Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 32
`Entered: November 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-00121
`Patent 8,794,516 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, and GREGG I.
`ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 32
`Entered: November 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-00121
`Patent 8,794,516 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, and GREGG I.
`ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CBM2015-00121
`Patent 8,794,516 B2
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`A. Background
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”), filed a Petition to institute covered business
`
`method patent review of claims 1–28 of U.S. Patent No. 8,794,516 B2 (Ex.
`
`1001, “the ’516 patent”) pursuant to § 18 of the Leahy-Smith America
`
`Invents Act (“AIA”). Paper 2 (“Pet.”).1 Smartflash LLC (“Patent Owner”)
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`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). On November 10,
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`2015, we instituted a covered business method patent review (Paper 8,
`
`“Institution Decision” or “Inst. Dec.”) based upon Petitioner’s assertion that
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`claims 1–28 (“the challenged claims”) are directed to patent ineligible
`
`subject matter under 35 U.S.C. § 101. Inst. Dec. 24.
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`Subsequent to institution, Patent Owner filed a Patent Owner
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`Response (Paper 17, “PO Resp.”) and Petitioner filed a Reply (Paper 21,
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`“Pet. Reply”) to Patent Owner’s Response.
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`Patent Owner, with authorization, filed a Notice of Supplemental
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`Authority. Paper 29 (“Notice”). Petitioner filed a Response to Patent
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`Owner’s Notice. Paper 30 (“Notice Resp.”).
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`We held a joint hearing of this this case and several other related cases
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`on July 18, 2016. Paper 31 (“Tr.”).
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`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by a
`
`preponderance of the evidence that claims 1–28 of the ’516 patent are
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`directed to patent ineligible subject matter under 35 U.S.C. § 101.
`
`
`1 Pub. L. No. 112–29, 125 Stat. 284, 296–07 (2011).
`
`2
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`CBM2015-00121
`Patent 8,794,516 B2
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`B. Related Matters
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`The ’516 patent is the subject of the following district court case
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`Smartflash LLC v. Apple Inc., Case No. 6:15-cv-145 (E.D. Tex. 2015). Pet.
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`36, Paper 4, 4–5. Petitioner advises that patents related to the ’516 patent
`
`have been asserted in other actions including: Smartflash LLC v. Apple Inc.,
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`Case No. 6:13-cv-447 (E.D. Tex. 2014); Smartflash LLC v. Samsung
`
`Electronics Co., Case No. 6:13-cv-448 (E.D. Tex. 2014); Smartflash LLC v.
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`Google, Inc., Case No. 6:14-cv-435 (E.D. Tex. 2014), all where Petitioner is
`
`a party; and Smartflash LLC et al. v. Amazon.Com, Inc., et al., No. 6:14-cv-
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`992 (E.D. Tex.), where Petitioner is not a party. Pet. 36, Paper 4, 4–5.
`
`Petitioner previously filed petitions for covered business method
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`patent review of several related patents and a review of the ’516 patent.2
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`Paper 4, 5.
`
`C. The ’516 Patent
`
`The ’516 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.
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`1001, 1:24–28. Owners of proprietary data, especially audio recordings,
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`have an urgent need to address the prevalence of “data pirates,” who make
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`proprietary data available over the internet without authorization. Id. at
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`1:32–58. The ’516 patent describes providing portable data storage together
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`with a means for conditioning access to that data upon validated payment.
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`Id. at 1:62–2:3. According to the ’516 patent, this combination of the
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`payment validation means with the data storage means allows data owners to
`
`
`2 See Google Inc. v. Smartflash LLC, CBM2015-00143, Decision Denying
`Institution (PTAB Nov. 18, 2015) (Paper 8).
`
`3
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`CBM2015-00121
`Patent 8,794,516 B2
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`make their data available over the internet without fear of data pirates. Id. at
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`2:8–19.
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`As described, the portable data storage device is connected to a
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`terminal for internet access. Id. at 1:62–2:3. The terminal reads payment
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`information, validates that information, and downloads data into the portable
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`storage device from a data supplier. Id. The data on the portable storage
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`device can be retrieved and output from a mobile device. Id. at 2:4–7. The
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`’516 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.”).
