Apple Inc.v.Smartflash LLC

Patent Trials and Appeals Board

Sep 30, 2014

11336758 - (D) (P.T.A.B. Sep. 30, 2014)

Trials@uspto.gov Paper 9
Tel: 571-272-7822 Entered: September 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,
Petitioner,
v.
SMARTFLASH LLC,
Patent Owner.

Case CBM2014-00105
Patent 7,334,720 B2

Before JENNIFER S. BISK, RAMA G. ELLURU, NEIL T. POWELL,
JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
Administrative Patent Judges.
ELLURU, Administrative Patent Judge.
DECISION
Denying Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208
CBM2014-00105 B2
Patent 7,334,720
2
INTRODUCTION
A. Background
Petitioner, Apple Inc. (“Apple”), filed a Petition (Paper 6, “Pet.”) to
institute a covered business method patent review of claims 1, 3, 11, and 13–
15 (“the challenged claims”) of U.S. Patent No. 7,334,720 (Ex. 1101, “the
’720 patent”) pursuant to § 18 of the Leahy-Smith America Invents Act
(“AIA”). Patent Owner, Smartflash LLC (“Smartflash”), filed a Preliminary
Response (Paper 7, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
§ 324, which provides that a covered business patent review may not be
instituted “unless . . . it is more likely than not that at least 1 of the claims
challenged in the petition is unpatentable.”
B. Asserted Grounds
Apple contends that the challenged claims are unpatentable under 35
U.S.C. §§ 102 and/or 103 based on the following grounds (Pet. 22–23, 45–
80).
References Basis Claims Challenged
Ginter
1
§ 102 1
Ginter and Maari
2
§ 103 1
Ginter § 103 1, 3, 11, and 13–15
Ginter and Sato
3
§ 103 1, 3, 11, and 13–15

1
U.S. Patent No. 5,915,019 (Ex. 1115) (“Ginter”).
2
JP Patent Application Publication No. H10-269289 (including translation),
published October 9, 1998 (Ex. 1119, “Maari”).
3
JP Patent Application Publication No. H11-164058 (including translation),
published June 18, 1999 (Ex. 1118, “Sato”).
CBM2014-00105 B2
Patent 7,334,720
3
References Basis Claims Challenged
Ginter, Stefik ’235
4
, and
Stefik ’980
5

§ 103 1, 3, 11, and 13–15
Ginter and Poggio
6
§ 103 3, 11, and 13–15
Ginter, Poggio, Stefik ’235,
and Stefik ’980
§ 103 3, 11, and 13–15
Petitioner also provides a declaration from Anthony J.
Wechselberger.
7
Ex. 1121.
After considering the Petition and Preliminary Response, we
determine that the ’720 patent is a covered business method patent. We
further determine, however, that Apple has not demonstrated that it is more
likely than not that at least one of the challenged claims is unpatentable.
Therefore, we deny institution of a covered business method patent review
of claims 1, 3, 11, and 13–15 of the ’720 patent.
C. Related Matters
The parties indicate that Smartflash has sued Apple for infringement
of the ’720 patent and identify the following district court case: Smartflash
LLC v. Apple Inc., Case No. 6:13-cv-447 (E.D. Tex.). Pet. 21; Papers 5, 8.

4
U.S. Patent No. 5,530,235 (Ex. 1113) (“Stefik ’235”).
5
U.S. Patent No. 5,629,980 (Ex. 1114) (“Stefik ’980”).
6
European Patent Application, Publication No. EP 0809221 A2 (including
translation), published November 26, 1997 (Ex. 1116, “Poggio”).
7
On this record, we are not persuaded by Patent Owner’s argument that we
should disregard the Wechselberger Declaration. See Prelim. Resp. 20–23.
Patent Owner identifies purported omissions from the Declaration, but offers
no evidence that Mr. Wechselberger used incorrect criteria, failed to
consider evidence, or is not an expert in the appropriate field. Id.
CBM2014-00105 B2
Patent 7,334,720
4
The parties also indicate that the ’720 patent is the subject of a second case,
to which Apple is not a party: Smartflash LLC v. Samsung, Case No. 6:13-
cv-448 (E.D. Tex.). Id.
Apple filed a concurrent petition for covered business method patent
review of the ’720 patent: CBM2014-00104.
8
In addition, Apple filed ten
other petitions for covered business method patent review challenging
claims of patents owned by Smartflash and disclosing similar subject matter:
CBM2014-00102; CBM2014-00103; CBM2014-00106; CBM2014-00107;
CBM2014-00108; CBM2014-00109; CBM2014-00110; CBM2014-00111;
CBM2014-00112; and CBM2014-00113.
D. The ’720 Patent
The ’720 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. 1101, 1:6–10. 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
1:15–41. The ’720 patent describes providing portable data storage together
with a means for conditioning access to that data upon validated payment.
Id. at 1:46–62. According to the ’720 patent, this combination of the
payment validation means with the data storage means allows data owners to

