• Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCRehearing denied
  PTAB · Aug 24, 2016 · CBM2015-00031 · APJ Gregg I Anderson · CBM · Rehearing

  The Board denied Smartflash’s rehearing request and left its decision that claims 1, 5, 8, and 10 are unpatentable under § 101 unchanged.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “As we stated in our Final Written Decision and Petitioners argue, the ’772 patent specification treats as well-known and conventional all potentially technical elements of claims 1, 5, 8, and 10 the claimed code performs generic computer functions, and the claims recite several generic and conventional data types. Final Dec. 14–17; Notice Resp. 1–2. These limitations of claims 1, 5, 8, and 10 “do not yield a result that overrides the routine and conventional manner in which this technology operates.” Final Dec. 20. Rather, each of the challenged claims is “an abstract-idea-based solution implemented with generic technical components in a conventional way,” making it patent ineligible. See BASCOM, 2016 WL 3514158, at *6, 3 We note that U.S. Patent No. 7,334,720 B2 is not at issue in this proceeding. *7. Also, “[t]he concept of storing two different types of information4 in the same place or on the same device is an age old practice.” Final Dec. 22. For example, “the prior art discloses products, such as electronic data, that could store both the content and conditions for providing access to the content, such as ‘a time bomb or other disabling device which will disable the product at the end of the rental period.’” Id. at 22–23 (citing Ex. 1215, Abstract, 10:24–30).” slip op. at 7

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Rather than providing a proper request for rehearing, addressing particular matters that we previously misapprehended or overlooked, Smartflash’s Request provides new briefing by expounding on argument already made. Smartflash cannot simply allege that an “issue” (e.g., whether the claims are directed to an abstract idea) was previously addressed, generally, and proceed to present new argument on that issue in a request for rehearing. See 37 C.F.R. § 42.71. Smartflash’s arguments are either new or were addressed in our Final Decision. For example, Smartflash’s argument that the challenged claims are not directed to an abstract idea (Req. Reh’g 10–12) is new, and therefore, improper in a request for rehearing, because Smartflash did not argue the first step of the analysis articulated in Mayo and Alice in its Patent Owner Response. See PO Resp. 16–25 (Patent Owner Response argues that claims are statutory under only the second step of Mayo and Alice); see also Paper 42 (transcript of oral hearing), 6:13–16 (Petitioner stating that “Patent Owner has presented no argument whatsoever to contest that its claims are directed to abstract ideas under the first prong of Mayo and Alice.”), id. at 6:17–18 (Petitioner also stating “It [] also never disputed the articulation of those abstract ideas”).” slip op. at 5

  § 101 eligibilitycites Alice
  Patents in suitUS 8,336,772
• LG Electronics, Inc. v. Ati Technologies UlcAll claims unpatentable
  PTAB · Jun 23, 2016 · IPR2015-00321 · APJ Brian J Mcnamara · IPR · Final written decision

  Claim 18 is unpatentable under § 103 over Hatanaka alone and over Hatanaka combined with O’Connor.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “stored, from the third mode, in which a portion, i.e., a second portion of the first program is stored. PO Resp. 13–16; see Tr. 22:19–24:23. The claim language does not define a program or program portion. The specification refers to time shifting a “viewed program,” states that PES packets from various ES are merged together to form a program (service) with its own STC, and states that all ES components of a program are synchronized with the STC counter to indicate the proper timing of each ES. Ex. 1001, col. 1, ll. 12–13, col. 2, ll. 7–13. However, a program is not defined by any limitations of time or content. Thus, neither the language of claim 18 nor the description in the specification of the ’945 Patent places specific constraints on what constitutes a program or a portion of a program. In the first and second modes in claim 18, the first program is selected and decoded or stored, respectively. The distinction in the third mode of claim 18 is that the first program portion is that portion of the first program that is stored and whose video is provided to the second demultiplexer to select a portion of the first program portion for display; the second program portion is that portion of the first program that is being stored at the same time the video portion of the first program portion is being decoded for display. Patent Owner’s claim construction argument that there would be no need for the third mode if the entire program were recorded applies only when there is no time shifting, i.e., when at all times the first program portion being stored and provided to the second demultiplexer for decoding is the same as the second program portion being stored. However, at all other times, the third mode is required to provide a time shift between the overlapping parts of the first program portion stored (the video portion of which is decoded at the second demultiplexer) and the second program portion being stored simultaneously with the decoding. Under Patent Owner’s construction, claim 18 would not apply to a system that continues to record when a user called away before the beginning of a program activates the third mode and does not return until after the entire program has been completed. In the absence of specific definitions, claim 18 does not preclude the second program portion from overlapping the entirety of the first program or the first program portion, as would occur when a user, who is called away at the beginning of a first program, activates the third mode for the duration of the first program. Indeed, some overlap of the first program portion, and the second program portion is required for the third mode to provide time shifting. We construe only those claim terms that require analysis to conduct our review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). For the reasons discussed further herein, we determine that our analysis does not require the express construction of other terms, and we decline to provide constructions beyond those provided in our Decision to Institute. See Dec. to Inst. 6–7.” slip op. at 5

