Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 21
`Entered: May 26, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC., SAMSUNG ELECTRONICS LTD,
`SAMSUNG ELECTRONICS AMERICA, INC., and GOOGLE INC.,
`Petitioner,1
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-000322
`Patent 8,336,772 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`1 “Petitioner” refers collectively to Apple Inc,, Samsung Electronics LTD,
`Samsung Electronics America, Inc., and Google Inc.
`
`2 Samsung’s challenge to claim 14 of US Patent No. 8,336,772 B2 (“the
`’772 patent”) in CBM2015-00059 was consolidated with this proceeding.
`Paper 24, 9. Google’s challenge to claims 14 and 22 of the ’772 patent in
`CBM2015-00132 was consolidated with this proceeding. Paper 31, 11;
`Paper 38, 2–3.
`
`1
`
`

`
`CBM2015-00032
`Patent 8,336,772 B2
`
`A. Background
`
`INTRODUCTION
`
`Petitioner Apple Inc. filed a Corrected Petition to institute covered
`
`business method patent review of claims 14, 19, and 22 of U.S. Patent No.
`
`8,336,772 B2 (Ex. 1301, “the ’772 patent”) pursuant to § 18 of the Leahy-
`
`Smith America Invents Act (“AIA”). Paper 5 (“Pet.”). Patent Owner,
`
`Smartflash LLC (“Smartflash”), filed a Preliminary Response. Paper 8
`
`(“Prelim. Resp.”). On May 28, 2015, we instituted a covered business
`
`method patent review (Paper 11, “Institution Decision” or “Inst. Dec.”)
`
`based upon Petitioner’s assertion that claims 14, 19, and 22 are directed to
`
`patent ineligible subject matter under 35 U.S.C. § 101. Inst. Dec. 18.
`
`Subsequent to institution, Smartflash filed a Patent Owner Response
`
`(Paper 23, “PO Resp.”) and Petitioner filed a Reply (Paper 26, “Reply”) to
`
`Patent Owner’s Response.
`
`On January 15, 2015, Petitioner Samsung Electronics America, Inc.
`
`and Samsung Electronics, Co., Ltd. (collectively, “Samsung”) filed a
`
`Petition to institute covered business method patent review of claims 5, 10,
`
`14, 26, and 32 of the ’772 patent on the ground that they are directed to
`
`patent ineligible subject matter under 35 U.S.C. § 101. Samsung Electronics
`
`America, Inc. and Samsung Electronics, Co., Ltd. v. Smartflash LLC, Case
`
`CBM2015-00059 (Paper 2, “Samsung Petition”). On June 29, 2015,
`
`Samsung filed a Motion for Joinder ((CBM2015-00059, Paper 11) seeking
`
`to consolidate its challenge to claim 14 with the covered business method
`
`patent review in CBM2015-00032.3 On August 5, 2015, we granted
`
`
`3 Samsung’s Motion requested that: its challenge to claim 14 be consolidated
`with this case; its challenge to challenge to claims 5 and 10 be consolidated
`
`2
`
`
`

`
`CBM2015-00032
`Patent 8,336,772 B2
`
`Samsung’s Petition and consolidated Samsung’s challenge to claim 14 of the
`
`’772 patent with this proceeding. Paper 24; Samsung Electronics America,
`
`Inc. and Samsung Electronics, Co., Ltd. v. Smartflash LLC, Case CBM2015-
`
`00059, slip. op. at 9 (PTAB Aug. 55, 2015) (Paper 13).
`
`On May 8, 2015, Petitioner Google Inc. filed a Petition to institute
`
`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 64, “Google Petition”). On June 29, 2015, Google
`
`filed a “Motion for Joinder” of its newly filed case with previously instituted
`
`Petitioner cases CBM2015-00031 and CBM2015-00032. CBM2015-00132
`
`(Paper 10, “Google Mot.”). On December 1, 2015, we granted Google’s
`
`Petition and consolidated Google’s challenge to claims 14, 19, 21, and 22 of
`
`the ’772 patent with this proceeding.5 Paper 31; Google Inc. v. Smartflash
`
`LLC, Case CBM2015-00132, slip. op. 11 (PTAB Dec. 1, 2015) (Paper 14).