8
Patent Owner argues that the multiple petitions filed against the ’720 patent
violate the page limit requirement of 37 C.F.R. § 42.24(a)(iii), but does not
cite any authority to support its position. Prelim. Resp. 11–13. The page
limit for petitions requesting covered business method patent review is 80
pages (37 C.F.R. § 42.24(a)(iii)), and each of the ’104 and the ’105 Petitions
meets that requirement.

CBM2014-00105 B2
Patent 7,334,720
5
make their data available over the internet without fear of data pirates. Id. at
1:62–2:3.
As described, the portable data storage device is connected to a
terminal for internet access. Id. at 1:46–55. 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 1:56–59.
The ’720 patent makes clear that the actual implementation of these
components is not critical and may be implemented in many ways. See, e.g.,
id. at 26:13–16 (“The skilled person will understand that many variants to
the system are possible and the invention is not limited to the described
embodiments . . .”).
E. Challenged Claims
Petitioner challenges claims 1, 3, 11, and 13–15 of the ’720 patent.
Claims 1, 3, and 14 are independent. Claims 11 and 13 depend from claim 3
and claim 15 depends from claim 14. Claims 1 and 3 are illustrative of the
claims at issue and recite the following.
1. A method of controlling access to content data on a data carrier,
the data carrier comprising non-volatile data memory storing content
memory and non-volatile parameter memory storing use status data
and use rules, the method comprising:
receiving a data access request from a user for at least one
content item of the content data stored in the nonvolatile data
memory;
reading the use status data and use rules from the parameter
memory that pertain to use of the at least one requested content item;
evaluating the use status data using the use rules to determine
whether access to the at least one requested content item stored in the
content memory is permitted; and
CBM2014-00105 B2
Patent 7,334,720
6
displaying to the user whether access is permitted for each of
the at least one requested content item stored in the non-volatile data
memory.
Ex. 1101, 26:18–36.

3. A data access terminal for retrieving data from a data supplier
and providing the retrieved data to a data carrier, the terminal
comprising:
a first interface for communicating with the data supplier;
a data carrier interface for interfacing with the data carrier;
a program store storing code; and
a processor coupled to the first interface, the data carrier
interface, and the program store for implementing the stored code, the
code comprising:
code to read payment data from the data carrier and to forward
the payment data to a payment validation system;
code to receive payment validation data from the payment
validation system;
code responsive to the payment validation data to retrieve data
from the data supplier and to write the retrieved data into the data
carrier; and
code responsive to the payment validation data to receive at
least one access rule from the data supplier and to write the at least
one access rule into the data carrier, the at least one access rule
specifying at least one condition for accessing the retrieved data
written into the data carrier, the at least one condition being dependent
upon the amount of payment associated with the payment data
forwarded to the payment validation system.
Ex. 1101, 26:41-67.
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
CBM2014-00105 B2
Patent 7,334,720
7
they appear. See 37 C.F.R. § 42.300(b). Applying that standard, we
interpret the claim terms of the ’720 patent according to their ordinary and
customary meaning, in the 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 must construe the following claim
terms of the challenged claims as they are critical terms in the independent
claims. Neither party proposed a construction for these terms.
“use rule” and “access rule”
Independent claim 1 requires parameter memory storing “use rules”
and evaluating use status data using the “use rules” to determine whether
access to the requested content item is permitted. Ex. 1101, 26:21–22, 30–
33.
While independent claims 3 and 14 do not recite “use rules,” they
require receiving at least one “access rule” from the data supplier. The ’720
patent Specification imparts the same meaning to “access rule” as “use rule.”
For example, when discussing a particular embodiment, the Specification
states:
one or more content access rules is received from the system
owner data supply computer and written to the smart Flash card
so that each content data item has an associated use rule to
specify under what conditions a user of the smart Flash card is
allowed access to the content data item.

