Apple Inc.v.Smartflash LLC

Patent Trial and Appeal Board

Sep 30, 2014

13212047 (P.T.A.B. Sep. 30, 2014)

Trials@uspto.gov Paper 7
Tel: 571-272-7822 Entered: September 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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

Case CBM2014-00110
Patent 8,336,772 B2

Before JENNIFER S. BISK, RAMA G. ELLURU, NEIL T. POWELL,
JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
Administrative Patent Judges.
POWELL, Administrative Patent Judge.
DECISION
Denying Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208
CBM2014-00110
Patent 8,336,772 B2
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INTRODUCTION
A. Background
Petitioner, Apple Inc. (“Apple”), filed a Petition (Paper 2, “Pet.”) to
institute a covered business method patent review of claims 1, 5, 8, 10, 14,
19, 22, 25, 26, 30, and 32 (“the challenged claims”) of U.S. Patent
No. 8,336,772 B2 (Ex. 1001, “the ’772 patent”) pursuant to § 18 of the
Leahy-Smith America Invents Act (“AIA”). Patent Owner, Smartflash LLC
(“Smartflash”), filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We
have jurisdiction under 35 U.S.C. § 324, which provides that a covered
business method patent review may not be instituted “unless . . . it is more
likely than not that at least 1 of the claims challenged in the petition is
unpatentable.”
B. Asserted Grounds
Apple contends that the challenged claims are unpatentable under
35 U.S.C. §§ 102 and/or 103 based on the following grounds (Pet. 18,
31–79).
References Basis Claims Challenged
Stefik ’235
1
and Stefik ’980
2
§ 102
3
8, 10, 19, 22, 30, and 32

1
U.S. Patent No. 5,530,235 (Ex. 1013) (“Stefik ’235”).
2
U.S. Patent No. 5,629,980 (Ex. 1014) (“Stefik ’980”).
3
Apple refers to Stefik ’235 and Stefik ’980 collectively as “Stefik” and
argues that they should be considered as a single reference for anticipation
purposes because, according to Apple, Stefik ’235 incorporates Stefik ’980
by reference. Pet. 23–24, n.11. Smartflash disagrees. Prelim. Resp. 13–15.
We do not reach the issue because we determine that Apple does not
demonstrate that the combined teachings of Stefik ’235 and Stefik ’980
teach all the recited claim limitations. In the discussion below, we use
“Stefik” to refer to the combined teachings of Stefik ’235 and Stefik ’980.
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References Basis Claims Challenged
Stefik ’235 and Stefik ’980 § 103 1, 5, 8, 10, 14, 19, 22, 25, 26,
30, and 32
Stefik ’235, Stefik ’980, and
Poggio
4

§ 103 1, 5, 8, 10, 14, 19, 22, 25, 26,
30, and 32
Stefik ’235, Stefik ’980, and
Sato
5

§ 103 1, 5, 8, 10, 14, 19, 22, 25, 26,
30, and 32
Stefik ’235, Stefik ’980,
Poggio, and Sato
§ 103 1, 5, 8, 10, 14, 19, 22, 25, 26,
30, and 32
Apple also provides a declaration from Anthony J. Wechselberger
(“the Wechselberger Declaration”).
6
Ex. 1021.
After considering the Petition and Preliminary Response, we
determine that the ’772 patent is a covered business method patent. We
further determine, however, that Apple has not demonstrated that it is more
likely than not that at least one of the challenged claims is unpatentable.
Therefore, we deny institution of a covered business method patent review
of claims 1, 5, 8, 10, 14, 19, 22, 25, 26, 30, and 32 of the ’772 patent.

