`
`
`
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 35
`Entered: January 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE, INC.,
`Petitioner
`
`and
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-001261
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`1 CBM2015-00126 has been consolidated with CBM2015-00130.
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`INTRODUCTION
`Google, Inc., filed a Petition to institute covered business method
`patent review of claim 3 of U.S. Patent No. 8,118,221 B2 (“the ’221
`patent”). CBM2015-00126, Paper 32 (“’126 Pet.”). Apple Inc., also filed a
`Petition to institute covered business method patent review of claims 3–10,
`12–31, and 33 of the ’221 patent. CBM2015-00130, Paper 2 (“Pet.”). On
`November 16, 2015, we instituted a covered business method patent review
`in CBM2015-00126 (Paper 8, “’126 Institution Decision” or “’126 Inst.
`Dec.”) based upon Google’s assertion that claim 3 is directed to patent
`ineligible subject matter under 35 U.S.C. § 101. CBM2015-00126, Inst.
`Dec. 19. The same day we instituted a covered business method patent
`review in CBM2015-00130 (Paper 9, “Institution Decision” or “Inst. Dec.”)
`based upon Apple’s assertion that claims 3–10, 15–31, and 33 are directed to
`patent ineligible subject matter under 35 U.S.C. § 101 and that claim 22 is
`indefinite under 35 U.S.C. § 112. CBM2015-00130, Inst. Dec. 25.
`Subsequent to institution, Smartflash LLC (“Patent Owner”) filed
`Patent Owner Responses (CBM2015-00126, Paper 21 (“’126 PO Resp.”);
`CBM2015-00130, Paper 19 (“PO Resp.”) and Google and Apple each filed
`Replies (CBM2015-00126, Paper 22 (“’126 Reply”); CBM2015-00130,
`Paper 23 (“Reply”) to Patent Owner’s Response, respectively.
`
`
`2 Google filed two versions of the Petition: Paper 2, which is sealed and
`accessible to the parties and Board only, and Paper 3, which is a public
`version of the Petition containing a small portion of redacted text. For
`purposes of this Decision, we refer only to the public version of the Petition.
`
`2
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`Patent Owner, with authorization, filed Notices of Supplemental
`Authority. CBM2015-00126, Paper 28; CBM2015-00130, Paper 30
`(“Notice”). Google and Apple each filed Responses to Patent Owner’s
`Notices, respectively. CBM2015-00126, Paper 29 (“126 Notice Resp.”);
`CBM2015-00130, Paper 31 (“Notice Resp.”).
`In our Final Decision, we determined Petitioner had established, by a
`preponderance of the evidence, that claims 3–10, 15–31, and 33 of the ’221
`patent are directed to patent ineligible subject matter under 35 U.S.C. § 101.
`CBM2015-00130, Paper 33 (“Final Dec.”).3 We also determined that claim
`22 is indefinite under 35 U.S.C. § 112. Patent Owner requests rehearing of
`the Final Decision with respect to patent ineligibility of the challenged
`claims under § 101. Paper 34 (“Request” or “Req. Reh’g”), 3 n.2. Having
`considered Patent Owner’s Request, we decline to modify our Final
`Decision.
`
`STANDARD OF REVIEW
`In covered business method review, the petitioner has the burden of
`showing unpatentability by a preponderance of the evidence. 35 U.S.C.
`§ 326(e). The standard of review for rehearing requests is set forth in 37
`C.F.R. § 42.71(d), which states:
`The burden of showing a decision should be modified lies with
`the party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`
`
`3 Unless otherwise noted (using “’126” prior to the citation), all future
`citations in this Decision are to CBM2015-00130.
`
`3
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`ANALYSIS
`Patent Owner’s Request is based on a disagreement with our
`determination that the challenged claims are directed to patent-ineligible
`subject matter. Req. Reh’g 3.
