- Apple Inc. v. Smartflash LLCRehearing deniedPTAB · Jan 27, 2017 · CBM2015-00127 · APJ Rama G Elluru · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its determination that claims 4–12 and 16–18 are patent-ineligible under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“identify any specific matter that we misapprehended or overlooked. Although Patent Owner repeatedly states that the Board “misapprehends” Smartflash’s argument (see, e.g., Req. Reh’g 5, 10), it does not offer sufficient explanation as to how we misapprehended or overlooked any particular “matter [that] was previously addressed in a motion, an opposition, or a reply.” Rather than providing a proper request for rehearing, addressing particular matters that we previously allegedly misapprehended or overlooked, Patent Owner’s Request provides new briefing by expounding on argument already made.” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for patent owner
“Id. at 13 (citing Ex. 1001, 26:59–67 (claims 4–12), 28:12–19 (claims 16– 18)). But McRO does not stand for the general proposition that use of rules or conditions, such as payment, to achieve an improved technological result, alone, removes claims from the realm of abstract ideas. In McRO, the Court explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Id. at 1313 (citation omitted). The Court explained that the claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers (i.e., the processes were fundamentally different). Id. at 1314. The Court explained that “it [was] the incorporation of the claimed rules, not the use of the computer, that ‘improved [the] existing technological process’ by allowing the automation of further tasks.” Id. at 1314 (alteration in original) (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347, 2358 (2014)). The Court distinguished this from situations “where the claimed computer-automated process and the prior method were carried out in the same way.” Id. (citing Parker v. Flook, 437 U.S. 584, 585–86 (1978); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Alice, 134 S. Ct. at 2356)). As explained in our Final Decision, the challenged claims “merely implement an old practice in a new environment.” Final Dec. 12 (quoting FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016)). The challenged claims are similar to the claims found ineligible in FairWarning, which the Court distinguished from those at issue McRO. FairWarning, 839 F.3d at 1094–95. In FairWarning, the Court explained that “[t]he claimed rules ask . . . the same questions . . . that humans in analogous situations . . . have asked for decades, if not centuries” and that it is the “incorporation of a computer, not the claimed rule, that purportedly ‘improve[s] [the] existing technological process.’” Id. at 1095 (citing Alice, 134 S. Ct. at 2358). This is similar to the challenged claims, where the “payment validation data” and “access rule” in claim 4, via its dependency from claim 3, for example, is merely a condition for “determin[ing] what access is permitted to data stored on the data carrier,” that the ’720 patent explains “will normally be dependent upon payments made for data stored on the data carrier” (i.e., allowing access when the data has been purchased). Ex. 1001, 9:21–25.” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptDecided for patent owner
“understood, routine, [and] conventional activities previously known to the industry.’” Id. (citations omitted). We are not persuaded that we misapprehended Amdocs. As noted in our Final Decision, “[t]he ’720 patent treats as well-known all potentially technical aspects of the challenged claims, which simply require generic computer components.” Final Dec. 15. Unlike the generic components at issue in Amdocs, the generic components recited in claims 4–12 and 16–18 of the ’720 patent do not operate in an unconventional manner to achieve an improvement in computer functionality. See id. at 17–21. The challenged claims of the ’720 patent simply recite generic memories, data types, processors, and “code to” perform well-known functions with no description of the underlying implementation or programming. See id. at 14–17.” slip op. at 8
§ 101 eligibilitycites Alice · Bilski · EnfishPatents in suitUS 7,334,720 - Apple Inc. v. Smartflash LLCRehearing deniedPTAB · Jan 27, 2017 · CBM2015-00124 · APJ Rama G Elluru · CBM · Rehearing
The Board denied Patent Owner’s rehearing request and left intact its determination that claims 2–5, 9–11, 14, 15, 17, and 19 are patent-ineligible 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'Decided for patent owner
“[b]ecause the challenged claims are a technological improvement over the then-existing systems, and limit transfer and retrieval of content based on payment and/or access rules in a process specifically designed to achieve an improved technological result in conventional industry practice, the challenged claims are not directed to an abstract idea. Id. at 13 (citing Ex. 1001, 22:36–57 (claim 11), 26:4–7 (claim 2–5), 26:58– 27:17 (claims 14, 15), 28:16–23 (claim 17)). But McRO does not stand for the general proposition that use of rules or conditions, such as payment, to achieve an improved technological result, alone, removes claims from the realm of abstract ideas. In McRO, the Court explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Id. at 1313 (citation omitted). The Court explained that the claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers (i.e., the” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptDecided for patent owner