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “As noted above, Petitioner does not argue that Hatanaka expressly discloses simultaneous storing and decoding. Reply 12. Instead Petitioner asserts this feature would have been obvious to one of ordinary skill because Hatanaka discloses a system that allows a person to record and decode simultaneously different portions of the same program. Id. Petitioner supports this argument by noting that Hatanaka discloses it can employ other forms of video recording devices, and that Patent Owner’s expert, Dr. Mangione-Smith, acknowledges that one of ordinary skill would know how to replace Hatanaka’s digital VCR with other recording devices available at the time, such as a multi-head VCR, optical disk or semiconductor memory. Reply 14–15 (citing Mangione-Smith Tr. 92:3– 10). According to Petitioner, systems using multi-head VCRs and other storage devices would work in the system disclosed by Hatanaka and would accommodate simultaneous recording and playback of video data. Id. at 14 (citing Schonfled Decl. 2 ¶¶ 12–17). On this point, Petitioner further notes that the ’945 Patent itself discloses using multi-disk drive units to reduce latencies. Id.; Ex. 1001, col. 4, ll. 66–67. Thus, Petitioner has demonstrated that a person of ordinary skill would have reason to apply Hatanaka to devices that record a second portion of a first program at the same time a first portion of that program is being decoded for display. Petitioner also disputes Patent Owner’s contentions concerning the need for extensive modifications to Hatanaka to meet the limitations of claim 18. Reply 15–16. Claim 18 does not recite any particular structure to carry out the claimed method. For an obviousness analysis, prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). Petitioner notes that a person of ordinary skill would recognize that the switches of Hatanaka could be operated at frequencies that would permit simultaneous recording and playback, or that output from both data clock 45 and fixed clock 46 could be provided directly to packet controller 18 and/or synchronized using a phase locked loop, thus eliminating the need for switch 25. Pet 16; Schonfeld Decl. 2 ¶ 18. Although Patent Owner argues that these are significant modifications to Hatanaka (Mot. For Observations 3), Petitioner notes that any of the ways Dr. Schonfeld mentions for simultaneous recording and playback could be done with the same circuit, as in Figure 1 of Hatanaka (Resp. to Motion for Observations 3). Although it appears that some modifications would be required, in the context of method claim 18, which is not limited to any specific structure, Petitioner’s argument that such modifications would have been minor and obvious to one of ordinary skill is persuasive. Reply 16 (citing Schonfeld Decl. 2 ¶¶ 16–18).” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (noting that the criterion for obviousness is not whether the references can be combined physically, but whether the claimed invention is rendered obvious by the teachings of the prior art as a whole). In that regard, one with ordinary skill in the art is not compelled to follow blindly the teaching of one prior art reference over the other without the exercise of independent judgment. Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984); see also, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420–21 (2007) (stating that a person with ordinary skill in the art is “a person of ordinary creativity, not an automaton,” and “in many cases . . . will be able to fit the teachings of multiple patents together like pieces of a puzzle”). Notwithstanding Patent Owner’s attacks on the testimony of Petitioner’s expert, Dr. Schonfeld, as piecemeal (PO Resp. 52–56), Dr. Schonfeld has provided testimony consistent with Hatanaka’s disclosure that devices, other than single head magnetic tape VCRs, can be used, as discussed above (see Ex. 2008, 98:7– 18). Patent Owner acknowledges that, to the extent that Hatanaka does not disclose simultaneously recording and decoding portions of a broadcast, such an arrangement is suggested, by O’Connor. PO Resp. 48–49. As we noted above, claim 18 of the ’945 Patent is not limited to a particular structure; nor does the ’945 Patent disclose a structure other than a single block diagram (Figure 6) the slip op. at 18