Ex. 1101 at 22:4–9 (emphases added). Thus, we give the same construction
to “use rules” and “access rule.”
Claim 3 recites that the “at least one access rule specif[ies] at least one
condition for accessing the retrieved data.” Similarly, in describing a
particular embodiment, the ’720 patent Specification explains that each
CBM2014-00105 B2
Patent 7,334,720
8
content data item has an associated “use rule” “to specify under what
conditions a user of the smart Flash card is allowed access to the content
data item.” Ex. 1101, 22:4–9; see id. at 4:62–63 (a data carrier may store
content “use rules pertaining to allowed use of stored data items.”)
(emphasis added). The Specification explains that the data access device
uses the use status data and “use rules” to determine what access is
permitted to data stored on the data carrier. Id. at 9:21–23 (emphasis added).
Accordingly, pursuant to the claim language and the ’720 patent
Specification, we construe “use rule” and “access rule” as a rule specifying a
condition under which access to content is permitted.
For purposes of this decision, we determine that no other terms in the
challenged claims require an express construction at this time.
B. Covered Business Method Patent
Section 18 of the AIA provides for the creation of a transitional
program for reviewing covered business method patents. A “[c]overed
business method patent” is a patent that “claims a method or corresponding
apparatus for performing data processing or other operations used in the
practice, administration, or management of a financial product or service,
except that the term does not include patents for technological inventions.”
AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have only one
claim directed to a covered business method to be eligible for review. See
Transitional Program for Covered Business Method Patents—Definitions of
Covered Business Method Patent and Technological Invention; Final Rule,
77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (Comment 8).
CBM2014-00105 B2
Patent 7,334,720
9
1. Financial Product or Service
Apple asserts that because claim 14 “explicitly describes transferring
money and allowing such a transfer, as well as restricting access based on
payment, it clearly relates to a financial activity and providing a financial
service.” Pet. 16. Based on this record, we agree with Apple that the subject
matter recited by claim 14 is directed to activities that are financial in nature,
namely data access conditioned on payment validation. Claim 14 recites:
writing the at least one access rule into the data carrier, the at
least one access rule specifying at least one condition for
accessing the retrieved data written into the data carrier, the at
least one condition being dependent upon the amount of
payment associated with the payment data forwarded to the
payment validation system.
We are persuaded that payment validation is a financial activity, and
conditioning data access based on the amount of payment associated with
the payment data forwarded to the payment validations system amounts to a
financial service. This is consistent with the Specification of the ’720
patent, which confirms claim 14’s connection to financial activities by
stating that the invention “relates to a portable data carrier for storing and
paying for data.” Ex. 1101, 1:6–7. The Specification also states repeatedly
that the disclosed invention involves managing access to data based on
payment validation. See, e.g., Ex. 1101, 1:46–49, 2:4–19, 3:19–27, 3:50–54,
7:62–8:9, 8:21–34.
Smartflash disagrees that claim 14 satisfies the financial-in-nature
requirement of AIA § 18(d)(1), arguing that that section should be
interpreted narrowly to cover only technology used specifically in the
financial or banking industry. Prelim. Resp. 5–8. Smartflash cites to
CBM2014-00105 B2
Patent 7,334,720
10
various portions of the legislative history as support for its proposed
interpretation. Id.
We do not agree that the phrase “financial product or service” in
§ 18(d)(1) of the AIA is as limited as Smartflash proposes. The AIA does
not include as a prerequisite for covered business method patent review, a
“nexus” to a “financial business,” but rather a “method or corresponding
apparatus for performing data processing or other operations used in the
practice, administration, or management of a financial product or
service . . .” AIA § 18(d)(1). Further, contrary to Patent Owner’s view of
the legislative history, the legislative history indicates that the phrase
“financial product or service” is not limited to the products or services of the
“financial services industry” and is to be interpreted broadly. CBM Rules,
77 Fed. Reg. at 48,735–36. For example, the “legislative history explains
that the definition of covered business method patent was drafted to
encompass patents ‘claiming activities that are financial in nature, incidental
to a financial activity or complementary to a financial activity.’” Id. (citing
157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
Schumer)).
In addition, Smartflash asserts that claim 14 is not directed to an
apparatus or method that is financial in nature because claim 14 “omits the
specifics of how payment is made.” Prelim. Resp. 8. We are not persuaded