`In its Request, Patent Owner initially presents arguments directed to
`alleged similarities between the challenged claims and those at issue in DDR
`Holdings4, Enfish5, and Bascom6. Id. at 5–11. Those cases were each
`addressed in the Patent Owner Response or Patent Owner’s Notice, as well
`as in our Final Decision. See, e.g., Final Dec. 12–14, 19–25. As noted
`above, our rules require that the requesting party “specifically identify all
`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed in a motion, an
`opposition, or a reply.” 37 C.F.R. 42.71(d) (emphasis added). In its
`Request, however, Patent Owner does not identify any specific matter that
`we misapprehended or overlooked. Although Patent Owner repeatedly
`states that the Board “misapprehends” Smartflash’s argument (see, e.g., Req.
`Reh’g 5, 10), it does not offer sufficient explanation as to how we
`misapprehended or overlooked any particular “matter [that] was previously
`addressed in a motion, an opposition, or a reply.” Rather than providing a
`proper request for rehearing, addressing particular matters that we
`
`
`4 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
`5 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
`6 BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC, 827 F.3d
`1341 (Fed. Cir. 2016).
`
`4
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`previously allegedly misapprehended or overlooked, Patent Owner’s
`Request provides new briefing by expounding on argument already made.
`To the extent portions of the Request are supported by Patent Owner’s
`argument in the Patent Owner Response or in Patent Owner’s Notice, we
`considered those arguments in our Final Decision, as Patent Owner
`acknowledges. See, e.g., Req. Reh’g 5, 7, 9–10 (noting that the Board
`“rejected” Smartflash’s argument with respect to each of DDR Holdings,
`Enfish, and Bascom). Our Final Decision, as noted above, addresses Patent
`Owner’s arguments related to DDR Holdings (Final Dec. 19–23), Enfish (id.
`at 12–14), and Bascom (id. at 24–25). Patent Owner’s Request is simply
`based on disagreement with our Final Decision, which is not a proper basis
`for rehearing.
`Patent Owner also presents new arguments directed to alleged
`similarities between the challenged claims and those addressed in McRO7
`and Amdocs8, which were issued after Patent Owner’s Notice was filed.
`Req. Reh’g 11–15. Patent Owner alleges that we overlooked the Federal
`Circuit’s decisions in McRO and Amdocs. Id. at 2. The decisions in those
`cases issued before our Final Decision and, although not specifically
`referenced, were considered when we determined that the challenged claims
`are patent-ineligible.
`
`
`7 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
`2016).
`8 Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
`2016).
`
`5
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`When addressing McRO, Patent Owner does little, if anything, to
`analogize those claims to the challenged claims, other than summarizing the
`discussion in McRO (id. at 11–13), and concluding that
`[b]ecause the challenged claims are a technological improvement
`over the then-existing systems, and limit transfer and retrieval of
`content based on payment and/or access rules in a process
`specifically designed to achieve an improved technological result
`in conventional industry practice, the challenged claims are not
`directed to an abstract idea.
`Id. at 13–14 (citing Ex. 1001, 25:59–61 (claim 1), 26:42–67 (claim 15),
`27:36–55). But McRO does not stand for the general proposition that use of
`rules or conditions to achieve an improved technological result, alone,
`removes claims from the realm of abstract ideas. In McRO, the Court
`explained that “the claimed improvement [was] allowing computers to
`produce ‘accurate and realistic lip synchronization and facial expressions in
`animated characters’ that previously could only be produced by human
`animators.” Id. at 1313 (citation omitted). The Court explained that the
`claimed rules in McRO transformed a traditionally subjective process
`performed by human artists into a mathematically automated process
`executed on computers (i.e., the processes were fundamentally different).
`Id. at 1314. The Court explained that “it [was] the incorporation of the
`claimed rules, not the use of the computer, that ‘improved [the] existing
`technological process’ by allowing the automation of further tasks.” Id. at
`1314 (alteration in original) (quoting Alice Corp. Pty. Ltd. v. CLS Bank
`Int’l., 134 S. Ct. 2347, 2358 (2014)). The Court distinguished this from
`situations “where the claimed computer-automated process and the prior
`method were carried out in the same way.” Id. (citing Parker v. Flook, 437
`
`6
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`U.S. 584, 585–86 (1978); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Alice,
`134 S. Ct. at 2356)).
`As explained in our Final Decision, the challenged claims “merely
`implement an old practice in a new environment.” Final Dec. 13 (quoting
`FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1094 (Fed. Cir.
