Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 20
`Entered: November 10, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC. and GOOGLE, INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-001331
`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 Google’s challenge to claims 9 and 21 based on 35 U.S.C. § 101 in
`CBM2015-00132 was consolidated with this proceeding. Paper 10.
`
`
`Tel: 571-272-7822
`
`Paper 20
`Entered: November 10, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC. and GOOGLE, INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-001331
`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 Google’s challenge to claims 9 and 21 based on 35 U.S.C. § 101 in
`CBM2015-00132 was consolidated with this proceeding. Paper 10.
`
`
`
`CBM2015-00133
`Patent 8,336,772 B2
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Apple”) filed a Petition to institute covered business
`method patent review of claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24,
`27–29, 31, and 33–36 of U.S. Patent No. 8,336,772 B2 (Ex. 1001, “the ’772
`patent”) pursuant to § 18 of the Leahy-Smith America Invents Act (“AIA”).
`Paper 2 (“Pet.”).2 Smartflash LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 5 (“Prelim. Resp.”). On November 16, 2015, we instituted
`a covered business method patent review (Paper 7, “Institution Decision” or
`“Inst. Dec.”) based upon Apple’s assertion that claims 2–4, 6, 7, 9, 11–13,
`15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 are directed to patent ineligible
`subject matter under 35 U.S.C. § 101. Inst. Dec. 22.
`On May 8, 2015, Google Inc. (“Google”) filed a corrected Petition
`requesting covered business method patent review of claims 1, 5, 9, 10, 14,
`21, and 22 of the ’772 patent on the ground that they are directed to patent
`ineligible subject matter under 35 U.S.C. § 101. Google Inc. v. Smartflash
`LLC, Case CBM2015-00132 (Paper 6, “Google Petition”). On June 29,
`2015, Google filed a Motion for Joinder (CBM2015-00132, Paper 10)
`seeking to consolidate its challenge with earlier-filed petitions for covered
`business method patent reviews of the ’772 patent in Apple Inc. v.
`Smartflash LLC, Cases CBM2015-00031 and CBM2015-00032, which were
`instituted on May 28, 2015. See Apple Inc. v. Smartflash, LLC, Case
`CBM2015-00031, slip. op. at 19–20 (PTAB May 28, 2015) (Paper 11)
`(instituting review of claims 1, 5, 8, and 10 of the ’772 patent under 35
`U.S.C. § 101); and Apple Inc. v. Smartflash, LLC, Case CBM2015-00032,
`
`2 Pub. L. No. 112–29, 125 Stat. 284, 296–07 (2011).
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`2
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`CBM2015-00133
`Patent 8,336,772 B2
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`slip. op. at 18–19 (Paper 11) (instituting review of claims 14, 19, and 22 of
`the ’772 patent under 35 U.S.C. § 101). On December 1, 2015, we granted
`Google’s Petition and consolidated its challenge to claims 1, 5, 9, and 10
`with CBM2015-00031 and consolidated its challenge to claims 14, 21, and
`22 with CBM2015-00032. Google Inc. v. Smartflash LLC, Case CBM2015-
`00132 (Paper 14). Subsequently, we granted an unopposed request by Apple
`and Google (collectively, “Petitioner”) to consolidate Google’s challenge to
`claims 9 and 21 with CBM2015-00133 instead of with CBM2015-00031 and
`CBM2015-00032, respectively. Paper 10.
`Patent Owner filed a Patent Owner Response (Paper 21, “PO Resp.”)
`and Apple filed a Reply (Paper 25, “Reply”) to Patent Owner’s Response.
`Patent Owner, with authorization, filed a Notice of Supplemental
`Authority. Paper 33 (“Notice”). Apple and Google (collectively,
`“Petitioner”) filed a Response to Smartflash’s Notice. Paper 34 (“Notice
`Resp.”).
`We held a joint hearing of this this case and several other related cases
`on July 18, 2016. Paper 36 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21,
`23, 24, 27–29, 31, and 33–36 of the ’772 patent are directed to patent
`ineligible subject matter under 35 U.S.C. § 101.
`B. Related Matters
`The parties indicate that the ’772 patent is the subject of the following
`district court cases: Smartflash LLC v. Apple Inc., Case No. 6:15-cv-145
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`(E.D. Tex.); Smartflash LLC v. Google, Inc., Case No. 6:14-cv-435 (E.D.