by this argument because § 18(d)(1) of the AIA does not include such a
requirement, nor does Patent Owner point to any other authority that makes
such a requirement. Id. We determine that because payment is required by
claim 14, as Patent Owner acknowledges (id.), the financial-in-nature
requirement of § 18(d)(1) is satisfied.
CBM2014-00105 B2
Patent 7,334,720
11
For the reasons stated above, and based on the particular facts of this
proceeding, we conclude that the ’720 patent includes at least one claim that
meets the financial-in-nature requirement of § 18(d)(1) of the AIA.
2. Exclusion for Technological Inventions
Apple asserts that claim 14 does not fall within § 18(d)(1)’s exclusion
for “technological inventions.” Pet. 17–21. In particular, Apple argues that
claim 14 “does not claim ‘subject matter as a whole [that] recites a
technological feature that is novel and unobvious over the prior art[] and
solves a technical problem using a technical solution.’” Id. at 17 (quoting
37 C.F.R. § 42.301(b)). Smartflash disagrees and argues that claim 14, as a
whole, recites at least one technological feature. Prelim. Resp. 9–11.
We are persuaded that claim 14 as a whole does not recite a
technological feature that is novel and unobvious over the prior art. The
claimed “portable data carrier” is a generic hardware device known in the
prior art. The Specification discloses, for instance, that a portable data
carrier may be a “standard smart card.” See Ex. 1101, 11:36–39; Pet. 17.
Claim 14 also recites a “payment validation system.” The Specification,
however, discloses that the required payment validation system may be one
that is already in use or otherwise commercially available. For example,
“[t]he payment validation system may be part of the data supplier’s
computer systems or it may be a separate e-payment system.” Id. at 8:64–
66; see id. at 13:46–58.
In addition, the ’720 patent makes clear that the asserted novelty of
the invention is not in any specific improvement of software or hardware,
but in the method of controlling access to data. For example, the ’720 patent
states that “there is an urgent need to find a way to address the problem of
CBM2014-00105 B2
Patent 7,334,720
12
data piracy,” (id. at 1:40–41) while acknowledging that the “physical
embodiment of the system is not critical and a skilled person will understand
that the terminals, data processing systems and the like can all take a variety
of forms” (id. at 12:38–41). Thus, we determine that claim 14 is merely the
recitation of a combination of known technologies, which indicates that it is
not a patent for a technological invention. See Office Patent Trial Practice
Guide, 77 Fed. Reg. at 48,764.
Smartflash also argues that claim 14 falls within § 18(d)(1)’s
exclusion for “technological inventions” because it is directed towards
solving the technological problem of “data piracy” with the technological
solution of “(1) a data carrier from which payment data is read and to which
retrieved data from a data supplier is written and (2) at least once access
rule, also stored on the data carrier, specifying at least one condition for
accessing the retrieved data written into the data carrier.” Prelim. Resp. 9–
10. We are not persuaded by this argument because, as Petitioner argues,
the problem being solved by claim 14 is a business problem—data piracy.
Pet. 21. For example, the Specification states that “[b]inding the data access
and payment together allows the legitimate owners of the data to make the
data available themselves over the internet without fear of loss of revenue,
thus undermining the position of data pirates.” Ex. 1101, 1:66–2:3.
Therefore, based on the particular facts of this proceeding, we conclude that
claim 14 does not recite a technological invention and is eligible for a
covered business method patent review.
CBM2014-00105 B2
Patent 7,334,720
13
3. Conclusion
In view of the foregoing, we conclude that the ’720 patent is a covered
business method patent under AIA § 18(d)(1) and is eligible for review
using the transitional covered business method patent program.
C. Claim 1
Petitioner asserts that independent claim 1 is anticipated by Ginter or
is rendered obvious by Ginter alone or in combination with various other
references, including Maari, Sato, and Stefik.
9
Pet. 22–23. Petitioner
provides one claim chart for claim 1. Pet. 45–54.
Claim 1 requires “use rules,” which, as explained above, we construe
as a rule specifying a condition under which access to content is permitted.
Specifically, claim 1 recites “non-volatile parameter memory storing [ ] use
rules,” “reading the [ ] use rules from the parameter memory that pertain to
use of the at least one requested content item,” and “evaluating the use status
data using the use rules to determine whether access to the at least one
requested content item stored in the content memory is permitted.”
Petitioner’s claim chart states that the claimed “use rules” corresponds to
“(e.g., billing method map MDE and/or budget method UDE).” Pet. 48, 51;
see Pet. 52. We determine that Petitioner has not shown sufficiently that
Ginter alone or in combination with other references discloses or teaches
“use rules.”