“In Amdocs, the Court held that “[claim 1] is eligible under step two because it contains a sufficient ‘inventive concept.’” Amdocs, 841 F.3d at 1300. The claim at issue recited “computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.” Id. The Court explained that the “claim entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).” Id. The Court noted that, although the solution requires generic computer components, “the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” Id. at 1300–1301. When determining that the claim was patent-eligible, the Court explained that the “enhancing limitation necessarily involves the arguably generic gatherers, network devices, and other components working in an unconventional distributed fashion to solve a particular technological problem.” Id. at 1301. The Court distinguished the claim from the claim held unpatentable in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) on the grounds that the “enhancing limitation . . . necessarily” slip op. at 7
§ 101 eligibilitycites Alice · Bilski · EnfishPatents in suitUS 7,942,317 - Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCRehearing deniedPTAB · Aug 24, 2016 · CBM2015-00032 · APJ Gregg I Anderson · CBM · Rehearing
The Board denied Smartflash’s rehearing request, leaving its determination that claims 14, 19, and 22 are patent ineligible under § 101 unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“burden of 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
“determination that claims 14, 19, and 22 (“the challenged claims”) are directed to patent-ineligible subject matter. Req. Reh’g 5. In its Request, Smartflash presents arguments directed to alleged similarities between the challenged claims and those at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (Req. Reh’g 5–10) and Enfish, LLC v. Microsoft Corp., No. 2015-2044 (Fed. Cir. May 12, 2016), and alleged differences between the challenged claims and those at issue in Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014) (id. at 10–15).” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptDecided for patent owner
“As we stated in our Final Written Decision and Petitioner argues, the ’772 patent specification treats as well-known and conventional all potentially technical elements of claims 14, 19, and 22, the claimed code performs generic computer functions, and the claims recite several generic and conventional data types. Final Dec. 15–17; Notice Resp. 1–2. These limitations of claims 14, 19, and 22 “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. 1315, Abstract, 10:24–30).” slip op. at 7
§ 101 eligibilitycites AlicePatents in suitUS 8,336,772 - Google Inc. v. Unwired Planet, LLCAll claims unpatentablePTAB · Apr 6, 2015 · CBM2014-00004 · APJ Jennifer S Bisk · CBM · Final written decision
Claims 21 and 22 are unpatentable under § 101 because they claim an abstract idea implemented using generic, conventional technology.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“term “SRC.” The ’151 patent does, however, give some context from which to discern the meaning of the term. For example, the ’151 patent states that “[t]he term ‘SRC technology,’ as used herein, may include any short-range radio communications technology now existing or yet to be developed, including, for example, radio frequency identification (‘RFID’), IEEE 802.15 (‘Bluetooth’), and IEEE 802.11 (‘WiFi’), among others.” Id. at 2:60–65; see also id. at 2:9–18 (describing “SRC device[s]” and “SRC-enabled mobile terminals” as including RFID, Bluetooth, and WiFi related devices). Moreover, the ’151 patent describes several embodiments of the invention. The first embodiment involves an RFID system. Id. at 3:7–8. The second embodiment is described as a “hybrid system” using “Bluetooth, WiFi, WiMAX, or any other wireless protocol” to connect with an RFID reader. Id. at 4:19–34. Based on this disclosure, it is clear that “SRC,” as used in the ’151 patent, encompasses communications at a range used by the technologies named in the specification—RFID, Bluetooth, and WiFi—and other short-range radio communication technologies. The question is whether the” slip op. at 7
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“extrinsic evidence, including testimony from Dr. Georgios B. Giannakis. Ex. 2001 ¶¶ 21–25. Dr. Giannakis testifies that SRC has a well-understood meaning in the art of “a nominal range of 100 meters or less, such as used by practical systems performing typical applications of RFID, Bluetooth, and Wi-Fi communications.” Id. ¶ 22. Moreover, Dr. Giannakis testifies that all three examples of SRC technologies listed by the ’151 patent have “a practical upper range in a typical deployment that is nominally 100 meters or less.” Id. ¶ 24. An expert’s opinion, however, is only as good as the facts upon which it is based. Dr. Giannakis points to no factual support for his specific numeric conclusions on this issue. See id. ¶¶ 22–24. We, therefore, give very little weight to Dr. Giannakis’s testimony concluding that the term SRC, as used in the ’151 patent, includes a specific upper bound of 100 meters. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations . . . may render the testimony of little probative value in a validity determination.”).” slip op. at 8