`
`D. Illustrative Claims
`
`As noted above, Petitioner challenges claims 1–28. Claims 1, 5, 14,
`
`21, and 25 are independent claims. Claims 1 and 14, respectively, an
`
`apparatus (“handheld multimedia terminal”) claim and method claim, are
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`illustrative of the claimed subject matter and reproduced below:
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`1. A handheld multimedia terminal, comprising:
`a wireless interface configured to interface with a wireless
`network for accessing a remote computer system;
`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;
`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;
`
`4
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`CBM2015-00121
`Patent 8,794,516 B2
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`wherein the processor control code comprises:
`code to request identifier data identifying one or more
`items of multimedia content stored in the non-volatile memory;
`code to receive said identifier data;
`code to present to a user on said display said identified one
`or more items of multimedia content available from the non-
`volatile memory;
`code to receive a user selection to select at least one of said
`one or more of said stored items of multimedia content;
`code responsive to said user selection of said at least one
`selected item of multimedia content to transmit payment data
`relating to payment for said at least one selected item of
`multimedia content via said wireless interface for validation by a
`payment validation system,
`wherein said payment data comprises user identification
`data identifying said user to said payment validation system;
`code to receive payment validation data via said wireless
`interface defining if said payment validation system has
`validated payment for said at least one selected item of
`multimedia content; and
`code to control access to said at least one selected item of
`multimedia content on said terminal responsive to said payment
`validation data,
`wherein said user interface is operable to enable a user to
`select said at least one item of multimedia content available from
`said non-volatile memory; and
`wherein said user interface is operable to enable a user to
`access said at least one selected item of multimedia content
`responsive to said code to control access permitting access to said
`at least one selected item of multimedia content.
`
`Ex. 1001, 25:65–26:45.
`
`14. A method of providing an item of multimedia content
`to a handheld multimedia terminal, the method comprising:
`receiving a request from the handheld multimedia terminal
`for identifier data identifying one or more items of multimedia
`content data available to the handheld multimedia terminal;
`retrieving the identifier data from a data store;
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`5
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`CBM2015-00121
`Patent 8,794,516 B2
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`transmitting the identifier data to the handheld multimedia
`terminal;
`receiving payment validation data validating a user
`purchase of an item of multimedia content; and
`responsive to the payment validation data validating the
`user purchase, retrieving the purchased item of multimedia
`content data from a multimedia content store and transmitting the
`purchased
`item of multimedia content
`to
`the handheld
`multimedia terminal.
`
`
`Ex. 1001, 27:61–28:9.
`
`A. Claim Construction
`
`ANALYSIS
`
`In a covered business method patent review, claim terms are given
`
`their broadest reasonable interpretation in light of the specification in which
`
`they appear and the understanding of others skilled in the relevant art. See
`
`37 C.F.R. § 42.300(b). Applying that standard, we interpret the claim terms
`
`of the ’516 patent according to their ordinary and customary meaning in the
`
`context of the patent’s written description. See In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes of this Decision, we
`
`need not construe expressly any claim term.
`
`B. Statutory Subject Matter
`
`The Petition challenges claims 1–28 as directed to patent-ineligible
`
`subject matter under 35 U.S.C. § 101. Pet. 41–77. According to the
`
`Petition, the challenged claims are directed to an abstract idea without
`
`additional elements that transform the claims into a patent-eligible
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`application of that idea. Id. Petitioner submits a declaration from Dr. John
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`6
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`CBM2015-00121
`Patent 8,794,516 B2
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`P. J. Kelly in support of its Petition.3 Ex. 1019. Patent Owner argues that
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`the challenged claims are statutory because they are “rooted in computer
`
`technology in order to overcome a problem specifically arising in the realm
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`of computer networks,” that of “data content piracy.” PO Resp. 1–2.
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`1. Abstract Idea
`
`Under 35 U.S.C. § 101, we must first identify whether an invention
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`fits within one of the four statutorily provided categories of patent-
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`eligibility: “processes, machines, manufactures, and compositions of
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`matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713–714 (Fed. Cir.
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`2014). Here, one set of the challenged claims recites a “machine”—i.e., a
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`“handheld multimedia terminal” (claims 1–4), a “content data supply server”
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`(claims 5–13), and a “computer system” (claims 21–24). A second set of
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`claims recites a method or “process” (claims 14–20 and 25–28). Both sets
`
`of claims fall within the broad categories of § 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
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`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
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`Collaborative Services v. Prometheus Laboratories, 132 S. Ct. 1289, 1293
`
`
`3 In its Response, Patent Owner argues that this declaration should be given
`little or no weight. PO Resp. 7–18. Because Patent Owner has filed a
`Motion to Exclude (Paper 23) that includes a request to exclude Dr. Kelly’s
`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 to exclude, below.