  Patent outcomesUS 7,095,945 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,095,945
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. et al. v. Smartflash LLCRehearing denied
  PTAB · Jun 10, 2016 · CBM2014-00194 · APJ Jennifer S Bisk · CBM · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving intact its determination that claim 32 is unpatentable under § 101.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “showing unpatentability by a preponderance of the evidence. 35 U.S.C. § 326(e). The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached

    “Patent Owner’s arguments are either new or were addressed in our Final Decision. For example, Patent Owner’s argument that the challenged claims are not directed to an abstract idea (Req. Reh’g 10–12) is new, and therefore, improper in a request for rehearing, because Patent Owner did not argue the first step of the analysis articulated in Mayo and Alice in its Patent Owner Response (see PO Resp. passim (arguing only the second step of the Mayo and Alice test)). To the extent portions of the Request are supported by Patent Owner’s argument in the general citations to the record, we considered those arguments in our Final Decision, as even Patent Owner acknowledges. See, e.g., Req. Reh’g 7 (citing Final Dec. 15) (“The Board rejected Patent Owner’s reliance on DDR Holdings (at 15), holding that Claim 7 was not ‘rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.’”). For example, Patent Owner’s arguments about inventive concept (Req. Reh’g 5– 7, 12–15) were addressed at pages 10–13 and 18–20 of our Final Decision, Patent Owner’s arguments about preemption (Req. Reh’g. 6–7) were addressed at pages 20–22 of our Final Decision, and Patent Owner’s arguments about DDR Holdings (Req. Reh’g. 7–10) were addressed at pages 14–18 of our Final Decision. Mere disagreement with our Final Decision also is not a proper basis for rehearing.” slip op. at 5

  § 101 eligibilitycites Alice
  Patents in suitUS 8,118,221
• Apple Inc. / Google Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · May 26, 2016 · CBM2015-00029 · APJ Rama G Elluru · CBM · Final written decision

  Claims 3 and 15 are unpatentable under § 101 because they claim the abstract idea of conditioning access to content on payment using only generic, conventional computer elements.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “Petitioner argues that claims 3 and 15 are directed to the abstract idea of “paying for and/or controlling access to content.” Pet. 19; see id. at 20– 23. Although Smartflash does not concede, in its Patent Owner Response, that claims 3 and 15 are directed to an abstract idea, it does not persuasively explain how the challenged claims escape being classified as abstract. PO Resp. 15–22 (Patent Owner Response argues that claims are statutory under only the second step of Mayo and Alice); see also Paper 41 (transcript of oral hearing), 6:13–16 (Petitioner stating that “Patent Owner has presented no argument whatoever to contest that its claims are directed to abstract ideas under the first prong of Mayo and Alice.”) id. at 6:17–18 (Petitioner also stating “It [] also never disputed the articulation of those abstract ideas”). We are persuaded that claims 3 and 15 are drawn to an abstract idea. Specifically, claims 3 and 15 are directed to performing the fundamental economic practice of conditioning and controlling access to content based on payment. Claim 3 recites “code . . . to receive at least one access rule . . . 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.” Independent claim 14, not at issue here, recites a similar limitation. Claim 15, depending from claim 14, further recites “receiving payment validation data . . . and transmitting at least a portion of the payment validation data to the data supplier.”” slip op. at 9

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “inventive concept” because any additional features recited in the challenge claims are either field of use limitaitons or generic computer implementations, which Petitioner argues are insufficient to bring the claims within § 101 patent eligibility. Pet. 23–28. 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 13–14. Petitioner persuades us that claims 3 and 15 of the ’720 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 3 and 15 are either field of use limitations or generic features of a computer that do not bring these claims within § 101 patent eligibility. Pet. 23–28; Reply 4–6. slip op. at 12

