• Autodesk, Inc. v. Uniloc USA, Inc. And Uniloc Luxembourg, S.A.All claims unpatentable
  PTAB · Sep 11, 2017 · CBM2016-00043 · APJ Christopher M Kaiser · CBM · Final written decision

  Claims 1, 2, 4–7, and 12–19 are unpatentable under § 101; claims 3, 8–11, and 20 are subject to adverse judgment after disclaimer.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “B. Statutory Disclaimer During the pendency of this proceeding, Patent Owner filed a disclaimer pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2014. According to this disclaimer, Patent Owner disclaims claims 3, 8–11, and 20 of the ’820 patent. Id.; see also Resp. 1 (“Contemporaneously with the filing of this Response, Patent Owner is disclaiming claims 3, 8, 9, 10, 11, and 20 of the ’820 Patent.”). Our rules provide for entry of adverse judgment against a Patent Owner who disclaims “a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Although Patent Owner does not disclaim all the challenged claims, and although Patent Owner therefore has some claims remaining in this trial, we construe the disclaimer of claims 3, 8–11, and 20 as a request for the entry of adverse judgment solely with respect to those claims. We grant the request and enter adverse judgment with respect to claims 3, 8–11, and 20.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “1. Add-On Computer Software Code Both parties propose construing “add-on computer software code,” a term that appears in every challenged claim. Ex. 1001, 78:43–82:36. Petitioner argues that this term should be interpreted as a “set of computer code that cannot be run independently from a parent program.” Pet. 22. Patent Owner argues that the term should be interpreted as “set of computer code that is designed to run within a parent computer software application or code, particularly architectural CAD software (or another architectural, civil, industrial, or other software design tool), as an internal component.” Resp. 42–43. We agree with Patent Owner. Patent Owner’s construction is taken directly from the written description of the ’820 patent, which provides a reasonably clear, deliberate, and precise definition of the term. See Paulsen, 30 F.3d at 1480; Ex. 1001, 61:42–51 (“The plug-in (add-on) computer software code is . . . .”). To the extent that Petitioner’s proposed construction seeks to limit add-on software code further by requiring that the software code be incapable of running independently from a parent program, as opposed merely to being designed to run within the parent program as an internal component, this further limitation is inconsistent with the lexicography undertaken by the patentee of the ’820 patent. Accordingly, we construe “add-on computer software code” as a “set of computer code that is designed to run within a parent computer software application or code, particularly architectural CAD software (or another architectural, civil, industrial, or other software design tool), as an internal component.”” slip op. at 6

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

    “As discussed above, the ’820 patent describes solving problems with the generation of cost estimates of construction projects, including that the process takes significant time and effort, that the estimates produced are difficult to revise, and that the estimates can be inaccurate, leading to cost overruns and difficulties obtaining construction loans. Ex. 1001, 1:15–62. The claims recite a computer readable medium or system for automating the process of generating a price schedule, which is used to develop the overall project cost estimate. Id. at 78:43–82:36. In so doing, the claims do not recite any “specific asserted improvement in computer capabilities,” such as the “self-referential table for a computer database” in Enfish, 822 F.3d at 1336. Instead, the claims of the ’820 patent “invoke[]” known aspects of computer technology, including “[a] non-transitory computer readable medium,” “a computer that includes a processor and a memory,” “an add-on computer software code,” “a software design tool,” and “a database,” “merely as a tool” for solving the problem of improving the known process of generating construction project cost estimates. Id.; Ex. 1001, 78:43–60. Accordingly, the claims of the ’820 patent are not like those considered in Enfish, where the claims were determined at the first step of the Alice framework not to be directed to abstract ideas because they were directed to “[a] specific asserted improvement in computer capabilities.” 822 F.3d at 1336. Instead, Petitioner has shown by a preponderance of the evidence that the challenged claims of the ’820 patent are focused “on a process that qualifies as an ‘abstract idea.’” Id. The ’820 patent makes clear that the heart of the claimed subject matter is generating prices for construction projects, a process that can be accomplished without automation technology. Ex. 1001, 1:15–62. The claims themselves recite “[a] non-transitory computer readable medium [that] causes [a] computer to generate a price schedule” and “[a] system for creating a pricing schedule.” Id. at 78:43–51, 82:4. As discussed above, the computer technology recited in the claims is used merely as a tool to automate the process of determining the price of a construction project. Determining a price is an abstract idea. See Versata Dev. Grp., 793 F.3d at 1333–34 (Fed. Cir. 2015). Thus, on the current record, Petitioner has made a sufficient showing that the claims of the ’820 patent are directed to an abstract idea under the first step of the Alice analysis.” slip op. at 20

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

    “application of an abstract idea. Mayo, 566 U.S. at 78. Petitioner argues that the challenged claims have no such elements, because “the challenged claims add nothing more than well-understood, routine, conventional activity to the abstract idea of calculating a price.” Pet. 32–48. Patent Owner argues that the presence of the add-on computer software code limitations in the challenged claims transforms those claims into patent-eligible applications. Resp. 49–50. We are persuaded that Petitioner has shown by a preponderance of the evidence that the challenged claims of the ’820 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355.” slip op. at 23