`2016)). The challenged claims are similar to the claims found ineligible in
`FairWarning, which the Court distinguished from those at issue McRO.
`FairWarning, 839 F.3d at 1094–95. In FairWarning, the Court explained
`that “[t]he claimed rules ask . . . the same questions . . . that humans in
`analogous situations . . . have asked for decades, if not centuries” and that it
`is the “incorporation of a computer, not the claimed rule, that purportedly
`‘improve[s] [the] existing technological process.’” Id. at 1095 (citing Alice,
`134 S. Ct. at 2358). This is similar to the challenged claims, where the
`“code responsive to the payment validation data to retrieve data from the
`supplier and to write the retrieved data into the data carrier” of claim 1 and
`the steps of “receiving payment validation data and transmitting at least a
`portion of the payment validation to the data supplier,” “reading a stored
`value from the data carrier,” “comparing the store value with said value
`data,” and “outputting to a user the result of said comparing” of claim 15
`describe “performing generic computer functions such as storing, receiving,
`and extracting data” that “behave exactly as expected according to their
`ordinary use.” In re TLI Communications LLC Patent Litigation, 823 F.3d
`607, 612–15 (Fed. Cir. 2016).
`With respect to Amdocs, after generally summarizing that case, Patent
`Owner concludes that “the challenged claims of the ’221 Patent are like the
`
`7
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`eligible claim in Amdocs because they solve a problem unique to computer
`networks . . . and use[] an unconventional technological approach.” Req.
`Reh’g 15 (citing PO Resp. 45). We disagree.
`In Amdocs, the Court held that “[claim 1] is eligible under step two
`because it contains a sufficient ‘inventive concept.’” Amdocs, 841 F.3d at
`1300. The claim at issue recited “computer code for using the accounting
`information with which the first network accounting record is correlated to
`enhance the first network accounting record.” Id. The Court explained that
`the “claim entails an unconventional technological solution (enhancing data
`in a distributed fashion) to a technological problem (massive record flows
`which previously required massive databases).” Id. The Court noted that,
`although the solution requires generic computer components, “the claim’s
`enhancing limitation necessarily requires that these generic components
`operate in an unconventional manner to achieve an improvement in
`computer functionality.” Id. at 1300–1301. When determining that the
`claim was patent-eligible, the Court explained that the “enhancing limitation
`necessarily involves the arguably generic gatherers, network devices, and
`other components working in an unconventional distributed fashion to solve
`a particular technological problem.” Id. at 1301. The Court distinguished
`the claim from the claim held unpatentable in Content Extraction &
`Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed.
`Cir. 2014) on the grounds that the “enhancing limitation . . . necessarily
`incorporates the invention’s distributed architecture—an architecture
`providing a technological solution to a technological problem,” which
`“provides the requisite ‘something more’ than the performance of ‘well-
`
`8
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`understood, routine, [and] conventional activities previously known to the
`industry.’” Id. (citations omitted).
`We are not persuaded that we misapprehended Amdocs. As noted in
`our Final Decision, “[t]he ’221 patent Specification treats as well-known all
`potentially technical aspects of the challenged claims,” which simply require
`generic computer components. Final Dec. 16. Unlike the generic
`components at issue in Amdocs, the generic components recited in 3–10, 15–
`31, and 33 of the ’221 patent do not operate in an unconventional manner to
`achieve an improvement in computer functionality. See id. at 17–21. The
`challenged claims of the ’221 patent simply recite generic memories, data
`types, processors, and “code to” perform well-known functions with no
`description of the underlying implementation or programming. See id. at
`14–19.
`Accordingly, Patent Owner’s Request does not apprise us of sufficient
`reason to modify our Final Decision.
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Request is denied.
`
`
`
`9
`
`
`
`Case CBM2015-00126
`Case CBM2015-00130
`Patent 8,118,221 B2
`
`PETITIONER:
`J. Steven Baughman
`Megan F. Raymond
`James R. Batchelder
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`megan.raymond@ropesgray.com
`james.batchelder@ropesgray.com
`
`PATENT OWNER:
`
`Michael R. Casey
`Wayne Helge
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`smartflash-cbm@dbjg.com
`whelge@davidsonberquist.com
`
`10
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