9
Petitioner refers to Stefik ’235 and Stefik ’980 collectively as “Stefik” and
argues that they should be considered collectively as a single reference
because, according to Petitioner, Stefik ’235 incorporates Stefik ’980 by
reference. Pet. 9, n.5. Patent Owner disagrees. Prelim. Resp. 15–17. We
do not reach this issue because neither Stefik ’235 nor Stefik ’980 affects our
analysis.
CBM2014-00105 B2
Patent 7,334,720
14
Petitioner does not provide adequate argument or explanation as to
why Ginter’s billing method map MDE and/or budget UDE satisfies the
claimed “use rules.” Petitioner’s claim chart provides a lengthy string
citation to numerous portions of Ginter, without providing the corresponding
disclosure. Specifically, Petitioner provides the following:
use rules (e.g., billing method map MDE and/or budget method
UDE). See, e.g., Ex. 1115 Fig. 8; FIG. 71; 169:4-6 (“In one
alternate embodiment, SPU 500 may have sufficient internal,
non-volatile memory to allow it to store some or all of secure
database 610.”); 229:18-20; 230:7-19; 126:36-44; 181:7-12;
186:56-62; 187:52-57; 190:45-57; 62:64-67; 264:62-265-16;
128:23-36; 59:17-23; Ex. 1121, Appx D 69-73.
See e.g., Pet. 48 (footnotes omitted). Without corresponding argument and
explanation, Petitioner’s claim chart does not persuade us that Ginter’s
billing method MDE or budget method UDE satisfies the claimed “use
rules.”
Our review of Ginter does not persuade us otherwise. Ginter
describes billing method map MDE as “a price list, table, or parameters to
the billing amount calculation algorithm” (Ex. 1115, 190:47–50), and budget
method UDE as “limitations on usage of information content 304, and how
usage will be paid for” (id. at 59:17–20). Petitioner does not explain
sufficiently, however, why a price list (billing method map MDE) and/or
limitations on information content usage (budget method UDE), for
example, discloses or teaches “use rules.” To the extent Petitioner alleges
that Ginter’s “access limit” or “budget value” (Pet. 52) satisfies the claimed
“use rules,” Petitioner does not explain why an access limit or budget value,
particularly by itself, teaches a rule specifying a condition under which
access to content is permitted.
CBM2014-00105 B2
Patent 7,334,720
15
Petitioner has not demonstrated more likely than not that Ginter’s
budget method UDE renders obvious the claimed “use rules.” See Pet. 51
n.23. Petitioner discusses Ginter “using a budget method UDE specific to a
particular VDE content object to limit access to that VDE content object . . .
to a finite amount,” and simply concludes that one skilled in the art “would
have considered it at minimum obvious to use a budget method UDE
pertaining to a particular content item (e.g., VDE content object) to limit
user access to that particular content item (e.g., VDE content object).” Id.
Petitioner does not provide any further rationale as to why claim 1 would
have been obvious over Ginter, and the cited portion of the Wechselberger
Declaration simply reiterates Petitioner’s contentions and conclusory
reasoning. See Pet. 51, n.24; Ex. 1121, App. D 75–77.
Petitioner’s claim chart also states that Stefik ’235 and Stefik ’980
disclose the claimed “use rules.” Pet. 48. Petitioner provides no persuasive
argument or explanation of why the relied upon disclosure from Stefik ’235
and Stefik ’980 corresponds to “use rules.” Without corresponding
argument or explanation, Petitioner’s claim chart does not persuade us that
either Stefik ’235 or Stefik ’980 teaches “use rules.” Our review of the
Petition does not indicate that Petitioner refers to any other reference as
teaching the claimed “use rules.”
For the reasons set forth above, Petitioner has failed to establish that,
more likely than not, it would prevail in demonstrating that claim 1 is
unpatentable as anticipated by Ginter or obvious over Ginter alone, or in
combination with any other asserted reference.
CBM2014-00105 B2
Patent 7,334,720
16
D. Claim 3
Petitioner asserts that independent claim 3 is rendered obvious over
Ginter, alone or in combination with various other references, including
Stefik, Sato, and Poggio. Pet. 22–23. Petitioner provides one claim chart
for claim 3. Pet. 54–65.
Claim 3 requires an “access rule,” which we’ve construed as a rule
specifying a condition under which access to content is permitted.
Specifically, claim 3 recites “code . . . to receive at least one access rule
from the data supplier,” “code . . . to write the at least one access rule into