`
`Google’s challenge to claims 1, 5, 9, and 10 of the ’772 patent were
`
`consolidated with CBM2015-00031. On December 16, 2015, we revised our
`
`institution order to consolidate Google’s challenge to claims 9 and 21 with
`
`
`be consolidated with CBM2015-00031, and that its challenge to claims 26
`and 32 be consolidated with CBM2015-00033. CBM2015-00031 and
`CBM2015-00033 were both filed by Petitioner and involve claims 1, 5, 8,
`and 10, and claims 25, 26, 30, and 32, respectively, of the ’772 patent. Final
`Written Decisions in CBM2015-00031 and CBM2015-00033 are issued
`concurrently with this Decision.
`
`4 We refer to the redacted version of the Petition.
`
`5 For purposes of this Decision, we will cite only to Petitioner’s Petition and
`the record in CBM2015-00032.
`
`3
`
`
`

`
`CBM2015-00032
`Patent 8,336,772 B2
`
`CBM2015-00133, instead of with CBM2015-00031 and this proceeding,
`
`respectively. Paper 38, 3.
`
`
`
`An oral hearing was held on January 6, 2016, and a transcript of the
`
`hearing is included in the record (Paper 44, “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 14, 19, and 22 of the ’772 patent
`
`are directed to patent ineligible subject matter under 35 U.S.C. § 101.
`
`B. The ’772 Patent
`
`The ’772 patent relates to “a portable data carrier for storing and
`
`paying for data and to computer systems for providing access to data to be
`
`stored” and the “corresponding methods and computer programs.”
`
`Ex. 1301, 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
`
`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
`
`4
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`

`
`CBM2015-00032
`Patent 8,336,772 B2
`
`’772 patent makes clear that the actual implementation of these components
`
`is not critical and the alleged invention may be implemented in many ways.
`
`See, e.g., id. at 25:59–62 (“The skilled person will understand that many
`
`variants to the system are possible and the invention is not limited to the
`
`described embodiments . . . .”).
`
`C. Illustrative Claims
`
`Petitioner challenges claims 14, 19, and 22 of the ’772 patent. Claims
`
`14 and 19 are independent and claim 22 depends from claim 19. Claims 14
`
`and 19 are reproduced below:
`
`14. A handheld multimedia terminal, comprising:
`
`a wireless interface configured to interface with a wireless
`network for communicating with a data supplier;
`
`non-volatile memory configured to store multimedia
`content, wherein said multimedia content comprises one or more
`of music data, video data and computer game data;
`
`a program store storing processor control code;
`
`a processor coupled to said non-volatile memory, said
`program store, said wireless interface and a user interface to
`allow a user to select and play said multimedia content;
`
`a display for displaying one or both of said played
`multimedia content and data relating to said played multimedia
`content;
`
`wherein the processor control code comprises:
`
`code to request identifier data identifying one or more
`items of multimedia content available for retrieving via said
`wireless interface;
`
`code to receive said identifier data via said wireless
`interface, said identifier data identifying said one or more items
`of multimedia content available for retrieving via said wireless
`interface;
`
`5
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`

`
`CBM2015-00032
`Patent 8,336,772 B2
`
`code to request content information via said wireless
`interface, wherein said content information comprises one or
`more of description data and cost data pertaining to at least one
`of said one or more items of multimedia content identified by
`said identifier data;
`
`code to receive said content information via said wireless
`interface;
`
`code to present said content information pertaining to said
`identified one or more items of multimedia content available for
`retrieving to a user on said display;
`
`code to receive a user selection selecting at least one of
`said one or more items of multimedia content available for
`retrieving;
`
`code responsive to said user selection of said selected at
`least one item of multimedia content to transmit payment data
`relating to payment for said selected at least one item of
`multimedia content via said wireless interface for validation by a
`payment validation system;
`
`code to receive payment validation data via said wireless
`interface defining if said payment validation system has
`validated payment for said selected at least one item of
`multimedia content; and
`
`code responsive to said payment validation data to retrieve
`said selected at least one item of multimedia content via said
`wireless interface from a data supplier and to write said retrieved
`at least one item of multimedia content into said non-volatile
`memory,
`
`wherein said user interface is operable to enable a user to
`select said selected at least one item of multimedia content
`available for retrieving.