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “We are persuaded by Petitioner that Exhibit 1302 is offered not for the truth of the matter asserted (i.e., the content of the ’720 patent), but as evidence of how Smartflash has characterized the ’720 patent. Thus, Smartflash has not persuaded us that Exhibit 1302 is evidence of the content of a writing or that it is cumulative to the ’720 patent. Furthermore, Smartflash has not persuaded us that Exhibit 1302 is irrelevant, at least because its characterization of the ’720 patent in prior proceedings is relevant to the credibility of its characterization of the ’720 patent in this proceeding. Smartflash contends that Exhibit 1302 does not contradict its characterization of the ’720 patent in this proceeding such that the credibility of Smartflash’s characterization is an issue. Paper 30, 3. Smartflash’s argument misses the point because the credibility of Smartflash’s characterization is for us to decide, and we have to consider the document at issue in making that determination. Further, as Petitioner notes (Paper 32, 2), Smartflash’s characterization of the ’720 patent in prior proceedings is relevant to Smartflash’s contention in this proceeding that the ’720 patent does not satisfy the “financial in nature” requirement for a covered business method patent review (Prelim. Resp. 5–10). Accordingly, we decline to exclude Exhibit 1302.” slip op. at 27

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Smartflash has not articulated a persuasive reason for excluding Mr. Wechselberger’s Declaration. Smartflash has not cited any authority requiring an expert to recite or apply the “preponderance of the evidence” standard in order for the expert opinion to be accorded weight. Under 37 C.F.R. § 42.1(d), we apply the preponderance of the evidence standard in determining whether Petitioner has established unpatentability. In doing so, it is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702.” slip op. at 30

  Patent outcomesUS 7,334,720 unpatentable
  § 101 eligibilitycites Alice · Bilski
  Patents in suitUS 7,334,720
• Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCAll claims unpatentable
  PTAB · May 26, 2016 · CBM2015-00031 · APJ Gregg I Anderson · CBM · Final written decision

  Claims 1, 5, 8, and 10 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner

    “Petitioner argues that claims 1, 5, 8, and 10 are directed to the abstract idea of “paying for and/or controlling access to content.” Pet. 23; see id. at 24–27. Although Smartflash does not concede, in its Patent Owner Response, that claims 1, 5, 8, and 10 are directed to an abstract idea, it does not persuasively explain how the challenged claims escape being classified as abstract. PO Resp. 15–25 (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 1, 5, 8, and 10 are drawn to the abstract idea of conditioning and controlling access to content based on, for example, payment. Specifically, independent claim 1 recites “code to receive payment validation data . . . for said at least one selected item of multimedia content.” Independent claim 8 recites “code to control access to said selected content data item responsive to the payment validation data.” Claim 5 depends from claim 1 and recites “code to retrieve supplementary data via said wireless interface and output said supplementary data to said user using said display.” Claim 10 depends from claim 8 and recites “said data access terminal is integrated with a mobile communications device and audio/video player.”” slip op. at 10

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptIneligibleDecided for petitioner

    “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 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”—or generic computer implementations, which Petitioner argues is insufficient to bring the claims within § 101 patent eligibility. Pet. 27–32. 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 13–14. Petitioner persuades us that claims 1, 5, 8, and 10 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 1, 5, 8, and 10 are field of use limitations and/or generic features of a computer that do not bring these claims within § 101 patent eligibility. Pet. 27–32; Reply 4–6.” slip op. at 13

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “We are persuaded by Petitioner that Exhibit 1202 is offered not for the truth of the matter asserted (i.e., the content of the ’772 patent), but as evidence of how Smartflash has characterized the ’772 patent. Thus, Smartflash has not persuaded us that Exhibit 1202 is evidence of the content of a writing or that it is cumulative to the ’772 patent. Furthermore, Smartflash has not persuaded us that Exhibit 1202 is irrelevant, at least because its characterization of the ’772 patent in prior proceedings is relevant to the credibility of its characterization of the ’772 patent in this proceeding. Smartflash contends that Exhibit 1202 does not contradict its characterization of the ’772 patent in this proceeding such that the credibility of Smartflash’s characterization is an issue. Paper 33, 3. Smartflash’s argument misses the point because the credibility of Smartflash’s characterization is for us to decide, and we have to consider the document at issue in making that determination. Further, as Petitioner notes (Paper 32, 2), Smartflash’s characterization of the ’772 patent in prior proceedings is relevant to Smartflash’s contention in this proceeding that the ’772 patent does not satisfy the “financial in nature” requirement for a covered business method patent review (Prelim. Resp. 5–11). Accordingly, we decline to exclude Exhibit 1202.” slip op. at 28

