBM2015-00033
`Patent 8,336,772 B2
`
`“machine” category under § 101. Section 101, however, “contains an
`
`important implicit exception [to subject matter eligibility]: Laws of nature,
`
`natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
`
`Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347, 2354 (2014) (citing Assoc. for
`
`Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)
`
`(internal quotation marks and brackets omitted)). In Alice, the Supreme
`
`Court reiterated the framework set forth previously in Mayo Collaborative
`
`Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1293 (2012) “for
`
`distinguishing patents that claim laws of nature, natural phenomena, and
`
`abstract ideas from those that claim patent-eligible applications of those
`
`concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to
`
`“determine whether the claims at issue are directed to one of those patent-
`
`ineligible concepts.” Id.
`
`According to the Federal Circuit, “determining whether the section
`
`101 exception for abstract ideas applies involves distinguishing between
`
`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
`
`10
`
`

`
`CBM2015-00033
`Patent 8,336,772 B2
`
`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 Tech., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed.
`
`Cir. 2015) (citations omitted).
`
`Petitioner argues that claims 25, 26, 30, and 32 are directed to the
`
`abstract idea of “paying for and controlling access to data / content.” Pet.
`
`20; see id. at 25–26. Although Smartflash does not concede, in its Patent
`
`Owner Response, that claims 25, 26, 30, and 32 are directed to an abstract
`
`idea, it does not persuasively explain how the challenged claims escape
`
`being classified as abstract. PO Resp. 16–29 (Patent Owner Response
`
`arguing that claims are statutory under only the second step of Mayo and
`
`Alice); see also Tr. 7:19–22 (Apple stating that “Patent Owner has made no
`
`argument that its claims are not directed to abstract ideas under the first
`
`prong of Mayo and Alice.”) (emphasis added), id. at 7:22–23 (Apple also
`
`stating “[Patent Owner] has never disputed the articulation of those abstract
`
`ideas”).
`
`We are persuaded that claims 25, 26, 30, and 32 are drawn to the
`
`abstract idea of conditioning and controlling access to content based on, for
`
`example, payment. Specifically, independent claim 25 recites “code to
`
`receive payment validation data . . . for said selected at least one item of
`
`multimedia content.” Independent claim 30 recites “code to receive
`
`payment validation data . . . for said selected at least one content data item.”
`
`Claim 26 depends from claim 25 and recites “code to present said second
`
`11
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`