4
European Patent Application, Publication No. EP0809221A2 (translation)
(Ex. 1016) (“Poggio”).
5
JP Patent Application Publication No. H11-164058 (including translation)
(Ex. 1018) (“Sato”).
6
On this record, we are not persuaded by Smartflash’s argument that we
should disregard the Wechselberger Declaration. See Prelim. Resp. 16–18.
Smartflash identifies purported omissions from the Declaration, but offers
no evidence that Mr. Wechselberger used incorrect criteria, failed to
consider evidence, or is not an expert in the appropriate field. Id.
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C. Related Matters
The parties indicate that Smartflash has sued Apple for infringement
of the ’772 patent, identifying the following district court case: Smartflash
LLC v. Apple Inc., Case No. 6:13-cv-447 (E.D. Tex.). Pet. 17; Papers 4, 5.
The parties also indicate that the ’772 patent is the subject of other district
court cases, to which Apple is not a party: Smartflash LLC v. Samsung,
Case No. 6:13-cv-448 (E.D. Tex.), and Smartflash LLC v. Google, Case
No. 6:14-cv-435 (E.D. Tex.). Id.; Apple, Inc. v. Smartflash LLC, Case
CBM2014-00111 (PTAB), Pet. 19, Papers 4, 5.
Apple filed a concurrent Petition for covered business method patent
review of the ’772 patent: CBM2014-00111.
7
In addition, Apple filed ten
other Petitions for covered business method patent reviews challenging
claims of patents owned by Smartflash and disclosing similar subject matter:
CBM2014-00102; CBM2014-00103; CBM2014-00104; CBM2014-00105;
CBM2014-00106; CBM2014-00107; CBM2014-00108, CBM2014-00109;
CBM2014-00112; and CBM2014-00113.
D. The ’772 Patent
The ’772 patent relates to “a portable data carrier for storing and
paying for data and to computer systems for providing access to data to be
stored” and the “corresponding methods and computer programs.”
Ex. 1001, 1:24–28. Owners of proprietary data, especially audio recordings,

7
Smartflash argues that the multiple petitions filed against the ’772 patent
violate the page limit requirement of 37 C.F.R. § 42.24(a)(iii), but does not
cite any authority to support its position. Prelim. Resp. 11–12. The page
limit for petitions requesting covered business method patent review is 80
pages (37 C.F.R. § 42.24(a)(iii)), and the Petition in each of CBM2014-
00110 and CBM2014-00111 meets that requirement.

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Patent 8,336,772 B2
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have an urgent need to address the prevalence of “data pirates,” who make
proprietary data available over the internet without authorization.
Id. at 1:32–58. The ’772 patent describes providing portable data storage
together with a means for conditioning access to that data upon validated
payment. Id. at 1:62–2:3. According to the ’772 patent, this combination of
the payment validation means with the data storage means allows data
owners to make their data available over the internet without fear of data
pirates. Id. at 2:10–18.
As described, the portable data storage device is connected to a
terminal for internet access. Id. at 1:62–2:3. The terminal reads payment
information, validates that information, and downloads data into the portable
storage device from a data supplier. Id. The data on the portable storage
device can be retrieved and output from a mobile device. Id. at 2:4–7. The
’772 patent makes clear that the actual implementation of these components
is not critical and may be implemented in many ways. See, e.g., id. at
25:59–62 (“The skilled person will understand that many variants to the
system are possible and the invention is not limited to the described
embodiments.”).
E. Challenged Claims
Apple challenges claims 1, 5, 8, 10, 14, 19, 22, 25, 26, 30, and 32 of
the ’772 patent. Claims 1, 8, 14, 19, 25, and 30 are independent. Claim 5
depends from claim 1; claim 10 depends from claim 8; claim 22 depends
from claim 19; claim 26 depends from claim 25; and claim 32 depends from
claim 30. Claims 1 and 25 are illustrative of the claims at issue and recite
the following.
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1. A handheld multimedia terminal, comprising:
a wireless interface configured to interface with a wireless
network for accessing a remote computer system;
non-volatile memory configured to store multimedia content,
wherein said multimedia content comprises one or more of music
data, video data and computer game data;
a program store storing processor control code;
a processor coupled to said non-volatile memory, said program
store, said wireless interface and
a user interface to allow a user to select and play said
multimedia content;
a display for displaying one or both of said played multimedia
content and data relating to said played multimedia content;
wherein the processor control code comprises:
code to request identifier data identifying one or more
items of multimedia content stored in the non-volatile memory;
code to receive said identifier data;
code to present to a user on said display said identified
one or more items of multimedia content available from the
non-volatile memory;
code to receive a user selection to select at least one of
said one or more of said stored items of multimedia content;
code responsive to said user selection of said at least one
selected item of multimedia content to transmit payment data
relating to payment for said at least one selected item of
multimedia content via said wireless interface for validation by
a payment validation system;
code to receive payment validation data via said wireless
interface defining if said payment validation system has
validated payment for said at least one selected item of
multimedia content; and
code to control access to said at least one selected item of
multimedia content on said terminal responsive to said payment
validation data,
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wherein said user interface is operable to enable a user to select
said at least one item of multimedia content available from said non-
volatile memory; and
wherein said user interface is operable to enable a user to access
said at least one selected item of multimedia content responsive to
said code to control access permitting access to said at least one
selected item of multimedia content.
Ex. 1001, 25:65–26:43.

