Apple Inc.v.Smartflash LLC

Patent Trial and Appeal Board

Sep 30, 2014

11336758 (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 CBM2014-00104
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
CBM2014-00104
Patent 7,334,720 B2
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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 US Patent No. 7,334,720 B2 (Ex. 1001, “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 method 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.” Pub. L. No. 112-29, 125 Stat.
284, 329 (2011).
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, 43–80).
References Basis Claims Challenged
Stefik ’235
1
and Stefik ’980
2
§ 102
3
1, 3, 11, 13, and 14
Stefik ’235 and Stefik ’980 § 103 1, 3, 11, 13, and 14

1
US Patent No. 5,530,235 (Ex. 1013) (“Stefik ’235”).
2
US Patent No. 5,629,980 (Ex. 1014) (“Stefik ’980”).
3
Petitioner refers to Stefik ’235 and Stefik ’980 collectively as “Stefik” and
argues that they should be considered as a single reference for anticipation
purposes because, according to Petitioner, Stefik ’235 incorporates Stefik
’980 by reference. Pet. 28–29, n.13. Patent Owner disagrees. Prelim. Resp.
13–15. We do not reach this issue because even when considered as one
reference, we determine that Stefik ’235 and Stefik ’980 do not teach all the
recited claim limitations in the same form and order as listed in the claims.
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References Basis Claims Challenged
Stefik ’235, Stefik ’980, and
Poggio
4

§ 103 3, 11, and 13–15
Stefik ’235, Stefik ’980,
Poggio, and Sato
5

§ 103 3, 11, and 13–15
Stefik ’235, Stefik ’980, and
Sato
§ 103 1, 3, 11, and 13–15
Stefik ’235, Stefik ’980, and
Maari
6

§ 103 1
Stefik ’235, Stefik ’980,
Maari, and Sato
§ 103 1
Petitioner also provides a declaration from Anthony J.
Wechselberger.
7
Ex. 1021.
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.

4
European Patent Application, Publication No. EP 0 809 221 A2
(translation), published November 26, 1997 (Ex. 1016, “Poggio”).
5
JP Patent Application Publication No. H11-164058 (including translation),
published June 18, 1999 (Ex. 1018, “Sato”).
6
JP Patent Application Publication No. H10-269289 (including translation),
published October 9, 1998 (Ex. 1019, “Maari”).
7
On this record, we are not persuaded by Patent Owner’s argument that we
should disregard the Wechselberger Declaration. See Prelim. Resp. 16–18.
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.
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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,
Related Matter, 8, Updated Mandatory Notice Information. 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: CBM2014-00105.
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

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. 11–12. 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 ’105 Petitions
meets that requirement.

