PTAB

CBM2013-00021

Apple Inc v. SightSound Technologies LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: System and Method for Transmitting Desired Digital Video or Digital Audio Signals
  • Brief Description: The ’440 patent describes methods for the electronic sale and delivery of digital content. The process involves a first party (seller) transmitting a digital audio or video signal over telecommunications lines from its memory to a second party's (buyer's) memory, charging a fee, and enabling the buyer to play the content.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility - Claims 1, 64, and 95 are unpatentable under 35 U.S.C. § 101

  • Prior Art Relied Upon: This ground did not rely on prior art references for anticipation or obviousness, but rather argued that the claims were directed to a patent-ineligible abstract idea implemented with conventional technology.
  • Core Argument for this Ground:
    • Abstract Idea: Petitioner argued that the challenged claims were directed to the fundamental and abstract idea of "selling digital music electronically." The method steps recited in the claims—forming a connection, selling and charging for a signal, transferring the signal, storing it, and playing it—were asserted to be a series of rudimentary, well-known activities that represent the core of any electronic sale of digital media.
    • Lack of Inventive Concept: Petitioner contended that the claims lacked an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The hardware elements recited (e.g., "first memory," "second memory," "telecommunications lines," "control unit," and "speakers") were argued to be nothing more than generic, conventional components performing their ordinary functions. The petition cited the patent’s own specification and admissions from the inventor that these components were commercially available and that the "control unit" could be a general-purpose computer.
    • Preemption: A key aspect of the argument was that the claims were impermissibly broad and preempted the entire field of selling downloadable digital music. Petitioner asserted that the claims covered any method of selling digital content online, thereby foreclosing innovation in the area rather than promoting it, which is contrary to the purpose of patent law. The claims did not solve a technical problem but instead applied a fundamental economic practice to the existing technological environment of computers and telecommunication networks.

Ground 2: Obviousness-Type Double Patenting - Claims 1, 64, and 95 are unpatentable over earlier related patents

  • Prior Art Relied Upon: Hair (Patent 5,191,573) and Hair (Patent 5,675,734).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the challenged claims of the ’440 patent were not patentably distinct from claims in two earlier, expired patents from the same family: the ’573 patent and the ’734 patent. Both earlier patents claimed methods for transmitting digital signals from a first party's memory to a second party's memory. The petition provided detailed charts mapping the limitations of challenged claims 1, 64, and 95 to the disclosures in claim 3 of the ’573 patent and claim 3 of the ’734 patent.
    • Motivation to Combine (Implicit): The argument centered on the concept that the ’440 patent claims were obvious variants of the earlier claims, not a combination of distinct references. Petitioner asserted that the differences between the challenged claims and the earlier patent claims amounted to nothing more than routine and predictable implementation choices. For example, adding a "second party control unit" or specifying storage on a "hard disk" (a type of non-volatile memory) would have been obvious modifications to the methods disclosed in the ’573 and ’734 patents, particularly given that the specifications were nearly identical.
    • Key Aspects: The central thrust of this ground was that the ’440 patent represented an improper timewise extension of the patent monopoly. By claiming obvious variations of inventions already patented in the expired ’573 and ’734 patents, the Patent Owner was attempting to extend its right to exclude beyond the statutory term of the original patents. Petitioner noted that the Patent Owner never filed a terminal disclaimer, which would have been necessary to overcome such a rejection.

4. Key Claim Construction Positions

  • "second party control unit": Petitioner proposed construing this term to mean "a control unit of the second party," explicitly including a general-purpose computer. This construction was central to the §101 argument that the claims merely recited the use of conventional computer hardware to perform an abstract business method.
  • "selling electronically": This term was construed as "providing a product or service electronically in exchange for providing payment electronically." This supported the argument that the patent claimed a fundamental economic practice (a sale) simply performed using electronic means, reinforcing the abstract idea characterization under §101.

5. Relief Requested

  • Petitioner requested institution of a Covered Business Method Patent Review and cancellation of claims 1, 64, and 95 of the ’440 patent as unpatentable under 35 U.S.C. § 101 and for obviousness-type double patenting.