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`7
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`CBM2015-00121
`Patent 8,794,516 B2
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`(2012) “for distinguishing patents that claim laws of nature, natural
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`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
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`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
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`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) (emphasis added)
`
`(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).
`
`8
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`Patent 8,794,516 B2
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`Petitioner argues that the challenged claims are directed to the abstract
`
`idea of “payment for and controlling access to data.” Pet. 44 (citing Ex.
`
`1019 ¶ 75). Specifically, Petitioner contends that challenged “[c]laims 1–4
`
`are drawn to the concepts of payment and controlling access, reciting ‘code
`
`to’ receive payment validation and control access to content.” Id. at 44–45.
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`Petitioner further contends that “[c]laims 5–28 are drawn to the concepts of
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`payment and controlling access, reciting steps or ‘code to’ (e.g. id. cls. 5-
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`28), receive payment validation, transmit or write content, and/or transmit
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`access rules specifying conditions for access.” Id. at 45.
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`We are persuaded that the challenged claims are drawn to a patent-
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`ineligible abstract idea. Specifically, the challenged claims are directed to
`
`performing the fundamental economic practice of conditioning and
`
`controlling access to data. For example, claim 1 recites “code to control
`
`access to said at least one selected item of multimedia content on said
`
`terminal responsive to said payment validation data.” Claim 5 recites “code
`
`responsive to the payment validation data validating the user purchase to
`
`retrieve the purchased item of multimedia content data . . . and transmit the
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`purchased item.” Claim 14 recites “responsive to the payment validation
`
`data validating the user purchase, retrieving the purchased item of
`
`multimedia content . . . and transmitting the purchased item of multimedia
`
`content.” Claim 21 recites “code responsive to the request and to the
`
`received payment validation data, to read the requested multimedia data
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`item.” Claim 25 recites “responsive to the payment validation data
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`retrieving the selected at least one item of multimedia content.”
`
`As discussed above, the ’516 patent discusses addressing recording
`
`industry concerns of data pirates offering unauthorized access to widely
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`9
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`Patent 8,794,516 B2
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`available compressed audio recordings. Ex. 1001, 1:32–58. The
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`Specification explains that these pirates obtain data either by unauthorized or
`
`legitimate means and then make the data available over the Internet without
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`authorization. Id. The Specification further explains that once data has been
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`published on the Internet, it is difficult to police access to and use of that
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`data by internet users who may not even realize that it is pirated. Id. The
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`’516 patent proposes to solve this problem by restricting access to data on a
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`portable data storage device based upon payment validation. Id. at 1:61–2:3.
`
`The ’516 patent makes clear that the crux of the claimed subject matter is
`
`restricting access to stored data based on checked and validated payment.
`
`Id. at 2:4–2:19.
`
`Although the specification refers to data piracy on the Internet, the
`
`challenged claims are not limited to the Internet. The underlying concept of
`
`the challenged claims, particularly when viewed in light of the Specification,
`
`is payment for and controlling access to data, 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.
`
`Patent Owner argues the challenged claims are not directed to an
`
`abstract idea. PO Resp. 21–29. Patent Owner argues that claims 1–13, and
`
`21–24 are directed to “machines comprised of various specialized structural
`
`components” (id. at 21) and that method claims 14–20, and 25–28 “are
`
`directed to useful processes (methods) with specifically defined elements as
`
`steps” (id. at 24). Patent Owner, however, cites no controlling authority to
`
`support the proposition that subject matter is patent-eligible as long as it is
`
`directed to “machines comprised of various specialized structural
`
`components” or “useful processes.” Id. at 21–24. As Petitioner correctly
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`10
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`CBM2015-00121
`Patent 8,794,516 B2
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`points out (Reply 2–4), that argument is contradicted by well-established
`
`precedent:
`
`There is no dispute that a computer is a tangible system (in § 101
`terms, a “machine”), or that many computer-implemented claims
`are formally addressed to patent-eligible subject matter. But if
`that were the end of the § 101 inquiry, an applicant could claim
`any principle of the physical or social sciences by reciting a
`computer system configured to implement the relevant concept.
`Such a result would make the determination of patent eligibility
`“depend simply on the draftman’s art,” … thereby eviscerating
`the rule that “‘… abstract ideas are not patentable.’”
`
`Alice, 134 S. Ct. 2347, 2358-59 (internal citations omitted).