`
`CBM2015-00033
`Patent 8,336,772 B2
`
`selected one or more items of retrieved multimedia content to a user via said
`
`display if access is permitted.” Claim 32 depends from claim 30 and recites
`
`“said data access terminal is integrated with a mobile communications
`
`device and audio/video player.” Furthermore, as discussed above, the ’772
`
`patent discusses addressing recording industry concerns of data pirates
`
`offering unauthorized access to widely available compressed audio
`
`recordings. Ex. 1401, 1:23–57. The specification explains that these pirates
`
`obtain data either by unauthorized or legitimate means and then make the
`
`data available over the Internet without authorization. Id. The specification
`
`further explains that once data has been published on the Internet, it is
`
`difficult to police access to and use of it by Internet users who may not even
`
`realize that it is pirated. Id. The ’772 patent proposes to solve this problem
`
`by restricting access to data on a portable data carrier based upon payment
`
`validation. Id. at 1:61–2:3. The ’772 patent makes clear that the crux of the
`
`claimed subject matter is restricting access to stored data based on validation
`
`of payment. Id.
`
`Although the specification refers to data piracy on the Internet, claims
`
`25, 26, 30, and 32 are not limited to the Internet. Claim 25, from which
`
`claim 26 depends, recites “code to” perform various functions related to the
`
`abstract idea. Independent claim 25 recites, among other things, code to:
`
`“request identifier data;” “receive said identifier data;” “request content
`
`information,” “receive said content information,” “present said content
`
`information,” “receive a first user selection,” “transmit payment data,”
`
`“receive payment validation data,” “retrieve said selected at least one item of
`
`multimedia content,” “read use status data and use rules,” and “evaluate said
`
`use status data and use rules.” As discussed above, independent claim 30,
`
`12
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`CBM2015-00033
`Patent 8,336,772 B2
`
`from which claim 32 depends, includes similar limitations, including as a
`
`concluding limitation “code to evaluate said use status data and use rules to
`
`determine whether access is permitted to said second selected one or more
`
`retrieved content data items.” The underlying concept of claims 25, 26, 30,
`
`and 32, particularly when viewed in light of the ’772 patent specification, is
`
`conditioning and controlling access to content based on, for example,
`
`payment. 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 ’772 patent specification and
`
`the claim language, that each of claims 25, 26, 30, and 32 is directed to an
`
`abstract idea. See Alice, 134 S. Ct. at 2356 (holding that the concept of
`
`intermediated settlement at issue in Alice was an abstract idea); Accenture
`
`Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344
`
`(Fed. Cir. 2013) (holding the abstract idea at the heart of a system claim to
`
`be “generating tasks [based on] rules . . . to be completed upon the
`
`occurrence of an event”).
`
`2. Inventive Concept
`
`“A claim that recites an abstract idea must include ‘additional
`
`features’ to ensure ‘that the [claim] is more than a drafting effort designed to
`
`monopolize the [abstract idea].’” Alice, 134 S. Ct. at 2357 (quoting Mayo,
`
`132 S. Ct. at 1297). “This requires more than simply stating an abstract idea
`
`while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly,
`
`the prohibition on patenting an ineligible concept cannot be circumvented by
`
`limiting the use of an ineligible concept to a particular technological
`
`environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the
`
`mere recitation of generic computer components performing conventional
`
`13
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`Patent 8,336,772 B2
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`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.”).
`
`Apple argues that the challenged claims “recite no more than generic
`
`computer elements and functions that were well-known, routine, and
`
`conventional to a POSITA at the time of filing.” Reply 6 (citations omitted);
`
`see id. at 13–14. Apple persuades us that claims 25, 26, 30, and 32 of the
`
`’772 patent do not add an inventive concept sufficient to ensure that the
`
`claims in practice amount to significantly more than claims 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 Apple’s
`
`rationale that the additional elements of claims 25, 26, 30, and 32 are field of
`
`use limitations and/or generic features of a computer that do not bring these
`
`claims within § 101 patent eligibility. Pet. 24–29; Reply 4–6.
`
`a. Every claimed hardware component and function was
`known
`
`Apple 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.’” Pet. 24 (citations omitted).
`
`Smartflash argues that the challenged claims are patentable because they
`
`“are directed to particular devices that can download and store digital
`
`14
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`
`CBM2015-00033
`Patent 8,336,772 B2
`
`content into non-volatile memory / a data carrier.” PO Resp. 17. We agree
`
`with Apple for the following reasons.
`
`The ’772 patent specification treats as well-known all potentially
`
`technical aspects of claims 25, 26, 30, and 32, including “a wireless
`
`interface,” “non-volatile memory,” “a program store,” “a processor,” “a user
`
`interface,” “a display,” and “code.” See Reply 10–11. For example, the
`
`specification states the recited “non-volatile memory” may be an EEPROM,
`
`the recited “program store” may be a ROM, and the recited “non-volatile
`
`memory” may be Flash memory (Ex. 1401, 17:31–36), as found in a
`
`standard “smart Flash card” (id. at 17:15–24). See also id. at 4:7–8, 6:23–25
`
`(stating that “[t]he data memory for storing content data may be optic,
`
`magnetic or semiconductor memory, but preferably comprises Flash
`
`memory.”), 11:28–37, 14:33–38, 16:55–58, 18:16–20 (describing
`
`components as “conventional”), Figs. 6, 9. Furthermore, the claimed “code”
`
`performs generic computer functions, such as requesting, receiving,
`
`presenting, reading, and evaluating. Pet. 3, 26–27. The recitation of these
`
`generic computer functions is insufficient to confer specificity. See Content
`
`Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass’n., 776
`
`F.3d 1343, 1347 (Fed. Cir. 2014) (“The concept of data collection,
`
`recognition, and storage is undisputedly well-known. Indeed, humans have
`
`always performed these functions.”).
`
`Moreover, we are not persuaded that claims 25, 26, 30, and 32 “‘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, for example, payment. See PO Resp. 29 (citation omitted).
`
`As noted above, the ’772 patent specification indicates that the required
`
`15
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`