`Tex.); Smartflash LLC v. Apple Inc., Case No. 6:13-cv-447 (E.D. Tex.);
`Smartflash LLC v. Samsung Electronics Co. Ltd., Case No. 6:13-cv-448
`(E.D. Tex.); and Smartflash LLC v. Amazon.Com, Inc., Case No. 6:14-cv-
`992 (E.D. Tex.). Pet. 34; Paper 4, 4.
`We have issued three previous Final Written Decisions in reviews
`challenging the ’772 patent. In CBM2015-00031, we found claims 1, 5, 8,
`and 10 unpatentable under 35 U.S.C. § 101. Apple Inc. v. Smartflash LLC,
`Case CBM2015-00031 (PTAB May 26, 2016) (Paper 45). In CBM2015-
`00032, we found claims 14, 19, and 22 unpatentable under 35 U.S.C. § 101.
`Apple Inc. v. Smartflash LLC, Case CBM2015-00032 (PTAB May 26, 2016)
`(Paper 46). In CBM2015-00033, we found claims 25, 26, 30, and 32
`unpatentable under 35 U.S.C. § 101. Apple Inc. v. Smartflash LLC, Case
`CBM2015-00033 (PTAB May 26, 2016) (Paper 40).
`
`C. 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. 1001, 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
`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
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`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 . . . .”).
`
`D. Illustrative Claims
`The claims under review are claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21,
`23, 24, 27–29, 31, and 33–36 of the ’772 patent. Inst. Dec. 22. Of the
`challenged claims, claims 35 and 36 are independent. Claims 2–4, 6, and 7
`depend from independent claim 1 (held unpatentable under § 101 in
`CBM2015-00031). Claims 9 and 11–13 depend from independent claim 8
`(held unpatentable under § 101 in CBM2015-00031). Claim 15–18 depend
`from claim 14 (held unpatentable under § 101 in CBM2015-00032). Claims
`20, 21, 23, and 24 depend from 19 (held unpatentable under § 101 in
`CBM2015-00032). Claims 27–29 depend from claim 25 (held unpatentable
`under § 101 in CBM2015-00033). Claims 31, 33, and 34 depend from claim
`30 (held unpatentable under § 101 in CBM2015-00033). Claim 36 is
`illustrative and recites the following:
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`Patent 8,336,772 B2
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`36. A data access device for retrieving stored data from
`a data carrier, the device comprising:
`a user interface;
`a data carrier interface;
`a program store storing code implementable by a
`processor; and
`a processor coupled to the user interface, to the data
`carrier interface and to the program store for implementing
`the stored code, the code comprising:
`code to retrieve use status data indicating a use
`status of data stored on the carrier, and use rules data
`indicating permissible use of data stored on the carrier;
`code to evaluate the use status data using the use
`rules data to determine whether access is permitted to the
`stored data;
`code to access the stored data when access is
`permitted; and
`code to write partial use status data to the data
`carrier when only part of a stored data item has been
`accessed,
`wherein the data access terminal is integrated with
`a mobile communication device, a personal computer, an
`audio/video player, and/or a set top box.
`Ex. 1001, 32:33–56.
`
`ANALYSIS
`
`A. Claim Construction
`In a covered business method patent review, claim terms are given
`their broadest reasonable interpretation in light of the specification in which
`they appear and the understanding of others skilled in the relevant art. See
`37 C.F.R. § 42.300(b). Applying that standard, we interpret the claim terms
`of the ’772 patent according to their ordinary and customary meaning in the
`
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`context of the patent’s written description. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes of this Decision, we
`need not construe expressly any claim term.
`
`B. Statutory Subject Matter
`Petitioner challenges claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24,
`27–29, 31, and 33–36 as directed to patent-ineligible subject matter under 35
`U.S.C. § 101. Pet. 41–79. According to the Petition, the challenged claims
`are directed to an abstract idea without additional elements that transform
`the claims into a patent-eligible application of that idea. Id. Petitioner
`submits a declaration from Dr. John P. J. Kelly in support of its Petition.3
`Ex. 1019. Patent Owner argues that the challenged claims are statutory
`because they are “‘rooted in computer technology in order to overcome a
`problem specifically arising in the realm of computer networks,’” that of
`“data piracy.” PO Resp. 2, 28 (citation omitted).