`
`Patent Owner also argues that the challenged claims are like those
`
`found not to be directed to an abstract idea in Google Inc. v. Network-1
`
`Technologies, Inc., CBM2015-00113, and in Hulu, LLC v. iMTX Strategic,
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`LLC, CBM2015-00147. PO Resp. 24–28. These decisions are non-
`
`precedential and distinguishable. In CBM2015-00113, the panel’s
`
`determination turned on a step requiring “correlating, by the computer
`
`system using a non-exhaustive, near neighbor search, the first electronic
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`media work with [and or the first] electronic media work identifier” and on
`
`the Petitioner’s formulation of the alleged abstract idea. Google Inc. v.
`
`Network-1 Technologies, Inc., CBM2015-00113, Paper 7 (Oct. 19, 2015),
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`13. Patent Owner argues that the challenged claims are like those at issue in
`
`CBM2015-00113 because they “require transmission or writing of a
`
`multimedia content data item responsive to or correlated with some other
`
`data (payment data or payment validation data).” PO Resp. 25. As the panel
`
`in CBM2015-00113 explained, however, the claims at issue there required
`
`“particular types of searching processes”—i.e., “a non-exhaustive, near
`
`neighbor search”—that are different than the abstract idea alleged by
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`11
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`CBM2015-00121
`Patent 8,794,516 B2
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`Petitioner. Id. at 12–13. In this case, none of the challenged claims recite a
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`specific search process by which content data would be correlated with other
`
`data.4 As Patent Owner acknowledges, to the extent the claims relate
`
`“content data” to some other data, it is for purposes of “transmission or
`
`writing of a multimedia content data item responsive to . . . some other data
`
`(payment data or payment validation data).” PO Resp. 25. Patent Owner’s
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`assertion that content data is also “correlated with” (id.) other data is not
`
`found in the claims. For example, claim 5 recites “code responsive to the
`
`payment validation data validating the user purchase to retrieve the
`
`purchased item of multimedia content data . . . and transmit the purchased
`
`item of multimedia content,” but neither “validating” payment data nor
`
`“transmit[ting]” the “multimedia content data,” i.e., “content data” imply
`
`“correlating, by the computer system using a non-exhaustive, near neighbor
`
`search.” With respect to CBM2015-00147, Patent Owner mischaracterizes
`
`the Institution Decision. PO Resp. 26–27. The panel’s determination in that
`
`case was based on step two, not step one, of the Mayo/Alice test. Hulu, LLC
`
`v. iMTX Strategic, LLC, CBM2015-00147, Paper 14 (Nov. 30, 2015), 14
`
`(“As in DDR, we are persuaded that, however the abstract idea is
`
`characterized, the ʼ854 patent claims do not meet the second prong of the
`
`Mayo/Alice test.”).
`
`Patent Owner’s Notice of Supplemental Authority also does not alter
`
`our determination. Patent Owner argues that the challenged claims are
`
`“directed to an improvement to computer functionality.” Notice 1 (quoting
`
`Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)). The
`
`
`4 The claims recite variations of “content data,” including “multimedia
`content” (claim 1) and “content information” (claim 18).
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`12
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`challenged claims, according to Patent Owner, are “not directed to an
`
`abstract idea but to specific devices, systems, and methods for managing
`
`data to facilitate convenient and secure provision of digital content” (id. at 2)
`
`and, therefore, “like those in Enfish, ‘are directed to a specific
`
`implementation of a solution to a problem,’ in Internet digital commerce.”
`
`Id. at 3. Unlike the self-referential table at issue in Enfish, however, the
`
`challenged claims do not purport to be an improvement to the way
`
`computers operate. Instead, they “merely implement an old practice in a
`
`new environment.” FairWarning IP, LLC v. Iatric Systems, Inc., No. 2015-
`
`1985, slip op. 7 (Fed. Cir. Oct. 11, 2016). Petitioner argues, and we agree,
`
`that the challenged claims, like those in In re TLI Communications LLC
`
`Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016), “perform[] generic
`
`computer functions such as storing, receiving, and extracting data” using
`
`“physical components” that “behave exactly as expected according to their
`
`ordinary use” and “merely provide a generic environment in which to carry
`
`out the abstract idea” of controlling access to content based on payment
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`and/or rules. Notice Resp. 2–3 (quoting In re TLI Communications LLC
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`Patent Litigation, 823 F.3d at 612–15). The limitations of the challenged
`
`claims—e.g., in some of the limitations of claim 1, “code to request,” “code
`
`to receive,” “code to present,” “code . . . to transmit,” “code to control
`
`access,”—are so general that they
`
`[D]o no more than describe a desired function or outcome,
`without providing any limiting detail that confines the claim to
`a particular solution to an identified problem. The purely
`functional nature of the claim confirms that it is directed to an
`abstract idea, not to a concrete embodiment of that idea.
