PTAB

CBM2013-00019

Apple Inc v. SightSound Technologies LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Method for Transmitting a Desired Digital Video or Audio Signal
  • Brief Description: The ’573 patent describes a method for the electronic sale and transmission of digital media. The process involves a buyer electronically transferring money to a seller, connecting the seller's and buyer's memories via a telecommunications line, transmitting the desired digital signal, and storing it on the buyer's memory.

3. Grounds for Unpatentability

Ground 1: Claims 1-2 and 4-5 are invalid under 35 U.S.C. §101 as directed to an abstract idea

  • Core Argument for this Ground: Petitioner argued that the challenged claims are directed to the patent-ineligible abstract idea of selling digital content electronically. The claims recite a fundamental economic practice implemented through a series of rudimentary steps: (A) transferring money, (B) connecting memories, (C) transmitting a file, and (D) storing the file. Petitioner asserted that these steps, when performed using the claimed generic hardware, do not add an "inventive concept" sufficient to transform the abstract idea into a patent-eligible application.
    • Petitioner contended that the hardware elements recited in the claims—such as a "first memory," a "second memory," a "transmitter," a "receiver," and "telecommunications lines"—were merely conventional, commercially available components. The petition argued that simply reciting the use of generic computer hardware to perform the abstract steps of an electronic sale does not confer patentability.
    • The petition further argued that the claims are impermissibly broad and preempt the entire field of selling digital music and video online. This assertion was supported by citing statements from the Patent Owner’s executives and experts, who allegedly described the patent as controlling "the sale of downloadable music."
    • Petitioner also asserted that the claims fail the machine-or-transformation test. The claims are not tied to any particular machine, instead referencing general-purpose components, and they do not transform any article into a different state or thing. Digital data is merely moved from one location to another, which does not satisfy the transformation prong.

Ground 2: Claims 1-2 and 4-5 are invalid under 35 U.S.C. §112 for lack of adequate written description

  • Core Argument for this Ground: Petitioner argued that the challenged claims are invalid because they lack adequate written description support in the original patent application. This argument centered on the claim term "telecommunication[s] lines."
    • The original application, filed in 1988, exclusively disclosed "telephone lines" as the medium for transmission. Years later during prosecution, the applicant amended the specification and claims to introduce the broader term "telecommunication[s] lines."
    • Petitioner asserted that the original disclosure of the species "telephone lines" is insufficient to support the later-claimed genus of "telecommunication[s] lines," which encompasses a wider range of technologies (e.g., Ethernet, fiber-optic cable).
    • Therefore, Petitioner argued that the applicant was not in possession of the full scope of the claimed invention as of the original filing date, rendering the claims invalid for introducing new matter that lacks written description support.

4. Key Claim Construction Positions

  • "telecommunication[s] lines": Petitioner proposed this term be construed as "an electronic medium for communicating between computers," consistent with a construction from a concurrent district court litigation. This construction was central to Petitioner's §112 argument. By establishing that "telecommunication[s] lines" is a broader category than the "telephone lines" originally disclosed, Petitioner sought to prove that the claim scope was impermissibly expanded during prosecution without adequate support in the original specification.

5. Relief Requested

  • Petitioner requested the institution of a Covered Business Method patent review and the cancellation of claims 1, 2, 4, and 5 of the ’573 patent as unpatentable.