`
`Ex.1301, 27:55–28:39.
`
`19. A data access terminal for retrieving a content data item
`from a data supplier and providing the retrieved data item to a
`data carrier, the data access terminal comprising:
`
`a first interface for communicating with the data supplier;
`
`a user interface;
`
`6
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`

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`CBM2015-00032
`Patent 8,336,772 B2
`
`a data carrier interface;
`
`a program store storing code implementable by a
`processor; and
`
`a processor coupled to the user interface, to the data carrier
`interface and to the program store for implementing the stored
`code, the code comprising:
`
`code to request identifier data identifying one or more
`content data items available for retrieving;
`
`code to receive said identifier data identifying said one or
`more content data items available for retrieving;
`
`code to request content information pertaining to at least
`one of said one or more content data items identified by said
`identified data;
`
`code to receive said content information;
`
`code to present said content information to a user via said
`user interface pertaining to said identified one or more content
`data items available for retrieving;
`
`code to receive a user selection selecting at least one of
`said one or more of said content data items available for
`retrieving;
`
`code responsive to said user selection of said selected at
`least one content data item to transmit payment data relating to
`payment for said selected at least one content item for validation
`by a payment validation system;
`
`code to receive payment validation data defining if said
`payment validation system has validated payment for said
`selected at least one content data item; and
`
`code responsive to the payment validation data to retrieve
`said selected at least one content data item from a data supplier
`and to write said retrieved at least one content data item into said
`data carrier..
`
`Ex. 1301, 28:55–29:25.
`
`ANALYSIS
`
`7
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`

`
`CBM2015-00032
`Patent 8,336,772 B2
`
`A. Claim Construction
`
`Consistent with the statute and the legislative history of the AIA,6 the
`
`Board interprets claim terms in an unexpired patent according to the
`
`broadest reasonable construction in light of the specification of the patent in
`
`which they appear. See In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
`
`1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC
`
`v. Lee, 136 S. Ct. 890 (mem.) (2016); 37 C.F.R. § 42.100(b). Under that
`
`standard, and absent any special definitions, we give claim terms their
`
`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art at the time of the invention. See In re Translogic Tech., Inc.,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim
`
`terms must be set forth with reasonable clarity, deliberateness, and precision.
`
`See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`For purposes of this Decision, we do not need to expressly construe
`
`any claim term.
`
`B. Statutory Subject Matter
`
`Petitioner challenges claims 14, 19, and 22 as directed to patent-
`
`ineligible subject matter under 35 U.S.C. § 101. Pet. 20–33. Petitioner
`
`submits a Declaration from Anthony J. Wechselberger (“Wechselberger
`
`Declaration”)7 in support of its petition. Ex. 1319.
`
`
`6 Leahy-Smith America Invents Act, Pub. L. No. 11229, 125 Stat. 284
`(2011) (“AIA”).
`
`7 In its Response, Patent Owner argues that the Wechselberger Declaration
`should be given little or no weight. PO Resp. 4–11. Because Patent Owner
`has filed a Motion to Exclude that includes a request to exclude the
`Wechselberger Declaration in its entirety, or in the alternative, portions of
`the Declaration based on essentially the same argument, we address Patent
`Owner’s argument as part of our analysis of the motion, discussed below.