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stored” and the “corresponding methods and computer programs.”
Ex. 1001, 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
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.
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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 non-volatile 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
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. 1001, 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
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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. 1001, 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
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
term 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. 1001, 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
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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. 1001, 22:4–9 (emphasis 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.” (Emphasis added). Similarly, in
describing a particular embodiment, the ’720 patent Specification explains
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. 1001, 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 rules” 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
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Patent 7,334,720 B2
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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) (“CBM Rules”) (Comment 8).
1. Financial Product or Service
Apple asserts that because claim 14 “explicitly describes
electronically 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. 15. 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. 1001, 1:6–7. The Specification also states repeatedly
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that the disclosed invention involves managing access to data based on
payment validation. See, e.g., Ex. 1001, 1:46–49, 2:4–19, 3:19–27, 3:50–54,
7:62–8:9, 8:21–35.
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
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) 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
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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.
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 invention.” Pet. 16–20. 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 16 (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.
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. 1001, 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
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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
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, 756 48,764.
Smartflash also argues that claim 14 falls within § 18(d)(1)’s
exclusion for “technological invention” 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. 19. 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. 1001, 1:66–2:3.
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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.
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 “Stefik”
or is rendered obvious by Stefik alone or in combination with various other
references, including Maari and Sato. Pet. 22. Petitioner provides one claim
chart for claim 1. Pet. 44–48.
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
Stefik’s “(e.g., conflict rules; descriptor tree files containing usage rights).”
Pet. 45, 47. The claim chart also cites the following disclosure: “The
description file contains the usage rights for the document and a pointer to
the document in the content part.” Id. at 46 (citing Ex. 1013, 7:35–42).
Petitioner also asserts that Stefik discloses “using the use rules (e.g.,
checking the usage rights to determine if all conditions associated with a
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right are satisfied; applying conflict rules).” Id. at 47; see Ex. 1013, 7:25–
29. Petitioner provides insufficient explanation as to how Stefik’s “usage
rights” operate. Petitioner also does not show sufficiently why “usage
rights” satisfies “use rules.” Even though “usage rights” may have
“conditions,” they are not necessarily rules, and Petitioner has not persuaded
us otherwise. For example, rights portion 504 is described as “a data
structure, such as a look-up table, wherein the various information
associated with a right is maintained.” Pet. 47 (citing Ex. 1013, 8:8–10); see
also Ex. 1014, 9:54–10:1. An exemplary data structure is illustrated in
Figure 10 of Stefik ’980 and the information contained in such a data
structure is indicated in Table 1. Ex. 1014, 10:28–32. Table 1 of Stefik ’980
discloses, for example, a “Loan-Period” property with a value in “Time-
Units” that is an “[i]ndicator of the maximum number of time-units that a
document can be loaned out.” Ex. 1014, 10:55–57. A data structure and the
information within it, however, cannot be a rule. At best, a rule might use
the information in the data structure—e.g., if the number of time-units that a
document has been leased out is less than Loan-Period, then allow access—
but the usage right itself (e.g., Loan-Period) is not “a rule specifying a
condition under which access to content is permitted,” as we have construed
“use rule.”
Claim 1 also requires “use status data.” Specifically, claim 1 recites
“non-volatile parameter memory storing use status data,” “reading the use
status data [ ] 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
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states that the claimed “use status data” corresponds to Stefik’s “(e.g.,
conflict rules; descriptor tree files containing usage rights).” Pet. 45.
Petitioner’s chart also asserts “[t]he use status data and use rules (e.g., usage
rights; conflict rules) are stored in parameter memory.” Id. at 46. In
addition, Petitioner contends that “Stefik discloses evaluating use status data
(e.g., examining usage rights status, for example number of copy rights
remaining, stored in a descriptor file for the requested content).” Id. at 47.
Petitioner does not explain, however, why “usage rights” satisfies the recited
“use status data.” For example, Petitioner does not explain sufficiently why
the “number of copy[ing] rights remaining” is within the scope of the
examples of “use status data” provided by the Specification of the ’720
patent (e.g., “indicating a use status of data” (Ex. 1001, 9:14–16),
“indicating past use of the stored data” (id. at 9:36–37), “present use status”
(id. at 25:1), “actual use of the data item made so far” (id. at 25:5–8), “how
much use has been made of the accessed content data time” such as “start
and end time markers or simply a play duration time” (id. at 25:26–32)).
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 1 is
unpatentable as anticipated by Stefik ’235 and/or Stefik ’980 or obvious over
Stefik ’235 and/or Stefik ’980 alone or in combination with any other
asserted reference.
D. Claims 3, 11, and 13
Petitioner asserts that independent claim 3 is anticipated by “Stefik”
or is rendered obvious by Stefik alone or in combination with various other
references, including Poggio and Sato. Pet. 22. Petitioner provides one
claim chart for claim 3. Pet. 49–69.
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Claim 3 requires an “access rule,” which we have interpreted as
having the same meaning as “use rule.” 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., usage rights)” and includes cites to
Stefik ’235 and Stefik ’980. Pet. 67–68. For the same reasons discussed
above as to why Stefik ’235 and/or Stefik ’980 do not disclose or teach “use
rules,” as recited in claim 1, we determine that Petitioner has not shown
sufficiently that Stefik ’235 and/or Stefik ’980 alone or in combination with
other references teaches an “access rule,” as recited in claim 3.
In addition, claim 3 recites “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.” Petitioner’s claim chart asserts
that “Stefik discloses attaching at least one access rule (e.g., usage rights) to
retrieved data (e.g., digital works), and then transmitting the attached access
rule (e.g., usage rights) with the content when the content is provided to a
data carrier (e.g., requesting repository).” Pet. 67. Petitioner, however, does
not explain why transmitting usage rights with the content when the content
is provided to a data carrier teaches code that is responsive to payment
validation data to receive an access rule. Petitioner’s claim chart further
asserts that “Stefik discloses an example in which the receipt of payment
validation data (e.g., acceptance of assigned fees) is a prerequisite to
providing a user with options to select a document and a desired function to
perform for the document, and the requested content and attached access
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rule (e.g., usage rights) is provided to the requester responsive to (e.g., only
after) payment validation.” Id. Petitioner, however, does not explain why a
requesting repository providing a user with the usage rights in response to
payment validation teaches code that is responsive to the payment validation
system to receive an access rule from the data supplier and to write the rule
to the data carrier.
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.” (Emphasis
added). For this claim limitation, Petitioner’s claim chart asserts that “[t]he
type of content sent to the data carrier (e.g., requesting repository) and its
attached access rules and conditions (e.g., usage rights) are dependent on the
type of request and the amount of payment (e.g., the fees paid by the
requester) transmitted to the payment validation system (e.g., billing server)
for certain usage rights (e.g., “print” or “view” rights and “purchase” or
“loan” rights).” Pet. 67–68 (emphasis added). The claim chart does not
indicate which specific disclosure in either Stefik ’235 or Stefik ’980
supports Petitioner’s assertion.
9
In any event, Petitioner does not explain
sufficiently why “usage rights” dependent on the fees paid by the requester
teaches an access rule that specifies a condition being dependent upon the
amount of payment associated with the payment data forwarded to the
payment validation system. In other words, the fees paid by the requester
may occur after the amount of payment associated with the payment data is