the data carrier,” and “the at least one access rule specifying at least one
condition for accessing the retrieved data written into the data carrier.”
Petitioner’s claim chart states that the claimed “access rule” corresponds to
“(e.g., billing method map MDE and/or budget method UDE).” Pet. 62, 64;
see also Pet. 63. For the same reasons discussed above as to why Ginter
does not disclose or teach “use rules,” as recited in claim 1, we determine
that Petitioner has not shown sufficiently that Ginter, alone or in
combination with other references, teaches an “access rule.”
Petitioner’s claim chart for claim 3 cites the following disclosure from
Ginter:
“Budgets” 308 shown in FIG. 5B are a special type of
“method” 1000 that may specify, among other things,
limitations on usage of information content 304, and how usage
will be paid for. Budgets 308 can specify, for example, how
much of the total information content 304 can be used and/or
copied. The methods 310 may prevent use of more than the
amount specified by a specific budget.
Pet. 63 (citing Ex. 1115, 59:17–23). This disclosure indicates that Ginter’s
Budgets 308 can specify a limiting value. As discussed above, however,
CBM2014-00105 B2
Patent 7,334,720
17
Petitioner does not explain why a limiting value, particularly by itself,
teaches a rule specifying a condition under which access to content is
permitted.
In addition, claim 3 recites “code responsive to the payment validation
data to receive at least one access rule from the data supplier.” Petitioner’s
claim chart asserts that Ginter teaches the “responsive to the payment
validation data” element because the alleged “access rule” is “received
together with the VDE content object and thus responsive to the payment
validation data.” Pet. 62 (citations omitted). We are not persuaded by
Petitioner’s conclusory statement that the access rule is received in response
to the payment validation data because it is received together with the VDE
content object. Our review of the Petition does not indicate that Petitioner
refers to any other reference as teaching this claim limitation.
Furthermore, claim 3 requires “at least one access rule specifying at
least one condition for accessing the retrieved data . . . the at least one
condition being dependent upon the amount of payment associated with the
payment data forwarded to the payment validation system.” For this claim
element, Petitioner’s claim chart provides the following:
Ginter further discloses that the at least one access rule (e.g., the
billing method map MDE and/or budget method UDE) depends
upon the amount of payment associated with the payment data
forwarded to the payment validation system (e.g., is dependent
upon the amount a user is charged to access the VDE content
object). See, e.g., Ex. 1115 Fig,. 72D; 28:21-42; Ex. 1121
App[.] D 114-15.
Pet. 64; see also id. at 65. Petitioner alleges that the “access rule” “is
dependent upon the amount a user is charged to access the VDE content,”
but does not explain why that disclosure teaches “at least one access rule
CBM2014-00105 B2
Patent 7,334,720
18
specifying at least one condition for accessing the retrieved data . . . the at
least one condition being dependent upon the amount of payment associated
with the payment data forwarded to the payment validation system.” Id. In
other words, the amount a user is charged to access content may occur after
the amount of payment associated with the payment data is forwarded to the
payment validation system. Petitioner has not persuaded us that the amount
a user is charged is the same amount of payment forwarded to the payment
validation system.
Petitioner’s claim chart also refers to disclosure from Poggio for this
claim element. Specifically, Petitioner’s claim chart provides the following.
Additionally, Poggio also discloses receiving at least one access
rule (e.g., license information) specifying at least one condition
for accessing the retrieved data (e.g., a vendor product can be
rented or purchased) from a data supplier (e.g., web server)
responsive to the payment validation data (confirmation that the
payment has been made). See, e.g., Ex. 1116 Fig. 7; 9:56-10:25;
10:41-53; Ex. 1121 App[.] D 118-20.
Pet. 65. Petitioner, however, fails to explain why receiving an access
rule in response to “payment validation data” or “confirmation that the
payment has been made” teaches “at least one access rule specifying
at least one condition for accessing the retrieved data . . . the at least