`
`8
`
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`

`
`CBM2015-00032
`Patent 8,336,772 B2
`
`According to Petitioner, claims 14, 19, and 22 are directed to an
`
`abstract idea and do not disclose an “inventive concept” that is “significantly
`
`more” than the abstract idea. Pet. 20–33. Smartflash argues that claims 14,
`
`19, and 22 are directed to statutory subject matter because they are “‘rooted
`
`in computer technology in order to overcome a problem specifically arising
`
`in the realm of computer networks’ – that of digital data piracy.” PO Resp.
`
`18 (citation omitted). Specifically, Smartflash asserts that “the claims are
`
`directed to particular devices that can download and store digital content into
`
`non-volatile memory / a data carrier.” Id. at 17.
`
`1. Abstract Idea
`
`Under 35 U.S.C. § 101, we must first identify whether an invention
`
`fits within one of the four statutorily provided categories of patent-
`
`eligibility: “processes, machines, manufactures, and compositions of
`
`matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713–714 (Fed. Cir.
`
`2014). Here, claim 14 recites a “handheld multimedia terminal” and claims
`
`19 and 22 recite a “data access terminal,” which fall into the “machine”
`
`category under § 101. Section 101, however, “contains an important
`
`implicit exception [to subject matter eligibility]: Laws of nature, natural
`
`phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
`
`CLS Bank Int’l., 134 S. Ct. 2347, 2354 (2014) (citing Assoc. for Molecular
`
`Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal
`
`quotation marks and brackets omitted)). In Alice, the Supreme Court
`
`reiterated the framework set forth previously in Mayo Collaborative Services
`
`v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1293 (2012) “for
`
`distinguishing patents that claim laws of nature, natural phenomena, and
`
`abstract ideas from those that claim patent-eligible applications of those
`
`concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to
`
`9
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`CBM2015-00032
`Patent 8,336,772 B2
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`“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 1333–1334
`
`(“It is a building block, a basic conceptual framework for organizing
`
`information . . . .” (emphasis added)). This is similar to the Supreme Court’s
`
`formulation in Bilski v. Kappos, 561 U.S. 593, 611 (2010) (emphasis added),
`
`noting that the concept of risk hedging is “a fundamental economic practice
`
`long prevalent in our system of commerce.” See also buySAFE, Inc. v.
`
`Google, Inc., 765 F.3d 1350, 1353–54 (Fed. Cir. 2014) (stating that patent
`
`claims related to “long-familiar commercial transactions” and relationships
`
`(i.e., business methods), no matter how “narrow” or “particular,” are
`
`directed to abstract ideas as a matter of law). As a further example, the
`
`“concept of ‘offer based pricing’ is similar to other ‘fundamental economic
`
`concepts’ found to be abstract ideas by the Supreme Court and [the Federal
`
`Circuit].” OIP Tech., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed.
`
`Cir. 2015) (citations omitted).
`
`Petitioner argues that claims 14, 19, and 22 are directed to the abstract
`
`idea of “paying for and controlling access to content.” Pet. 21; see id. at 23–
`
`25. Although Smartflash does not concede, in its Patent Owner Response,
`
`that claims 14, 19, and 22 are directed to an abstract idea, it does not
`
`persuasively explain how the challenged claims escape being classified as
`
`10
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`

`
`CBM2015-00032
`Patent 8,336,772 B2
`
`abstract. PO Resp. 16–27 (Patent Owner Response arguing that claims are
`
`statutory under only the second step of Mayo and Alice); see also Tr. 7:19–
`
`22 (Petitioner stating that “Patent Owner has made no argument that its
`
`claims are not directed to abstract ideas under the first prong of Mayo and
`
`Alice.”) (emphasis added),), id. at 7:22–23 (Petitioner also stating “[Patent
`
`Owner] has never disputed the articulation of those abstract ideas”).