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 8,336,772
• Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCAll claims unpatentable
  PTAB · May 26, 2016 · CBM2015-00032 · APJ Gregg I Anderson · CBM · Final written decision

  Claims 14, 19, and 22 are unpatentable under § 101 because they claim the abstract idea of conditioning access to content based on payment using conventional computer components.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner

    “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.”” slip op. at 11

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptIneligibleDecided for petitioner

    “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.” slip op. at 14

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “We agree with Petitioner. As noted above, Smartflash, as movant, has the burden to show that these exhibits are inadmissible. Smartflash’s reference to FRE 703 in unavailing because while this rule does not establish the admissibility of the exhibits, it also does not speak to whether these exhibits are inadmissible. Because Mr. Wechselberger attests that he reviewed these exhibits in reaching the opinions he expressed in this case, Smartflash has not shown that they are irrelevant under FRE 401 and 402. Accordingly, we decline to exclude Exhibits 1324, 1329, 1330, 1333, and 1335. We grant the motion as to Exhibit 1305.” slip op. at 30

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 8,336,772
• Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCAll claims unpatentable
  PTAB · May 26, 2016 · CBM2015-00033 · APJ Matthew R Clements · CBM · Final written decision

  Claims 25, 26, 30, and 32 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “We are persuaded that claims 25, 26, 30, and 32 are drawn to the abstract idea of conditioning and controlling access to content based on, for example, payment. Specifically, independent claim 25 recites “code to receive payment validation data . . . for said selected at least one item of multimedia content.” Independent claim 30 recites “code to receive payment validation data . . . for said selected at least one content data item.” Claim 26 depends from claim 25 and recites “code to present said second selected one or more items of retrieved multimedia content to a user via said display if access is permitted.” Claim 32 depends from claim 30 and recites “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. 1401, 1:23–57. The specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The specification further explains that once data has been published on the Internet, it is difficult to police access to and use of 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. 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.” slip op. at 11

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “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 13–14. Apple persuades us that claims 25, 26, 30, and 32 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 Apple’s rationale that the additional elements of claims 25, 26, 30, and 32 are field of use limitations and/or generic features of a computer that do not bring these claims within § 101 patent eligibility. Pet. 24–29; Reply 4–6.” slip op. at 14

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “We are persuaded by Apple that Exhibit 1402 is offered not for the truth of the matter asserted (i.e., the content of the ’772 patent), but as evidence of how Smartflash has characterized the ’772 patent. Thus, Smartflash has not persuaded us that Exhibit 1402 is evidence of the content of a writing or that it is cumulative to the ’772 patent. Furthermore, Smartflash has not persuaded us that Exhibit 1402 is irrelevant, at least because its characterization of the ’772 patent in prior proceedings is relevant to the credibility of its characterization of the ’772 patent in this proceeding. Smartflash contends that Exhibit 1402 does not contradict its characterization of the ’772 patent in this proceeding such that the credibility of Smartflash’s characterization is an issue. Paper 32, 3. Smartflash’s argument misses the point because the credibility of Smartflash’s characterization is for us to decide, and we have to consider the document at issue in making that determination. Further, as Apple notes (Paper 31, 2), Smartflash’s characterization of the ’772 patent in prior proceedings is relevant to Smartflash’s contention in this proceeding that the ’772 patent does not satisfy the “financial in nature” requirement for a covered business method patent review (Prelim. Resp. 5–11). Accordingly, we decline to exclude Exhibit 1402.” slip op. at 28

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Smartflash has not articulated a persuasive reason for excluding Mr. Wechselberger’s Declaration. Smartflash has not cited any authority requiring an expert to recite or apply the “preponderance of the evidence” standard in order for the expert opinion to be accorded weight. Under 37 C.F.R. § 42.1(d), we apply the preponderance of the evidence standard in determining whether Apple has established unpatentability. In doing so, it is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702.” slip op. at 32