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Although a term may be relative, it is not necessarily indefinite. Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (“That some claim language may not be precise, however, does not automatically render a claim invalid.”). We are persuaded a person of ordinary skill in the art would understand that short-range communication covers a communication range “shorter” than the range covered by mobile networks. See Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1372 (Fed. Cir. 2013) (affirming the district court’s finding not indefinite the term “short-range communication protocol,” which was construed to mean “a set of procedures required to initiate and maintain short-range communication between two or more devices” where short-range communications similarly included Bluetooth and WiFi technologies, but did not include a numeric upper bound on range), cert. granted in-part on other grounds, 135 S.Ct. 752 (U.S. Dec. 5, 2014) (No. 13-896). The ’151 patent expressly describes mobile networks as including “cellular networks such as Global System for Mobile Communications (‘GSM’), Time Division Multiple Access (‘TDMA’), Code Division Multiple Access (‘CDMA’), and Personal Communications Service (‘PCS’) networks.” Ex. 1001, 2:53–58; see PO Resp. 19. It also describes interoperability between the various systems, contrasting them by size. For example, in describing the problems encountered when locating mobile terminals, the Specification describes “cell sizes [that] have grown to cover up to 20 km in diameter or even wider.” Ex. 1001, 1:67–2:4. A solution to this problem is employing “at least one SRC device.” Id. at 2:9–11. The ’151 patent also describes employing the “at least one SRC device . . . within a mobile network.” Id. at 2:11–17 (emphasis added). Thus, the specification makes reasonably clear to the person of ordinary skill the range of SRC in comparison to the range of mobile networks—and in turn the scope of SRC as used in claims 21 and 22. See Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007) (holding the term “near” not indefinite where the specification makes reasonably clear that the term means “very close to or at the edge of”).” slip op. at 12
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“We agree with Petitioner that the claimed invention is directed to an abstract idea, specifically, the abstract idea of receiving information and providing services or advertisements based on that information. The preambles and all claim limitations of both claims support this abstract idea, and the ’151 patent repeatedly discloses that the invention is directed to providing services or advertisements. See, e.g., Ex. 1001, 1:7–15, 25–27. Patent Owner has not identified any portion of the ’151 patent inconsistent with this abstract idea, and we are persuaded that the identified abstract idea is a fundamental building block of economics, similar in nature to the abstract idea of hedging claimed in Bilski and intermediated settlement claimed in Alice. Patent Owner does not direct us to any authority for its assertion that an idea is not abstract if it includes specific recitation regarding the type of information transmitted, how that information is acquired, and whether it is used for authentication. Here, the claims are generally directed to a method of (i) receiving information over a network, (ii) authenticating that information, and (iii) providing a service to a mobile terminal or receiving an advertisement over the network, all of which inform the aforementioned abstract idea. See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Assoc., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (characterizing the claimed abstract idea as “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory” despite claim’s recitation of specific limitations, like scanner). This combination of steps recites an abstraction because it has “no particular concrete or tangible form” and is “devoid of a concrete or tangible application.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). The details emphasized by Patent Owner do not remove the claimed methods from the realm of the abstract. These details are characteristic of the invention’s implementation, rather than its general idea. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014) (describing the claim’s abstract idea without including the claim’s “computer network” limitation); see also Ultramercial 772 F.3d at 715 (stating that more detailed limitations may “add a degree of particularity,” but do not convert the concept embodied by the majority of the limitations into something concrete).” slip op. at 16
Patent outcomesUS 7,463,151 unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Alice · NautilusPatents in suitUS 7,463,151
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.