`
`We are persuaded that claims 14, 19, and 22 are drawn to the abstract
`
`idea of conditioning and controlling access to content based on, for example,
`
`payment. Specifically, independent claim 14 recites “code responsive to
`
`said user selection of said selected at least one item of multimedia content to
`
`transmit payment data relating to payment for said selected at least one item
`
`of multimedia content.” Independent claim 19 is similar and recites “code
`
`responsive to said user selection of said selected at least one content data
`
`item to transmit payment data relating to payment for said selected at least
`
`one content item.” Claim 22 depends from claim 19 and recites “wherein
`
`said data access terminal is integrated with a mobile communications device
`
`and audio/video player.”
`
`Furthermore, as discussed above, the ’772 patent discusses addressing
`
`recording industry concerns of data pirates offering unauthorized access to
`
`widely available compressed audio recordings. Ex. 1301, 1:23–57. The
`
`patent specification explains that these pirates obtain data either by
`
`unauthorized or legitimate means and then make the data available over the
`
`Internet without authorization. Id. The specification further explains that
`
`once data has been published on the Internet, it is difficult to police access to
`
`and use of it by Internet users who may not even realize that it is pirated. Id.
`
`The ’772 patent proposes to solve this problem by restricting access to data
`
`on a portable data carrier based upon payment validation. Id. at 1:61–2:3.
`
`11
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`CBM2015-00032
`Patent 8,336,772 B2
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`The ’772 patent makes clear that the crux of the claimed subject matter is
`
`restricting access to stored data based on validation of payment. Id.
`
`Although the specification refers to data piracy on the Internet, claims
`
`14, 19, and 22 are not limited to the Internet. Claim 14 recites “code to”
`
`perform various functions related to the abstract idea. Independent claim 14
`
`recites , among other things, code to: “request identifier data,” “receive said
`
`identifier data,” “request content information . . . [comprising] description
`
`data and cost data pertaining to . . . multimedia content identified by said
`
`identifier data,” “receive said content information,” “present said content
`
`information pertaining to said . . . multimedia content available for retrieving
`
`to a user,” “receive a user selection,” “code responsive to said user selection
`
`. . . to transmit payment data relating to payment for said selected at least
`
`one item of multimedia content . . . for validation by a payment validation
`
`system,” “receive payment validation data,” and “responsive to said payment
`
`validation data to retrieve said . . . multimedia content.” Independent claim
`
`19, from which claim 22 depends, recites “code to” “request identifier data,”
`
`“receive said identifier data,” “request content information pertaining to . . .
`
`content data items,” “receive said content information,” “present said
`
`content information to a user . . . pertaining to . . . said content data;”
`
`“receive a user selection . . . of said content data items,” “responsive to said
`
`user selection . . . to transmit payment data . . . for said selected . . . at least
`
`one content item for validation by a payment validation system,” “receive
`
`payment validation data;” and “responsive to the payment validation data to
`
`retrieve said selected content data item . . . and write said retrieved at least
`
`one content data item into said data carrier.” The underlying concept of
`
`claims 14, 19, and 22 particularly when viewed in light of the ’772 patent
`
`specification, is conditioning and controlling access to content based on, for
`
`12
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`CBM2015-00032
`Patent 8,336,772 B2
`
`example, payment. As discussed further below, this is a fundamental
`
`economic practice long in existence in commerce. See Bilski, 561 U.S. at
`
`611.
`
`We are, thus, persuaded, based on the ’772 patent specification and
`
`the claim language, that each of claims 14, 19, and 22 is directed to an
`
`abstract idea. See Alice, 134 S. Ct. at 2356 (holding that the concept of
`
`intermediated settlement at issue in Alice was an abstract idea); Accenture
`
`Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344
`
`(Fed. Cir. 2013) (holding the abstract idea at the heart of a system claim to
`
`be “generating tasks [based on] rules . . . to be completed upon the
`
`occurrence of an event”).