9
We note that the references to Stefik ’235 and Stefik ’980 are preceded
with “See, e.g.” Pet. 68.
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forwarded to the payment validation system. Petitioner has not persuaded us
that, more likely than not, 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. For example, Petitioner’s claim chart provides the following.
Poggio discloses receiving at least one access rule (e.g., license
information) responsive to (e.g., only after) payment validation
data (e.g., confirmation that the payment has been made) from
the payment validation system.

Pet. 68. Petitioner, however, fails to explain persuasively 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
persuasively 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. Our review of the Petition does not
indicate that Petitioner refers to any other reference as teaching this
claim limitation.
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
unpatentable as anticipated by Stefik ’235 and/or Stefik ’980 or obvious over
Stefik ’235 and/or Stefik ’980 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
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Patent 7,334,720 B2
19
demonstrating that claims 11 and 13, which depend from claim 3, are
anticipated by or rendered obvious over Stefik ’235 and/or Stefik ’980 alone
or in combination with any other asserted reference.
E. Claims 14 and 15
Petitioner asserts that independent claim 14 is anticipated by “Stefik”
or is rendered obvious by Stefik alone or in combination with various other
references, including Poggio and Sato. Pet. 22. Petitioner provides one
claim chart for claim 14. Pet. 77–78.
Claim 14 requires an “access rule,” which we have interpreted as
having the same meaning as “use rule.” 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.” For this limitation, Petitioner’s claim chart refers to
claim 3. Pet. 77–78. For the same reasons discussed above as to why Stefik
’235 and/or Stefik ’980 do not disclose or teach “use rules,” as recited in
claim 1, we determine that Petitioner has not shown sufficiently that Stefik
’235 and/or Stefik ’980 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.” (Emphasis added). For this limitation, Petitioner’s claim
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Patent 7,334,720 B2
20
chart refers to claim 3. Pet. 77–78. For the same reasons discussed above,
with respect to claim 3, as to why neither Stefik ’235 and/or Stefik ’980 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 Stefik ’235 and/or Stefik ’980 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
anticipated or rendered obvious over Stefik ’235 and/or Stefik ’980 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 Stefik ’235 and/or Stefik ’980 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
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 US
Patent No. 7,334,720 B2 is denied.
CBM2014-00104
Patent 7,334,720 B2
21
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