`
`CBM2015-00033
`Patent 8,336,772 B2
`
`memories may be conventional types of memory. Ex. 1401, 4:7–8, 6:23–25
`
`(stating that “[t]he data memory for storing content data may be optic,
`
`magnetic or semiconductor memory, but preferably comprises Flash
`
`memory.”), 11:28–37, 14:33–38, 16:55–58, 17:15–24, 17:31–36, 18:16–20
`
`(describing components as “conventional”), Figs. 6, 9. The recitation of
`
`generic memory, being used to store data in the conventional manner, is
`
`insufficient to confer the specificity required to elevate the nature of the
`
`claim into a patent-eligible application. See Content Extraction, 776 F.3d at
`
`1347 (“The concept of data collection, recognition, and storage is
`
`undisputedly well-known. Indeed, humans have always performed these
`
`functions.”).
`
`Claims 25, 26, 30, and 32 also recite several conventional computer
`
`components, including “a wireless interface,” “non-volatile memory,” “a
`
`program store,” “a processor,” “a user interface,” and “a display.” See Pet.
`
`27–28. We are not persuaded that the recitation of these computer
`
`components alone amounts to significantly more than the underlying abstract
`
`idea. Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294) (“We
`
`have described step two of this analysis as a search for an ‘inventive
`
`concept’—i.e., an element or combination of elements that is ‘sufficient to
`
`ensure that the patent in practice amounts to significantly more than a patent
`
`upon the [ineligible concept] itself.’”). Smartflash does not point to any
`
`inventive concept in the ’772 patent related to the way the recited
`
`components are constructed or used. As discussed above, the ’772 patent
`
`states many claimed components are “conventional,” including the “data
`
`access terminal” recited in the preamble of claim 30. Ex. 1401, 4:7–8.
`
`Other components specifically described as “conventional” include “a
`
`16
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`

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`CBM2015-00033
`Patent 8,336,772 B2
`
`processor,” “permanent program memory,” and “timing and control logic,”
`
`“all coupled by a data and communications bus.” Id. at 18:16–20.
`
`In addition, because the recited elements can be implemented on a
`
`general purpose computer, claims 25, 26, 30, and 32 do not cover a
`
`“particular machine.” Pet. 31; 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 claims 25, 26, 30,
`
`and 32 do not transform an article into a different state or thing. Id.
`
`Thus, we determine the potentially technical elements of claims 25,
`
`26, 30, and 32 are nothing more than “generic computer implementations”
`
`and perform functions that are “purely conventional.” Alice, 134 S. Ct. at
`
`2358–59; Mayo, 132 S. Ct. at 1294.
`
`b. Challenged claims are not comparable to DDR
`Holdings claims
`
`Relying on the Federal Circuit’s decision in DDR Holdings,
`
`Smartflash asserts that claims 25, 26, 30, and 32 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. 1, 17 (quoting DDR Holdings, LLC v. Hotels.com,
`
`L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Specifically, Smartflash
`
`contends that
`
`[T]he claims are directed to particular devices that can download
`and store digital content into non-volatile memory / a data
`carrier. By using a system that combines on the data carrier both
`the digital content and use status data / use rules to control access
`to the digital content when obtaining digital content, the claimed
`multimedia terminals / data access terminals enable digital
`content to be obtained effectively and legitimately, including, for
`example, by allowing or prohibiting access to the downloaded or
`
`17
`
`

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`CBM2015-00033
`Patent 8,336,772 B2
`
`stored content in accordance with rules as required or specified
`by content rights owners.
`
`Id. at 17.
`
`Apple responds that claims 25, 26, 30, and 32 are distinguishable from
`
`the claims in DDR Holdings. Reply 6–14. The DDR Holdings patent is
`
`directed at retaining website visitors when clicking on an advertisement
`
`hyperlink within a host website. DDR Holdings, 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 that the website visitor is retained on the host website, but
`
`is still 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
`
`18
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`CBM2015-00033
`Patent 8,336,772 B2
`
`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 Apple that claims 25, 26, 30, and 32 are
`
`distinguishable from the claims at issue in DDR Holdings. See Reply 6–14.
`
`As an initial matter, we are not persuaded by Smartflash’s argument that
`
`claims 25, 26, 30, and 32 are “‘rooted in computer technology in order to
`
`overcome a problem specif

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