`
`2. Inventive Concept
`
`“A claim that recites an abstract idea must include ‘additional
`
`features’ to ensure ‘that the [claim] is more than a drafting effort designed to
`
`monopolize the [abstract idea].’” Alice, 134 S. Ct. at 2357 (quoting Mayo,
`
`132 S. Ct. at 1297). “This requires more than simply stating an abstract idea
`
`while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly,
`
`the prohibition on patenting an ineligible concept cannot be circumvented by
`
`limiting the use of an ineligible concept to a particular technological
`
`environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the
`
`mere recitation of generic computer components performing conventional
`
`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 claims do not disclose an
`
`“inventive concept” because any additional features recited in the challenged
`
`13
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`CBM2015-00032
`Patent 8,336,772 B2
`
`claims are either field of use limitations—limiting the ideas of payment and
`
`controlling access to content to payment for retrieving “data” and controlling
`
`access to content based on “payment data” and “payment validation data”—
`
`or generic computer implementations, which Petitioner argues is insufficient
`
`to bring the claims within § 101 patent eligibility. Pet. 25–31. Specifically,
`
`Petitioner contends that the challenged claims “recite no more than generic
`
`computer elements and functions that were well-known, routine, and
`
`conventional to a POSITA at the time of filing.” Reply 6 (citations omitted);
`
`see id. at 10–12. Petitioner persuades us that claims 14, 19, and 22 of the
`
`’772 patent do not add an inventive concept sufficient to ensure that the
`
`claims in practice amount to significantly more than claims on the abstract
`
`idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728
`
`F.3d at 1344 (holding claims directed to the abstract idea of “generating
`
`tasks [based on] rules . . . to be completed upon the occurrence of an event”
`
`to be unpatentable even when applied in a computer environment and within
`
`the insurance industry). Specifically, we agree with and adopt Petitioner’s
`
`rationale that the additional elements of claims 14, 19, and 22 are field of
`
`use limitations and/or are generic features of a computer that do not bring
`
`these claims within § 101 patent eligibility. Pet. 25–31; Reply 4–6.
`
`a. Every claimed hardware component and function was
`known
`
`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.’” Pet. 25 (citations omitted).
`
`Smartflash argues that the challenged claims are patentable because they
`
`“are directed to particular devices that can download and store digital
`
`14
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`CBM2015-00032
`Patent 8,336,772 B2
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`content into non-volatile memory / a data carrier.” PO Resp. 17. We agree
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`with Petitioner for the following reasons.
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`The ’772 patent specification treats as well-known all potentially
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`technical aspects of claims 14, 19, and 22, including “a wireless interface,”
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`“non-volatile volatile memory,” “a processor,” “a program store,” “a user
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`interface,” “code” and “a display.” See Reply 11. For example, the
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`specification states the recited “non-volatile memory” may be an EEPROM,
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`the recited “program store” may be a ROM, and the recited “non-volatile
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`memory” may be Flash memory (Ex. 1301, 17:31–36), as found in a
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`standard “smart Flash card” (id. at 17:15–24). See also id. at 4:7–8, 6:23–25
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`(stating that “[t]he data memory for storing content data may be optic,
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`magnetic or semiconductor memory, but preferably comprises Flash
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`memory.”), 11:28–37, 14:33–38, 16:55–58, 18:16–20 (describing
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`components as “conventional”), Figs. 6, 9. Furthermore, the claimed “code”
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`in claims 14 and 19 performs generic computer functions, such as
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`requesting, receiving, writing, selecting, transmitting, displaying, and
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`identifying, and storing. Pet. 2–3, see id. at 27–29. 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. Ass’n., 776
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`F.3d 1343, 13471348 (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 14, 19, and 22 “‘recite
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`specific ways of using distinct memories, data types, and use rules that
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`amount to significantly more than’” conditioning and controlling access to
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`content based on, for example, payment. See PO Resp. 27. None of the
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`challenged claims recite any particular or “distinct memories.” As noted
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`above, the ’772 patent specification indicates that the required memories
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`may be conventional types of memory. Ex. 1301, 4:7–8, 6:23–25 (stating
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`that “[t]he data memory for storing content data may be optic, magnetic or
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`semiconductor memory, but preferably comprises Flash memory.”), 11:28–
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`37, 14:33–38, 16:55–58, 17:15–24, 17:31–36, 18:16–20 (describing
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`components as “conventional”), Figs. 6, 9. The recitation of generic
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`memory, being used to store data in the conventional manner, is insufficient
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`to confer the specificity required to elevate the nature of the claim into a
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`patent-eligible application. See Content Extraction, 776 F.3d at 1347 (“The
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`concept of data collection, recognition, and storage is undisputedly well-
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`known. Indeed, humans have always performed these functions.”).