25. A handheld multimedia terminal for retrieving and accessing
protected multimedia content, comprising:
a wireless interface configured to interface with a wireless
network for communicating with a data supplier;
non-volatile memory configured to store multimedia content,
wherein said multimedia content comprises one or more of music
data, video data and computer game data;
a program store storing processor control code;
a processor coupled to said non-volatile memory, said program
store, said wireless interface and
a user interface to allow a user to select and play said
multimedia content;
a display for displaying one or both of said played multimedia
content and data relating to said played multimedia content;
wherein the processor control code comprises:
code to request identifier data identifying one or more
items of multimedia content available for retrieving via said
wireless interface;
code to receive said identifier data via said wireless
interface, said identifier data identifying said one or more items
of multimedia content available for retrieving via said wireless
interface;
code to request content information via said wireless
interface, wherein said content information comprises one or
more of description data and cost data pertaining to at least one
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Patent 8,336,772 B2
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of said one or more items of multimedia content identified by
said identifier data;
code to receive said content information via said wireless
interface;
code to present said content information pertaining to
said identified one or more items of multimedia content
available for retrieving to a user on said display;
code to receive a first user selection selecting at least one
of said one or more items of multimedia content available for
retrieving;
code responsive to said first 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 via said wireless interface for
validation by a payment validation system;
code to receive payment validation data via said wireless
interface defining if said payment validation system has
validated payment for said selected at least one item of
multimedia content; and
code responsive to said payment validation data to
retrieve said selected at least one item of multimedia content via
said wireless interface from a data supplier and to write said
retrieved at least one item of multimedia content into said non-
volatile memory, code to receive a second user selection
selecting one or more of said items of retrieved multimedia
content to access;
code to read use status data and use rules from said non-
volatile memory pertaining to said second selected one or more
items of retrieved multimedia content; and
code to evaluate said use status data and use rules to
determine whether access is permitted to said second selected
one or more items of retrieved multimedia content,
wherein said user interface is operable to enable a user to make
said first user selection of said selected at least one item of multimedia
content available for retrieving,
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wherein said user interface is operable to enable a user to make
said second user selection of said one or more items of retrieved
multimedia content available for accessing, and
wherein said user interface is operable to enable a user to access
said second user selection of said one or more item of retrieved
multimedia content responsive to said code to control access
permitting access to said second selected one or more items of
retrieved multimedia content.
Ex. 1001, 29:4–30:47.
ANALYSIS
A. Claim Construction
In a covered business method patent review, claim terms are given
their broadest reasonable interpretation in light of the specification in which
they appear. See 37 C.F.R. § 42.300(b). Applying that standard, we
interpret the claim terms of the ’772 patent according to their ordinary and
customary meaning in the context of the patent’s written description. See In
re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We
determine that the claim terms do not require an express construction for
purposes of this Decision.
B. Covered Business Method Patent
Section 18 of the AIA provides for the creation of a transitional
program for reviewing covered business method patents. A “[c]overed
business method patent” is a patent that “claims a method or corresponding
apparatus for performing data processing or other operations used in the
practice, administration, or management of a financial product or service,
except that the term does not include patents for technological inventions.”
AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have only one
claim directed to a covered business method to be eligible for review. See
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Transitional Program for Covered Business Method Patents—Definitions of
Covered Business Method Patent and Technological Invention; Final Rule,
77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”) (Comment 8).
1. Financial Product or Service
Apple asserts that claim 8 “clearly concerns a computer system . . . for
performing data processing and other operations used in the practice,
administration, or management of a financial activity and service,” because
it “describes transmitting payment data to a payment validation system,
receiving payment validation, and controlling access to data based on
payment.” Pet. 13. Based on this record, we agree with Apple that the
subject matter recited by claim 8 is directed to activities that are financial in
nature, namely data access conditioned on payment validation. Claim 8