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 8,336,772
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. et al. v. Smartflash LLCAll claims unpatentable
  PTAB · May 26, 2016 · CBM2014-00190 · APJ Rama G Elluru · CBM · Final written decision

  Claims 13 and 14 are unpatentable under § 101 because they claim the abstract idea of conditioning access to content on payment without an inventive concept.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “We are persuaded that claims 13 and 14 are drawn to an abstract idea. Specifically, claims 13 and 14 are directed to performing the fundamental economic practice of conditioning and controlling access to content based on payment. For example, claim 3, from which claim 13 depends, and claim 14 recite “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.” Furthermore, as discussed above, the ’720 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 1:15–55. 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 ’720 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:46–2:3. The ’720 patent makes clear that the crux of the claimed subject matter is restricting access to stored data based on supplier-defined access rules and validation of payment. Id.” slip op. at 8

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “more than the basic financial idea of enabling limited use of paid for and/or licensed content using ‘conventional’ computer systems and components.’” Reply 11 (quoting Ex. 1003 ¶ 126). Petitioner persuades us that claims 13 and 14 the ’720 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 13 and 14 are generic features of a computer that do not bring these claims within § 101 patent eligibility. Pet. 24–31; Reply 11–21.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded by Petitioner’s argument. Smartflash proffered this particular testimony not for purposes of showing validity of the patent claim at issue, but for purposes of challenging the credibility of Petitioner’s expert. Although we were not persuaded by this evidence, we did consider it for the purpose of deciding an issue of credibility. We, therefore, decline to exclude this testimony under FRE 401, 402, or 611(b).” slip op. at 24

  Patent outcomesUS 7,334,720 unpatentable
  § 101 eligibilitycites Mayo · Bilski
  Patents in suitUS 7,334,720
• LG Electronics, Inc. v. Advanced Micro Devices, Inc.All claims unpatentable
  PTAB · May 23, 2016 · IPR2015-00324 · APJ Joni Y Chang · IPR · Final written decision

  Claims 16–18 and 20 are unpatentable over Bertin; claims 21–23 are unpatentable over Bertin and over Gunther with ACPIS; claim 18 was not shown unpatentable over Gunther.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “Because there are many ways in which a reference may be disseminated to the” slip op. at 4

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “persuaded by AMD’s arguments and expert testimony that the claim term “block utilization information” is limited to usage rates—“an amount of block usage over a period of time”—excluding all other block utilization information. PO Resp. 25; Ex. 2002 ¶¶ 39–47, 59–60. We agree that the claim term “block utilization information” may encompass a usage rate, including a percentage of time that the block was used or the number of cache accesses that occurred over a period of time. Ex. 1001, 3:12–20. Nevertheless, nothing in the Specification or claims suggests that the term “block utilization information” excludes current usage demands of the block or usage information based on a current task or request for using the block from an instruction, as alleged by AMD.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundTerm construed board ownDecided for petitioner

    “specification or during prosecution. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “Mere criticism of a particular embodiment encompassed in the plain meaning of a claim term is not sufficient to rise to the level of clear disavowal.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366–67 (Fed. Cir. 2012); see also Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (holding that even a direct criticism of a particular technique did not rise to the level of clear disavowal); Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1315 (Fed. Cir. 2010) (explaining that even where a particular structure makes it “particularly difficult” to obtain certain benefits of the claimed invention, this does not rise to the level of disavowal of the structure). “To constitute disclaimer, there must be a clear and unmistakable disclaimer.” Thorner, 669 F.3d at 1366–67. Here, nothing in claims 16 and 23 requires the power consumption level be adjusted “for two or more operational states of the block.” Ex. 1001, 9:20–23, 10:12–15. AMD does not allege, nor do we discern, that there is a definition set forth in the Specification of the ’520 patent to give the claim terms recited in claims 16 and 23 a special meaning.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “AMD’s proposed claim constructions. PO Resp. 25–32; Ex. 2002 ¶¶ 59, 61– 74. As we discuss above in the claim construction section of this Decision, we decline to adopt those proposed constructions. Rather, in light of the Specification including the claims, we construe the claim term “block utilization information” to encompass information that indicates block usage, including current usage demands or usage information based on a current task or request for using a block to execute an instruction or application. And we construe the claim term “block utilization level” as “a magnitude or quantity indicative of block utilization.” Applying the proper claim constructions, we determine that LG has demonstrated sufficiently that Bertin describes every claim limitation of claim 16, including the “block utilization information,” “block utilization levels” and “adjusting power” claim limitations.” slip op. at 26