`
`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, the challenged claims recite a “machine”—i.e., a “handheld
`multimedia terminal” (claims 2–4, 6, 7, 15–18, and 27–29), a “data access
`
`
`3 In its Response, Patent Owner argues that this declaration should be given
`little or no weight. PO Resp. 5–15. Because Patent Owner has filed a
`Motion to Exclude (Paper 29) 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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`terminal” (claims 9, 11–13, 20, 21, 23, 24, 31, and 33–35), or a “data access
`device” (claim 36)—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, 132 S. Ct. 1289, 1293 (2012) “for
`distinguishing patents that claim laws of nature, natural phenomena, and
`abstract ideas from those that claim patent-eligible applications of these
`concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to
`“determine whether the claims at issue are directed to one of those patent-
`ineligible concepts.” Id.
`According to the Federal Circuit, “determining whether the section
`101 exception for abstract ideas applies involves distinguishing between
`patents that claim the building blocks of human ingenuity—and therefore
`risk broad pre-emption of basic ideas—and patents that integrate those
`building blocks into something more, enough to transform them into specific
`patent-eligible inventions.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793
`F.3d 1306, 1332 (Fed. Cir. 2015) (emphasis added); accord id. at 1333–34
`(“It is a building block, a basic conceptual framework for organizing
`information . . . .” (emphasis added)). This is similar to the Supreme Court’s
`formulation in Bilski v. Kappos, 561 U.S. 593, 611 (2010) (emphasis added),
`noting that the concept of risk hedging is “a fundamental economic practice
`long prevalent in our system of commerce.” See also buySAFE, Inc. v.
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`Google, Inc., 765 F.3d 1350, 1353–54 (Fed. Cir. 2014) (stating that patent
`claims related to “long-familiar commercial transactions” and relationships
`(i.e., business methods), no matter how “narrow” or “particular,” are
`directed to abstract ideas as a matter of law). As a further example, the
`“concept of ‘offer based pricing’ is similar to other ‘fundamental economic
`concepts’ found to be abstract ideas by the Supreme Court and [the Federal
`Circuit].” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed.
`Cir. 2015) (citations omitted).
`Petitioner argues that the challenged claims are directed to the abstract
`idea of “payment for and/or controlling access to content.” Pet. 42.
`Specifically, Petitioner contends that “claims 2–4, 6, 7, 9, 11–13, 15–18, 20,
`21, 23, 24, 27–29, 31, and 33–35 are drawn to the concepts of payment and
`controlling access, reciting ‘code to’ transmit payment data, receive payment
`validation data, retrieve or write data, and/or control access to data receive
`payment and control access to data,” and “claim 36 is drawn to the concept
`of controlling access to data, reciting ‘code to’ access stored data when
`access is permitted.” Id. at 44.
`We are persuaded that the challenged claims are drawn to a patent-
`ineligible abstract idea. Specifically, the challenged claims are directed to
`performing the fundamental economic practice of conditioning and
`controlling access to content. For example, claim 35 recites “code
`responsive to the payment validation data to retrieve data from the data
`supplier and to write the retrieved data into the data carrier.” Claim 36
`recites “code to evaluate the use status data using the use rules data to
`determine whether access is permitted to the stored data” and “code to
`access the stored data when access is permitted.”
`
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`As discussed above, the ’772 patent discusses addressing recording
`industry concerns of data pirates offering unauthorized access to widely
`available compressed audio recordings. Ex. 1001, 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 that
`data 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 supplier-defined access rules and
`validation of payment. Id. at 1:59–2:19.
`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 paying for and/or controlling access to content, as Petitioner contends. As
`discussed further below, this is a fundamental economic practice long in
`existence in commerce. See Bilski, 561 U.S. at 611.
`Patent Owner argues that the challenged claims are comprised of
`“various real-world structural components” (PO Resp. 18, 19), and therefore
`are “directed to a machine, not an abstract idea” (id. at 19). Patent Owner,
`however, cites no controlling authority to support the proposition that
`subject matter is patent-eligible as long as it is directed to “real-world
`handheld multimedia terminals and data access terminals/devices that are
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`specialized machines.” Id. at 22. As Petitioner correctly points out (Pet.