recites “code . . . to transmit payment data relating to payment for said at
least one selected item of multimedia content . . . for validation by a
payment validation system,” “code to receive payment validation data . . .
defining if said payment validation system has validated payment for said at
least one selected item of multimedia content,” and “code to control access
to said at least one selected item of multimedia content on said terminal
responsive to said payment validation data.” We are persuaded that payment
validation is a financial activity, and conditioning data access based on
payment validation amounts to a financial service. This is consistent with
the Specification of the ’772 patent, which confirms claim 8’s connection to
financial activities by stating that the invention “relates to a portable data
carrier for storing and paying for data.” Ex. 1001, 1:23–25. The
Specification also states repeatedly that the disclosed invention involves
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managing access to data based on payment validation. See, e.g., Ex. 1001,
1:62–2:3; 6:64–7:1; 20:59–63.
Smartflash disagrees that claim 8 satisfies the financial-in-nature
requirement of AIA § 18(d)(1), arguing that section should be interpreted
narrowly to cover only technology used specifically in the financial or
banking industry. Prelim. Resp. 3–9. Smartflash cites to various portions of
the legislative history as support for its proposed interpretation. Id.
We do not agree that the phrase “financial product or service” in
§ 18(d)(1) of the AIA is as limited as Smartflash proposes. The AIA does
not include as a prerequisite for covered business method patent review, a
“nexus” to a “financial business,” but rather a “method or corresponding
apparatus for performing data processing or other operations used in the
practice, administration, or management of a financial product or service.”
AIA § 18(d)(1). Further, contrary to Smartflash’s view of the legislative
history, the legislative history indicates that the phrase “financial product or
service” is not limited to the products or services of the “financial services
industry” and is to be interpreted broadly. CBM Rules, 77 Fed. Reg. at
48,735–36. For example, the “legislative history explains that the definition
of covered business method patent was drafted to encompass patents
‘claiming activities that are financial in nature, incidental to a financial
activity or complementary to a financial activity.’” Id. (citing 157 Cong.
Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)).
In addition, Smartflash asserts that claim 8 is not directed to an
apparatus or method that is financial in nature, because claim 8 “omits the
specifics of how payment is made.” Prelim. Resp. 8. We are not persuaded
by this argument because § 18(d)(1) of the AIA does not include such a
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requirement, nor does Smartflash point to any other authority that makes
such a requirement. See Prelim. Resp. 8. We determine that because
payment is required by claim 8, as Smartflash acknowledges (id.), the
financial in nature requirement of § 18(d)(1) is satisfied.
For the reasons stated above, and based on the particular facts of this
proceeding, we conclude that the ’772 patent includes at least one claim that
meets the financial in nature requirement of § 18(d)(1) of the AIA.
2. Exclusion for Technological Inventions
Apple asserts that claim 8 does not fall within § 18(d)(1)’s exclusion
for “technological inventions.” Pet. 13–17. In particular, Apple argues that
claim 8 “does not claim ‘subject matter as a whole [that] recites a
technological feature that is novel and unobvious over the prior art[] and
solves a technical problem using a technical solution.’” Id. at 13 (quoting
37 C.F.R. § 42.301(b)) (emphases in original). Smartflash disagrees and
argues that claim 8, as a whole, recites at least one technological feature.
Prelim. Resp. 9.
We are persuaded that claim 8 as a whole does not recite a
technological feature that is novel and unobvious over the prior art. The
claimed “data access terminal” is a generic hardware device known in the
prior art. The Specification discloses, for instance, that a data access
terminal “may be a conventional computer or, alternatively, it may be a
mobile phone.” See Ex. 1001, 4:8–9. Claim 8 also recites a “payment
validation system.” The Specification, however, discloses that the required
payment validation system may be one that is already in use or otherwise
commercially available. For example, “[t]he payment validation system
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may be part of the data supplier’s computer systems or it may be a separate
e-payment system.” Id. at 9:1–3; see id. at 13:55–67.
In addition, the ’772 patent makes clear that the asserted novelty of
the invention is not in any specific improvement of software or hardware,
but in the method of controlling access to data. For example, the ’772 patent
states that “there is an urgent need to find a way to address the problem of
data piracy” (id. at 1:56–58), while acknowledging that the “physical
embodiment of the system is not critical and a skilled person will understand
that the terminals, data processing systems and the like can all take a variety
of forms” (id. at 12:37–40). Thus, we determine that claim 8 is merely the
recitation of a combination of known technologies, which indicates that it is
not a patent for a technological invention. See Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012).
Smartflash also argues that claim 8 falls within § 18(d)(1)’s exclusion
for “technological inventions,” because it is directed towards solving the