`
`Affinity Labs of Texas, LLC v. Amazon.com Inc., No. 2015-2080, slip
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`op. 7 (Fed. Cir. Sept. 23, 2016) (citation omitted).
`
`13
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`We are, thus, persuaded, based on the specification and the language
`
`of the challenged claims, that claims 1–28 of the ’516 patent are directed to
`
`an abstract idea. See Alice, 134 S. Ct. at 2356 (holding that the concept of
`
`intermediated settlement at issue in Alice was an abstract idea); Accenture
`
`Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344
`
`(Fed. Cir. 2013) (holding the abstract idea at the heart of a system claim to
`
`be “generating tasks [based on] rules . . . to be completed upon the
`
`occurrence of an event”).
`
`2. Inventive Concept
`
`“A claim that recites an abstract idea must include ‘additional
`
`features’ to ensure ‘that the [claim] is more than a drafting effort designed to
`
`monopolize the [abstract idea].’” Alice, 134 S. Ct. at 2357 (quoting Mayo,
`
`132 S. Ct. at 1297). “This requires more than simply stating an abstract idea
`
`while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly,
`
`the prohibition on patenting an ineligible concept cannot be circumvented by
`
`limiting the use of an ineligible concept to a particular technological
`
`environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the
`
`mere recitation of generic computer components performing conventional
`
`functions is not enough. See Alice, 134 S. Ct. at 2360 (“Nearly every
`
`computer will include a ‘communications controller’ and ‘data storage unit’
`
`capable of performing the basic calculation, storage, and transmission
`
`functions required by the method claims.”).
`
`Petitioner argues that “the [challenged c]laims’ ‘additional features’
`
`recite only well-known, routine, [and] conventional computer
`
`components/activities, which fail to establish an inventive concept.” Pet.
`
`Reply 6. We are persuaded that claims 1–28 of the ’516 patent do not add
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`an inventive concept sufficient to ensure that the patent in practice amounts
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`to significantly more than a patent on the abstract idea itself. Alice, 134 S.
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`Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding
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`claims directed to the abstract idea of “generating tasks [based on] rules . . .
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`to be completed upon the occurrence of an event” to be unpatentable even
`
`when applied in a computer environment and within the insurance industry).
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`Specifically, we agree with and adopt the rationale articulated in the Petition
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`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
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`challenged claims within § 101 patent eligibility. Pet. 51–73.
`
`a. Technical Elements
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`Petitioner argues that the challenged claims are unpatentable because
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`they “are directed only to an abstract idea with nothing more than ‘well-
`
`understood, routine, conventional activity’ added.” Pet. 51 (citations
`
`omitted). Patent Owner disagrees, arguing that the challenged claims are
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`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. 48 (quoting Ex. 2049,5 19) (emphasis
`
`added). We agree with Petitioner for the following reasons.
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`The ’516 patent treats as well-known all potentially technical aspects
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`of the challenged claims, which simply require generic computer
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`components (e.g., “processor,” “program/data store,” “non-volatile
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`memory,” “display,” and “interface”). Pet. 57–61; Pet. Reply 6–13, 15
`
`
`5 Report and Recommendation, Smartflash LLC v. Apple Inc., Case No.
`6:13-cv-447 (E.D. Tex. 2014) and Smartflash LLC v. Samsung Electronics
`Co., Case No. 6:13-cv-448 (E.D. Tex. 2014).
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`Patent 8,794,516 B2
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`(citing Ex. 1001, 4:7–16, 11:33–35, 12:37–40, 13:43–46, 16:13–26, 16:40–
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`49, 16:55–59, 18:14–22, 24:25–27). With respect to the “handheld
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`multimedia terminal” of claim 1, Petitioner argues that the generic
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`computer components, “including an interface, non-volatile memory,
`
`program store, processor, display, and payment validation system are
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`well-understood, conventional, and generic components being used for their
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`well-known, conventional, and routine purpose.” Id. at 58 (citations
`
`omitted). Petitioner notes that “while the ’516 Patent makes no explicit
`
`reference to the term ‘handheld multimedia terminal’ except in its claims,
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`the patent describes a ‘data access terminal’ that ‘may be a conventional
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`computer or, alternatively, it may be a mobile phone,’ both of which were
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`well-known in the art.” Id. (citing Ex. 1001, 4:7–8; 16:40–47; see id. 16:6–8
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`(“In another embodiment, a mobile communications device 152 is provided
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`with a smart Flash card interface 152a”).