`Reply 2–3), 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 Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2358-59 (2014)
`(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,
`LLC, CBM2015-00147. PO Resp. 20–22. 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
`media work with [an 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 (Oct. 19, 2015), (Paper 7,
`13). Patent Owner argues that some of the challenged claims are like those
`at issue in CBM2015-00113 because they “require[] code to request
`identifier data that similarly is used to identify an item of multimedia content
`or a data item.” PO Resp. 21. 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
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`different than the abstract idea alleged by Petitioner in that proceeding.
`CBM2015-00113, Paper 7, 12–13. In this case, none of the challenged
`claims recite a specific search process by which use rules would be
`correlated with multimedia content or a data item. Claims 35 and 36 do not
`recite “code to request identifier data.” And even for those challenged
`claims that do recite “code to request identifier data,” reciting “request[ing]”
`and “present[ing]” a content data item does not 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. 21–22. 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 (Nov. 30, 2015) (Paper 14, 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
`challenged claims, according to Patent Owner, are “directed to specific
`organization of data and defined sequences of transaction steps with distinct
`advantages over alternatives” (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) (emphasis added by Patent Owner).
`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.”
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`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 and/or rules. Notice Resp.
`2–3 (quoting In re TLI Communications LLC Patent Litigation, 823 F.3d at
`612–15). The limitations of the challenged claims—e.g., “code to retrieve,”
`“code to evaluate,” “code to access,” and “code to write partial use status
`data” (claim 36)—are so general that they
`do 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
`op. 7 (Fed. Cir. Sept. 23, 2016) (citation omitted).
`We are, thus, persuaded, based on the Specification and the language
`of the challenged claims, that claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23,
`24, 27–29, 31, and 33–36 of the ’772 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”).
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`1. 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 and
`activities, which is insufficient to establish an inventive concept.” Pet.
`Reply 5. We are persuaded that claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21,
`23, 24, 27–29, 31, and 33–36 of the ’772 patent do not add an inventive
`concept sufficient to ensure that the patent in practice amounts to
`significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct.
`at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims
`directed to the abstract idea of “generating tasks [based on] rules . . . to be
`completed upon the occurrence of an event” to be unpatentable even when
`applied in a computer environment and within the insurance industry).
`Specifically, we agree with and adopt 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
`challenged claims within § 101 patent eligibility. Pet. 50–76.
`
`a. Technical Elements
`Petitioner argues that the challenged claims are unpatentable because
`they “are directed only to an abstract idea with nothing more than ‘well-
`understood, routine, conventional activity’ added.” Pet. 51 (citations
`omitted). Patent Owner disagrees, arguing that the challenged claims are
`patentable because they recite “specific ways of using distinct memories,
`data types, and use rules that amount to significantly more than the
`underlying abstract idea.” PO Resp. 56 (quoting Ex. 2049, 19). We agree
`with Petitioner for the following reasons.
`The ’772 patent treats as well-known all potentially technical aspects
`of the challenged claims, which simply require generic computer
`components (e.g., interfaces, memory, program store, and processor). See
`Pet. Reply 5–12 (citing Ex. 1001, 4:7–12, 11:33–35, 12:37–40, 13:43–46,
`16:13–26, 16:40–44, 16:55–59, 18:14–20, 24:25–27). 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. 1001, 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. The Specification also describes
`the “data access terminal” recited in claims 9, 11–13, 20, 21, 23, 24, 31, and
`
`15
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`CBM2015-00133
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`33–35 as “conventional.” Id. at 4:7–8 (“The data access terminal may be a
`conventional computer or, alternatively, it may be a mobile phone.”).
`Moreover, on this record, Patent Owner has not argued persuasively that any
`of the other potentially technical additions to the claims performs a function
`that is anything other than “purely conventional.” Alice, 134 S. Ct. at 2359.
`The use of a program store and the linkage of existing hardware devices
`appear to be “‘well-understood, routine, conventional activit[ies]’ previously
`known to the industry.” Alice, 134 S. Ct. at 2359; Mayo, 132 S. Ct. at 1294.