technological problem of “controlling access to content data items available
from a data carrier, e.g., as part of a convenient, legitimate acquisition of
data from a data supplier” with the technological solution of “a data access
terminal from which payment data is read and which controls access to a
selected content data item responsive to the payment validation data.”
Prelim. Resp. 9–10. We are not persuaded by this argument because, as
Apple argues, the problem being solved by claim 8 is a business problem—
data piracy. Pet. 13–14. For example, the Specification states that
“[b]inding the data access and payment together allows the legitimate
owners of the data to make the data available themselves over the internet
without fear of loss of revenue, thus undermining the position of data
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pirates.” Ex. 1001, 2:15–19. Therefore, based on the particular facts of this
proceeding, we conclude that claim 8 does not recite a technological
invention and is eligible for a covered business method patent review.
3. Conclusion
In view of the foregoing, we conclude that the ’772 patent is a covered
business method patent under AIA § 18(d)(1) and is eligible for review
using the transitional covered business method patent program.
C. Claim Challenges
Apple asserts that each of claims 1, 5, 8, 10, 14, 19, 22, 25, 26, 30,
and 32 is unpatentable over “Stefik” alone or in combination with one or
both of Poggio and Sato. Specifically, Apple asserts that claims 8, 10, 19,
and 22 are anticipated by Stefik. Pet. 18. Apple also asserts that claims 1, 5,
8, 10, 14, 19, 22, 25, 26, 30, and 32 are obvious over 1) Stefik alone,
2) Stefik in combination with Poggio, 3) Stefik in combination with Sato,
and 4) Stefik in combination with Poggio and Sato. Id. Apple provides one
claim chart for each of claims 1, 5, 8, 10, 14, 19, 22, 25, 26, 30, and 32.
1. Claims 1, 5, 8, 10, 14, 19, and 22—Anticipation and
Obviousness
Independent claim 1 recites “code to request identifier data identifying
one or more items of multimedia content stored in the non-volatile
memory.” In addressing this limitation, Apple asserts that Stefik discloses a
hierarchical document storage system that allows an operator to navigate
layers of hierarchy directories to find and select desired multimedia content
“(e.g., digital work or document stored in memory on a repository, such as a
DocuCard).” Pet. 37. Apple also states that “[t]he multimedia content (e.g.,
digital work or document) is identified to the user by identifier data (e.g.,
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identification stored in a description tree file),” and that “Stefik’s
hierarchical document storage system permits a user to navigate through
displayed content identifier data (e.g. identification information in a
description tree file).” Id. Additionally, Apple argues that Stefik’s system
includes a processor that implements stored code “to provide identifier data
and navigation to a user.” Id. Apple further argues that a person of ordinary
skill in the art “would understand that Stefik’s disclosure of a hierarchical
document storage system navigated by a user necessarily, and thus
inherently, discloses requesting and receiving the identifier data (e.g., the
description tree file information) that is then displayed to a user.” Id. at 37,
n.19; see id. at 37, n.20.
These arguments do not explain sufficiently how Stefik or any of the
other cited references disclose, teach, suggest, or would have otherwise
rendered obvious the claimed “code to request identifier data.” Regarding
Apple’s assertions that Stefik discloses allowing a user to navigate a
hierarchical document storage system with the system identifying
multimedia content to the user by identifier data from a description tree file,
these arguments do not allege sufficiently that Stefik discloses “code to
request identifier data.” Likewise, even if assumed accurate, Apple’s
assertion that a processor executes stored code to provide navigation and
identifier data also does not address whether the stored code includes “code
to request identifier data” (emphasis added). Regarding the inherency
argument, Apple does not explain why a person of ordinary skill in the art
allegedly would understand that Stefik necessarily discloses requesting
identifier data. “Inherency . . . may not be established by probabilities or
possibilities.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting
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Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)). For the foregoing
reasons, Apple does not persuade us that Stefik discloses the “code to
request identifier data,” recited in claim 1, either inherently or otherwise.
And Apple does not argue that the claim limitation is taught, suggested, or
would have been otherwise rendered obvious by Stefik alone or in
combination with the other cited references.
Each of independent claims 8, 14, and 19 includes a limitation similar
to the above-discussed limitation of claim 1. Independent claim 8 recites
“code to request identifier data identifying one or more content data items
stored on the data carrier.” Claim 14 recites “code to request identifier data
identifying one or more items of multimedia content available for retrieving
via said wireless interface.” Claims 19 recites “code to request identifier
data identifying one or more content data items available for retrieving.”
Apple addresses each of these limitations of claims 8, 14, and 19 with the
same or substantially the same arguments as presented to address the above-
discussed limitation of claim 1. See Pet. 51, 53, 68. For the reasons