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`Claims 14, 19, and 22 also recite several conventional computer
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`components, including a “data carrier,” “memory,” “program store,”
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`“processor,” “code,” “interface,” and “display.” See Pet. 29. We are not
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`persuaded that the recitation of these computer components alone amounts
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`to significantly more than the underlying abstract idea. Alice, 134 S. Ct. at
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`2355 (quoting Mayo, 132 S. Ct. at 1294) (“We have described step two of
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`this analysis as a search for an ‘inventive concept’—i.e., an element or
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`combination of elements that is ‘sufficient to ensure that the patent in
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`practice amounts to significantly more than a patent upon the [ineligible
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`concept] itself.’”) (brackets in original). Smartflash does not point to any
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`inventive concept in the ’772 patent related to the way the recited
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`components are constructed or used. As discussed above, the ’772 patent
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`states many claimed components are “conventional,” including the “data
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`access terminal” recited in the preambles of claims 19 and 22. Ex. 1301,
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`4:7–8. Other components specifically described as “conventional” include
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`“a processor,” “permanent program memory,” and “timing and control
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`logic,” “all coupled by a data and communications bus.” Id. at 18:16–20.
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`In addition, because the recited elements can be implemented on a
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`general purpose computer, claims 14, 19, and 22 do not cover a “particular
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`machine.” Pet. 33; 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 claims 14, 19, and 22 do not
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`transform an article into a different state or thing. Id.
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`Thus, we determine the potentially technical elements of claims 14,
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`19, and 22 are nothing more than “generic computer implementations” and
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`perform functions that are “purely conventional.” Alice, 134 S. Ct. at 2358–
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`59; Mayo, 132 S. Ct. at 1294.
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`b. Challenged claims are not comparable to DDR
`Holdings claims
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`Relying on the Federal Circuit’s decision in DDR Holdings,
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`Smartflash asserts that claims 14, 19, and 22 are directed to statutory subject
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`matter because the claims are “‘rooted in computer technology in order to
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`overcome a problem specifically arising in the realm of computer
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`networks.’” PO Resp. 1, 18 (quoting DDR Holdings, LLC v. Hotels.com,
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`L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Specifically, Smartflash
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`contends that
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`[T]he claims are directed to particular devices that can download
`and store digital content into non-volatile memory / a data
`carrier. By using a system that combines on the data carrier both
`the digital content and code responsive to payment validation
`data to control access to the digital content when obtaining digital
`content, the claimed multimedia terminals / data access terminals
`enable digital content to be obtained effectively and legitimately,
`including, for example, by retrieving content only after payment
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`validation data has been received to reduce risk of piracy or non-
`payment to content rights owners.
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`Id. at 17.
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`Petitioner responds that claims 14, 19, and 22 are distinguishable from
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`the claims in DDR Holdings. Reply 7–14. The DDR Holdings patent is
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`directed at retaining website visitors when clicking on an advertisement
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`hyperlink within a host website. DDR Holdings, 773 F.3d at 1257.
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`Conventionally, clicking on an advertisement hyperlink would transport a
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`visitor from the host’s website to a third party website. Id. The Federal
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`Circuit distinguished this Internet-centric problem over “the ‘brick and
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`mortar’ context” because “[t]here is . . . no possibility that by walking up to
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`[a kiosk in a warehouse store], the custome