`Further, the claimed computer code performs generic computer
`functions, such as requesting, receiving, presenting, and controlling access to
`(claim 8 from which challenged claims 9 and 11–13 depend). See Pet. 54–
`57. The recitation of these generic computer functions is insufficient to
`confer specificity. See Content Extraction and Transmission LLC v. Wells
`Fargo Bank, Nat’l 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 the challenged claims “recite
`specific ways of using distinct memories, data types, and use rules that
`amount to significantly more than” paying for and/or controlling access to
`content. See PO Resp. 56 (quoting Ex. 2049, 19). The challenged claims
`generically recite several memories, including “a program store,” “flash
`memory,” and “non-volatile memory,” and generically recite several data
`types, including “multimedia content,” “content data item,” “use rules,”
`“code,” “payment data,” and “use status data.” We are not persuaded that
`the recitation of these memories and data types, by itself, amounts to
`significantly more than the underlying abstract idea. Patent Owner does not
`
`16
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`CBM2015-00133
`Patent 8,336,772 B2
`
`point to any inventive concept in the ’772 patent related to the way these
`memories or data types are constructed or used. In fact, the ’772 patent
`simply discloses these memories and data types with no description of the
`underlying implementation or programming. See Content Extraction and
`Transmission LLC, 776 F.3d at 1347 (“The concept of data collection,
`recognition, and storage is undisputedly well-known. Indeed, humans have
`always performed these functions.”). This recitation of generic computer
`memories and data types, being used in the conventional manner, is
`insufficient to confer the specificity required to elevate the nature of the
`claim into a patent-eligible application. Alice, 134 S. Ct. at 2355 (quoting
`Mayo, 132 S. Ct. at 1294) (“We have described step two of this analysis as a
`search for an ‘inventive concept’—i.e., an element or combination of
`elements that is ‘sufficient to ensure that the patent in practice amounts to
`significantly more than a patent on the [ineligible concept] itself.’”)
`(brackets in original); Affinity Labs, No. 2015-2080, slip op. 10–11 (“The
`claims do not go beyond ‘stating [the relevant] functions in general terms,
`without limiting them to technical means for performing the functions that
`are arguably an advance over conventional computer and network
`technology.’”).
`In addition, because the recited elements can be implemented on a
`general purpose computer, the challenged claims do not cover a “particular
`machine.” Pet. 78; see Bilski, 561 U.S. at 604–05 (stating that machine-or-
`transformation test remains “a useful and important clue” for determining
`whether an invention is patent eligible). And the challenged claims do not
`transform an article into a different state or thing. Pet. 78–79.
`
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`CBM2015-00133
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`Thus, we determine, the potentially technical elements of the
`challenged claims are nothing more than “generic computer
`implementations” and perform functions that are “purely conventional.”
`Alice, 134 S. Ct. at 2358–59; Mayo, 132 S. Ct. at 1294.
`
`b. DDR Holdings
`Relying on the Federal Circuit’s decision in DDR Holdings, Patent
`Owner asserts that the challenged claims are directed to statutory subject
`matter because the claimed solution is “‘necessarily rooted in computer
`technology in order to overcome a problem specifically arising in the realm
`of computer networks.’” PO Resp. 2, 27 (quoting DDR Holdings, LLC v.
`Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Patent Owner
`contends that
`By using a system that combines on the handheld multimedia
`terminal / data access terminal both the digital content and use
`status data / use rules to control access to the digital content,
`access control to the digital content can be enforced prior to
`access to the digital content. By comparison, unlike a system
`that uses use status data / use rules to control access to the digital
`content as claimed, when a DVD was physically rented for a
`rental period, the renter could continue to play the DVD, even if
`the renter kept the DVD past the rental period because the use
`rules were not associated with the DVD. Similarly, there was
`no way to track a use of the DVD such that a system could
`limit its playback to specific number of times (e.g., three
`times) or determine that the DVD had only been partially
`used.
`Id. at 17–18 (emphasis original).
`Petitioner responds that the challenged claims are distinguishable
`from the claims in DDR Holdings. Pet. Reply 12–15. The DDR Holdings
`patent is directed at retaining website visitors when clicking on an
`
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`advertisement hyperlink within a host website. 773 F.3d at 1257.
`Conventionally, clicking on an advertisement hyperlink would transport a
`visitor from the host’s website to a third party website. Id. The Federal
`Circuit distinguished this Internet-centric problem over “the ‘brick and
`mortar’ context” because “[t]here is . . . no possibility that by walking up to
`[a kiosk in a warehouse store], the customer will be suddenly and completely
`transported o
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