discussed above, these arguments do not persuade us that the limitations are
disclosed by Stefik, either inherently or otherwise. And Apple does not
argue that the claim limitations are taught, suggested, or would have been
otherwise rendered obvious by Stefik alone or in combination with the other
cited references.
For the foregoing reasons, Apple has failed to establish that it, more
likely than not, would prevail in demonstrating that any of independent
claims 1, 8, 14, and 19 is unpatentable (as anticipated or obvious) over
Stefik alone or in combination with the other cited references. For the same
reasons, we determine that Apple has failed to establish that it, more likely
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than not, would prevail in demonstrating that any of claims 5, 10, and 22,
each of which depends from one of claims 1, 8, and 19, is unpatentable (as
anticipated or obvious).
2. Claims 25, 26, 30, and 32—Anticipation and Obviousness
Like claim 1, independent claims 25 and 30 include limitations that
recite “code to request identifier data.” Claim 25 recites “code to request
identifier data identifying one or more items of multimedia content available
for retrieving via said wireless interface.” Claim 30 recites “code to request
identifier data identifying one or more content data items available for
retrieving.” To address these limitations, Apple refers to its arguments
regarding the similar limitations of claim 1. Pet. 73, 77. For the reasons
discussed above, these arguments do not persuade us that the foregoing
claim limitations, as recited in claims 25 and 30, are disclosed, taught,
suggested, or would have been otherwise rendered obvious by the cited
references.
Claims 25 and 30 also require “use status data.” Claim 25 recites
“code to read use status data and use rules from said non-volatile memory
pertaining to said second selected one or more items of retrieved multimedia
content” and “code to evaluate said use status data and use rules to
determine whether access is permitted to said second selected one or more
items of retrieved multimedia content.” Claim 30 recites “code to read use
status data and use rules from said data carrier pertaining to said selected one
or more retrieved content data items” and “code to evaluate said use status
data and use rules to determine whether access is permitted to said second
selected one or more retrieved content data items.”
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Apple’s claim chart states that the claimed “use status data”
corresponds to Stefik’s “(e.g., usage rights; conflict rules).” Pet. 74, 78.
Apple’s claim chart also asserts that “[t]he use status data and use rules (e.g.,
usage rights; conflict rules) are stored in non-volatile memory (e.g.,
description tree storage; parameter memory) and are read (e.g., accessed by
a processor, such as a processor element 1201) when content access rights
are received.” Id. at 74. Apple’s claim chart further states that “[t]he use
status data and use rules (e.g., usage rights; conflict rules) are read from
memory (e.g., accessed by a processor, such as a processor element 1201)
when content access requests are received.” Id. at 78. In addition, Apple
contends that “Stefik discloses evaluating use status data (e.g., examining
usage rights status, for example number of copy rights remaining, stored in a
descriptor file for the requested content).” Id. at 74–75, 78–79.
Apple does not explain, however, why “usage rights” satisfies the
recited “use status data” of claims 25 and 30. For example, Apple does not
explain sufficiently why the “number of copy rights remaining” is within the
scope of the examples of “use status data” provided by the Specification of
the ’772 patent (e.g., “indicating a use status of data” (Ex. 1001, 9:19–20),
“indicating past use of the stored data” (id. at 9:39–41), “present use status”
(id. at 24:47), “actual use of the data item made so far” (id. at 24:51–54),
“how much use has been made of the accessed content data time,” such as
“start and end time markers or simply a play duration time” (id. at 25:5–11)).
Accordingly, Apple does not persuade us that Stefik discloses the claimed
“use status data.” And Apple does not argue that the claim limitations are
taught, suggested, or would have been otherwise rendered obvious by Stefik
alone or in combination with the other cited references.
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Patent 8,336,772 B2
19
For the reasons discussed above, Apple has failed to establish that it,
more likely than not, would prevail in demonstrating that independent claims
25 and 30 are unpatentable (as anticipated or obvious) over Stefik alone or in
combination with the other cited references. For the same reasons, we
determine that Apple has failed to establish that it, more likely than not,
would prevail in demonstrating that claims 26 and 32, which depend from
claims 25 and 30, are unpatentable (as anticipated or obvious).
CONCLUSION
For the foregoing reasons, we determine that the information
presented in the Petition does not establish that it is more likely than not that
Apple would prevail in establishing the unpatentability of any of the
challenged claims, claims 1, 5, 8, 10, 14, 19, 22, 25, 26, 30, and 32 of the
’772 patent.
ORDER
For the reasons given, it is:
ORDERED that a covered business method review of U.S. Patent
No. 8,336,772 is denied.
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Patent 8,336,772 B2
20
PETITIONER:
J. Steven Baughman
Ching-Lee Fukuda
ROPES & GRAY LLP
steven.baughman@ropesgray.com
ching-lee.fukuda@ropesgray.com

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