  Patent outcomesUS 8,515,820 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Enfish
  Patents in suitUS 8,515,820
• Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00132 · 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 exception

    “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.” 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. 1201, 1:23–57. The patent specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The specification further explains that once data has been published on the Internet, it is difficult to police access to and use of it by Internet users who may not even realize that it is pirated. Id. The ’772 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:61–2:3. The ’772 patent makes clear that the crux of the claimed subject matter is restricting access to stored content based on validation of payment. Id.” slip op. at 11

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

    “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.”).” slip op. at 13

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “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 32

  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 · Nov 10, 2016 · CBM2015-00132 · 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 and controlling access to content 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 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 conceptUnpatentable

    “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, deniedMixed

    “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. / Google, Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00132 · APJ Matthew R Clements · CBM · Final written decision

  Claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 are unpatentable under § 101 as directed to an abstract idea without an inventive concept.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner has not articulated a persuasive reason for excluding Dr. Kelly’s Declaration. Because Exhibit 1019 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. 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. Accordingly, we decline to exclude Exhibit 1019 in its entirety or any paragraph therein.” slip op. at 32

  • BurdenUnpatentable

    “ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 35 recites “code responsive to the payment validation data to retrieve data from the data supplier and to write the retrieved data into the data carrier.” Claim 36 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data” and “code to access the stored data when access is permitted.”” slip op. at 9

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

    “We are persuaded that the challenged claims are drawn to a patent- ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 35 recites “code responsive to the payment validation data to retrieve data from the data supplier and to write the retrieved data into the data carrier.” Claim 36 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data” and “code to access the stored data when access is permitted.” As discussed above, the ’772 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 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 that data 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 supplier-defined access rules and validation of payment. Id. at 1:59–2:19. Although the Specification refers to data piracy on the Internet, the challenged claims are not limited to the Internet. The underlying concept of the challenged claims, particularly when viewed in light of the Specification, is paying for and/or controlling access to content, as Petitioner contends. As discussed further below, this is a fundamental economic practice long in existence in commerce. See Bilski, 561 U.S. at 611.” slip op. at 9

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

    “recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Pet. Reply 5. We are persuaded that claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 of the ’772 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent 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 the rationale articulated in the Petition that the additional elements of the challenged claims are either field of use limitations and/or generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 50–76.” slip op. at 14

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 8,336,772
• Apple Inc. / Google, Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00133 · APJ Matthew R Clements · CBM · Final written decision

  Claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 are unpatentable under § 101 as directed to 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 the challenged claims are drawn to a patent- ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 35 recites “code responsive to the payment validation data to retrieve data from the data supplier and to write the retrieved data into the data carrier.” Claim 36 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data” and “code to access the stored data when access is permitted.”” slip op. at 9

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

    “recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Pet. Reply 5. We are persuaded that claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 of the ’772 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent 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 the rationale articulated in the Petition that the additional elements of the challenged claims are either field of use limitations and/or generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 50–76.” slip op. at 14

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner has not articulated a persuasive reason for excluding Dr. Kelly’s Declaration. Because Exhibit 1019 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. 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. Accordingly, we decline to exclude Exhibit 1019 in its entirety or any paragraph therein.” slip op. at 32

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 8,336,772
• Apple Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00131 · APJ Matthew R Clements · CBM · Final written decision

  Claims 3–6, 8–14, 16–25, 27–30, and 32–41 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 the challenged claims are drawn to a patent- ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 21 recites “code for storing and accessing the one or more use rules in the use rule memory.” Claim 35 recites “evaluating the use status data using the one or more use rules to determine whether access to the content data item is permitted” and “enabling access to the content data item responsive to a determination that access to the content data item is permitted.” As discussed above, the ’598 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 1:20–55. 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 that data by internet users who may not even realize that it is pirated. Id. The ’598 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:59–2:4. The ’598 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. at 1:59–2:15. Although the Specification refers to data piracy on the Internet, the challenged claims are not limited to the Internet. The underlying concept of the challenged claims, particularly when viewed in light of the Specification, is paying for and/or controlling access to content, as Petitioner contends. As discussed further below, this is a fundamental economic practice long in existence in commerce. See Bilski, 561 U.S. at 611.” slip op. at 8

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

    “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 c]laims’ ‘additional features’ recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Pet. Reply 6. We are persuaded that claims 3–6, 8–14, 16–25, 27–30, and 32–41 of the ’598 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent 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 the rationale articulated in the Petition that the additional elements of the challenged claims are either field of use limitations and/or generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 53–73.” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner has not articulated a persuasive reason for excluding Dr. Kelly’s Declaration. Because Exhibit 1019 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. 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. Accordingly, we decline to exclude Exhibit 1019 in its entirety or any paragraph therein.” slip op. at 32

  Patent outcomesUS 8,061,598 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 8,061,598
• 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
• 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 · CBM2015-00033 · 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

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.