  Patent outcomesUS 6,895,520 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,895,520
• Hughes Network Systems, LLC v. Elbit Systems Land And C4i Ltd.Institution denied
  PTAB · Apr 29, 2016 · IPR2016-00141 · APJ William M Fink · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 2–8, 28, and 29 were unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Petition requesting an inter partes review of claims 2–8, 28, and 29 of U.S. Patent No. 6,240,073 B1 (Ex. 1001, “the ’073 patent”). Paper 6 (“Pet.”). Patent Owner, Elbit Systems Land and C4I Ltd., filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to claims 2–8, 28, and 29 of the ’073 patent. Accordingly, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner

    “Petitioner’s construction, “VSAT terminals performing the decision-making described at 10:56–11:40 and equivalents,” as not sufficiently specific. It is well established that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Party. Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)). Here, Patent Owner directs us to the driver and modem components within the VSAT terminal as performing the function of monitoring the random-access channel and switching the channel-assignment mode if necessary. Prelim. Resp. 18 (Ex. 1001 at 17:28–18:31, Fig. 8). We agree that driver 158 of the VSAT terminal performs the switching function. The cited portion of the Specification contains an explanation of the flow chart of Figure 8 setting forth the structure of the switching means function within driver 158. Moreover, we observe the driver is coupled to “modem 160 which comprises the random access transmitter 70 (FIG. 5) and the channel assignment transmitter 110 (FIG. 6)” Ex. 1001, 17:25–27, Fig. 7—the alleged transmitter means according to Petitioner, Pet. 7–8 (citing Ex. 1001, Figs. 5–6). Consequently, Patent Owner’s proposed construction locating the switching means in the driver, is reasonable given the driver is “coupled to said transmitter means,” as at least claims 2–8 require. Accordingly, we determine the structure of the “switching means” to be the VSAT terminal driver depicted in Figure 8 and described at 17:28–18:31.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “As discussed above, claim 28 requires the switching means be located “within said plurality of user terminals.” Ex. 1001, 28:3. Under Petitioner’s proposed mapping of the switching means to channel allocation server 222 and intelligent microports 106, the switching means is located in the hub, not within the user terminals as the claim requires. This is depicted in the above annotated Figure 2 (see highlighted elements). Accordingly, for this reason, Petitioner has not demonstrated that Rudrapatna discloses “switching means within said plurality of user terminals.” Moreover, even disregarding the location of the alleged switching means, we also agree Petitioner does not support its contention that Rudrapatna contains an equivalent structure to the switching means. See Prelim. Resp. 24. As discussed above, we construe the switching means to have the structure of the VSAT terminal driver as depicted in the flow chart of Figure 8 and described at 17:28–18:31 in the ’073 Patent Specification, or equivalents. Other than a conclusory assertion that Rudrapatna contains “an equivalent structure,” see Pet. 21–22, neither Petitioner nor Dr. Leopold provides further evidence or analysis.7 As such, Petitioner has not shown sufficiently why Rudrapatna’s alleged switching means is equivalent to the claimed switching means. See Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (“[A] challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “C. Alleged Obviousness of Claims 2–8 and 29 Claims 2–8 and 29, which Petitioner contends are obvious over Rudrapatna and additional references, recite a similar switching means limitation. For claim 29, which recites an identical switching means, Petitioner’s obviousness analysis does not address the deficiencies identified above. Claims 2–8 require the switching means to be coupled to said transmitter means (itself “within each user terminal”). However, there is no analysis in the Petition that Rudrapatna’s alleged switching means (which is in the hub) is “coupled to said transmitter means” (within each user terminal). See Pet. 36–38. Consequently, Petitioner’s obviousness analysis for these claims, which is substantially the same as discussed above regarding the switching means, see id., does not address the identified deficiencies. Accordingly, we decline to institute inter partes review as to claims 2–8 and 29 on the proposed grounds of obviousness.” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,240,073

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.