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`Petitioner identifies similar well-understood, conventional, and
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`generic computer component recitations in claims 5–28, citing evidentiary
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`support that the computer components “are similarly well-understood,
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`conventional, and generic hardware discussed above being used for their
`
`well-known, conventional, and routine purpose.” Pet. 59–60. For example,
`
`independent claim 5 and dependent claims 6–13 recite a “content data
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`supply server.” Additional computer components recited for the “content
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`data supply server” include “communications interface,” “program store,”
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`“data store,” “multimedia content store,” and “processor.” Id. at 59–60
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`(citing inter alia Ex. 1001, 6:45–47, 6:62–64, 13:30–31).
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`Further, the “‘code to’ limitations of challenged claims 1–13 and 21–
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`24 simply instruct that the abstract ideas of payment for and controlling
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`access to data should be implemented in software.” Pet. 54. The limitations
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`are conventional and well-known computer functions, including functions
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`such as “requesting identifier data.” Id. at 54–57. The recitation of these
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`generic computer functions is insufficient to confer specificity. See Content
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`Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776
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`F.3d 1343, 1347 (Fed. Cir. 2014) (“The concept of data collection,
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`recognition, and storage is undisputedly well-known. Indeed, humans have
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`always performed these functions.”).
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`Moreover, we are not persuaded that claims 1–28 “recite specific
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`ways of using distinct memories, data types, and use rules that amount to
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`significantly more than” paying for and/or controlling access to content.
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`See PO Resp. 48 (quoting Ex. 2049, 19) (emphasis added). The claims
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`recite several memories, including “non-volatile memory,” “a program
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`store,” and “data store,” and generically recite several data types, including
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`“music data, video data and computer game data,” “data,” “identifier data,”
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`“code,” “payment data,” “payment validation data,” “supplementary data,”
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`“advertising data,” “content data,” “payment record data,” “description and
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`cost data,” and “multimedia content data,” We are not persuaded that the
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`recitation of these memories and data types, by itself, amounts to
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`significantly more than the underlying abstract idea. Patent Owner does not
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`point to any inventive concept in the ’516 patent related to the way these
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`memories or data types are constructed or used. In fact, the ’516 patent
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`simply discloses these memories and data types with no description of the
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`underlying implementation or programming. See Content Extraction and
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`Transmission LLC, 776 F.3d at 1347 (“The concept of data collection,
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`recognition, and storage is undisputedly well-known. Indeed, humans have
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`17
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`always performed these functions.”). This recitation of generic computer
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`memories and data types, being used in the conventional manner, is
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`insufficient to confer the specificity required to elevate the nature of the
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`claim into a patent-eligible application. Alice, 134 S. Ct. at 2355 (quoting
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`Mayo, 132 S. Ct. at 1294) (“We have described step two of this analysis as a
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`search for an ‘inventive concept’—i.e., an element or combination of
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`elements that is ‘sufficient to ensure that the patent in practice amounts to
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`significantly more than a patent on the [ineligible concept] itself.’”)
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`(brackets in original); Affinity Labs, No. 2015-2080, slip op. 10–11 (“The
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`claims do not go beyond ‘stating [the relevant] functions in general terms,
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`without limiting them to technical means for performing the functions that
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`are arguably an advance over conventional computer and network
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`technology.’”).
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`In addition, because the recited elements can be implemented on a
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`general purpose computer, the challenged claims do not cover a “particular
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`machine.” Pet. 76; see Bilski, 561 U.S. at 604–05 (stating that machine-or-
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`transformation test remains “a useful and important clue” for determining
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`whether an invention is patent eligible). And the challenged claims do not
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`transform an article into a different state or thing. Pet. 76–77.
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`Thus, we determine, the potentially technical elements of the
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`challenged claims are nothing more than “generic computer
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`implementations” and perform functions that are “purely conventional.”
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`Alice, 134 S. Ct. at 2358–59; Mayo, 132 S. Ct. at 1294.
`
`b.
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