PTAB

CBM2014-00105

Apple Inc v. Smartflash LLC

Log In
Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Data Storage and Access Systems
  • Brief Description: The ’720 patent describes systems and methods for controlling access to digital content on a portable data carrier. The system manages access by using payment data to retrieve content from a supplier and applying access rules that are dependent on the payment amount.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claim 1 by Ginter

  • Prior Art Relied Upon: Ginter (Patent 5,915,019).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ginter disclosed every element of claim 1. Ginter taught a method for controlling access to content (VDE content objects) on a data carrier (a removable Portable Electronic Appliance or "PEA"). The PEA included non-volatile memory for storing both content and parameter data, such as use status data (meter method UDE) and use rules (billing method map MDE). Ginter further described receiving a data access request, reading the use status and rules, evaluating them to determine if access is permitted, and displaying the outcome to the user.

Ground 2: Obviousness over Ginter in view of Stefik

  • Prior Art Relied Upon: Ginter (Patent 5,915,019), Stefik (Patent 5,530,235 and Patent 5,629,980).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that to the extent Ginter did not explicitly teach certain elements of claims 1, 3, 11, and 13-15, Stefik provided the missing disclosures. Ginter disclosed the foundational secure content distribution environment (the "VDE") with payment and access control mechanisms. Stefik, incorporated by reference into a single reference, described a "DocuCard"—a transportable unit with non-volatile storage, a processor, and an I/O port for storing and managing access to digital works using "usage rights." Stefik’s DocuCard was argued to be a clear analogue for the ’720 patent’s "data carrier," explicitly disclosing storing content and rules, reading payment data, and writing retrieved data and access rules onto the card.
    • Motivation to Combine: A POSITA would combine Ginter's VDE environment with Stefik's DocuCard to provide Ginter's portable appliance with advantageous features taught by Stefik, such as a screen for displaying stored content. Applying Stefik's teachings would increase the user base for Ginter's system by making the portable device more functional and user-friendly, encouraging more content purchases while ensuring personal information remains protected.
    • Expectation of Success: A POSITA would have a reasonable expectation of success, as both references operated in the same field of secure digital content distribution and Stefik’s DocuCard could be readily implemented as the portable appliance within Ginter's established VDE framework.

Ground 3: Obviousness over Ginter in view of Poggio

  • Prior Art Relied Upon: Ginter (Patent 5,915,019), Poggio (European Patent Application, Publication No. EP0809221A2).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Ginter’s system, when combined with Poggio, rendered claims 3, 11, 13, and 15 obvious. Ginter provided the secure data carrier and content management system. Poggio, which disclosed a "virtual vending machine," explicitly taught the transactional steps of transmitting a credit card number to a payment validation system, receiving a payment confirmation, and then formatting and transmitting the purchased digital product to the user. These steps directly mapped to the challenged claims’ limitations regarding forwarding payment data, receiving validation, and retrieving content responsive to that validation.
    • Motivation to Combine: A POSITA would combine the references to implement a well-understood, traditional commercial transaction model within Ginter's flexible VDE. Ginter praised its system's adaptability, and Poggio provided a clear, conventional method for handling electronic payments and content delivery. Combining them would allow consumers to purchase content in a familiar way, thereby encouraging impulse buys and broader adoption of the Ginter system.
    • Expectation of Success: The combination involved applying Poggio's conventional payment processing method to Ginter's content distribution system, which presented no technical hurdles and would have been a predictable implementation for a POSITA.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 1 is obvious over Ginter in view of Maari (JP H10-269289), and that various claims are obvious over Ginter in combination with Sato (JP H11-164058) or in combination with both Poggio and Stefik. These grounds relied on similar motivations to combine known elements for secure content distribution and payment.

4. Key Claim Construction Positions

  • "payment data" (claims 3, 11, 13-15): Petitioner proposed this term be construed as "data representing payment made for requested content data," and argued it is distinct from "access control data." This construction was central to mapping prior art disclosures of payment transactions (e.g., credit card numbers in Poggio) to the claims.
  • "supplementary data" (claim 11): Petitioner proposed this term be construed as "advertising data, customer reward management data, and hot links to web sites." This construction was based on the specification's examples and aimed to define the scope of data retrieved in response to user-characterizing data.

5. Relief Requested

  • Petitioner requested institution of a Covered Business Method (CBM) patent review and cancellation of claims 1, 3, 11, and 13-15 of the ’720 patent as unpatentable under 35 U.S.C. §§ 102 and/or 103.