one condition being dependent upon the amount of payment
associated with the payment data forwarded to the payment validation
system.” For example, Petitioner does not explain why the amount of
the payment that was made is the same amount of payment associated
with the payment data forwarded to the payment validation system.
The Petition does not indicate that Petitioner refers to any other
reference as teaching this claim limitation.
CBM2014-00105 B2
Patent 7,334,720
19
For the reasons set forth above, Petitioner has failed to establish that it
is more likely than not that it would prevail in demonstrating that claim 3 is
rendered obvious over Ginter, alone or in combination with any other
asserted reference. For the same reasons, we determine that Petitioner has
failed to establish that it is more likely than not that it would prevail in
demonstrating that claims 11 and 13, which depend from claim 3, are
rendered obvious over Ginter, alone or in combination with any other
asserted reference.
E. Claims 14 and 15
Petitioner asserts that independent claim 14 is rendered obvious over
Ginter, alone or in combination with various other references, including
Sato, Stefik, and Poggio. Pet. 22–23. Petitioner provides one claim chart
for claim 14. Pet. 72–77.
Claim 14 requires an “access rule,” which we’ve construed as a rule
specifying a condition under which access to content is permitted.
Specifically, claim 14 recites “receiving at least one access rule from the
data supplier,” “writing the at least one access rule into the data carrier,” and
“the at least one access rule specifying at least one condition for accessing
the retrieved data written into the data carrier, the at least one condition
being dependent upon the amount of payment associated with the payment
data forwarded to the payment validation system.” Petitioner’s claim chart
states that the claimed “access rule” corresponds to “(e.g., a billing method
map MDE and/or budget method UDE).” Pet. 75–76. For the same reasons
discussed above, with respect to claims 1 and 3, as to why Ginter does not
disclose or teach “use rules” or an “access rule,” we determine that
CBM2014-00105 B2
Patent 7,334,720
20
Petitioner has not shown sufficiently that Ginter alone or in combination
with other references, teaches an “access rule,” as recited in claim 14.
In addition, claim 14 recites “the at least one access rule specifying at
least one condition for accessing the retrieved data written into the data
carrier, the at least one condition being dependent upon the amount of
payment associated with the payment data forwarded to the payment
validation system.” Petitioner’s claim chart refers to the same disclosure
provided for the similar claim element recited in claim 3. For the same
reasons discussed above, with respect to claim 3, as to why neither Ginter
nor Poggio teaches “at least one access rule specifying at least one condition
for accessing the retrieved data . . . the at least one condition being
dependent upon the amount of payment associated with the payment data
forwarded to the payment validation system,” we determine that Petitioner
has not shown sufficiently that Ginter, alone or in combination with other
references, teaches the similar claim limitation recited in claim 14.
For the reasons set forth above, Petitioner has failed to establish that it
is more likely than not that it would prevail in demonstrating that claim 14 is
rendered obvious over Ginter, alone or in combination with any other
asserted reference. For the same reasons, we determine that Petitioner has
failed to establish that it is more likely than not that it would prevail in
demonstrating that claim 15, which depends from claim 14, is rendered
obvious over Ginter, alone or in combination with any other asserted
reference.
CONCLUSION
For the foregoing reasons, we determine that the information
presented in the Petition does not establish that it is more likely than not that
CBM2014-00105 B2
Patent 7,334,720
21
Petitioner would prevail in establishing the unpatentability of any of the
challenged claims, claims 1, 3, 11, and 13–15 of the ’720 patent.
ORDER
For the reasons given, it is:
ORDERED that a covered business method patent review of U.S.
Patent No. 7,334,720 is denied.

CBM2014-00105 B2
Patent 7,334,720
22
PETITIONER:
J. Steven Baughman
Ching-Lee Fukuda
ROPES & GRAY LLP
steven.baughman@ropesgray.com
ching-lee.fukuda@ropesgray.com

PATENT OWNER:
Michael R. Casey
J. Scott Davidson
DAVIDSON BERQUIST JACKSON & GOWDEY LLP
mcasey@dbjg.com
jsd@dbjg.com