PTAB

CBM2014-00107

Apple Inc v. Smartflash LLC

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1. Case Identification

2. Patent Overview

  • Title: Data Storage and Access Systems
  • Brief Description: The ’458 patent describes systems for controlling access to and payment for digital content. The invention uses a "portable data carrier," such as a smart card, equipped with memory for storing content data and payment data, a processor, and an interface for communicating with external devices to enable the downloading and use of data based on payment validation and usage rules.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Ginter - Claims 1, 6-8, 10, and 11 are anticipated by or obvious over Ginter.

  • Prior Art Relied Upon: Ginter (Patent 5,915,019).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Ginter discloses all limitations of the challenged claims. Ginter describes a "virtual distribution environment" (VDE) for the secure management and distribution of digital content (e.g., movies, music). The system uses a "Portable Electronic Appliance" (PEA), which can be a portable smart card, that stores content objects, audit information for payments, and control information dictating access conditions. This PEA includes a processor, non-volatile memory, and an interface to connect to a host device, directly mapping to the "portable data carrier" of claim 1. Ginter’s system also functions as a "data access device" (claim 6) by retrieving and processing data from the carrier based on usage rules (metering and budget methods), thereby anticipating or rendering obvious all challenged claims.
    • Key Aspects: Petitioner argued that Ginter’s PEA, which stores and protects content while managing payment and access rules, is functionally identical to the ’458 patent’s claimed invention.

Ground 2: Obviousness over Ginter in view of Stefik - Claims 1, 6-8, 10, and 11 are obvious over Ginter in view of Stefik.

  • Prior Art Relied Upon: Ginter (Patent 5,915,019) and Stefik (collectively, Patent 5,530,235 and Patent 5,629,980).
  • Core Argument for this Ground:
    • Prior Art Mapping: Stefik discloses a "DocuCard," a transportable unit with non-volatile storage for digital works, a processor, and an I/O port. The DocuCard system controls access to content using "usage rights" that define conditions and fees. Petitioner argued that to the extent Ginter’s PEA was considered not to be a "portable data carrier," Stefik’s DocuCard explicitly discloses this element. Stefik further describes a user interface on the card and methods for billing and authenticating users, which supplies any features allegedly missing from Ginter.
    • Motivation to Combine: A POSITA would combine Stefik’s user-friendly DocuCard features with Ginter’s robust VDE for secure content distribution. The combination would enhance the usability of Ginter’s system by providing a more tangible and feature-rich portable device, thereby encouraging wider consumer adoption. Implementing Stefik’s removable card within Ginter’s VDE would predictably increase the system's user base and flexibility.
    • Expectation of Success: The combination involved applying known portable memory card technology (Stefik) to a known secure distribution system (Ginter), which would have been a straightforward integration for a POSITA with a high expectation of success.

Ground 3: Obviousness over Ginter in view of Sato - Claims 1, 6-8, 10, and 11 are obvious over Ginter in view of Sato.

  • Prior Art Relied Upon: Ginter (Patent 5,915,019) and Sato (JP Patent Application Publication No. H11-164058).

  • Core Argument for this Ground:

    • Prior Art Mapping: Sato discloses a system for selecting and viewing music on a mobile phone, where content is stored on a removable IC card (a "portable data carrier"). Critically, Sato’s use of a mobile phone inherently includes a subscriber identity module (SIM) to identify a subscriber to a network operator, directly teaching this limitation of claim 1. Sato also explicitly teaches retrieving stored data from the removable IC card for playback.
    • Motivation to Combine: A POSITA would combine Sato’s mobile technology with Ginter’s VDE to enhance Ginter’s system with cellular connectivity. This would allow users to download and manage secure content on their mobile devices from any location, a significant and predictable improvement over fixed-location access. The added flexibility would make Ginter’s system more commercially appealing.
    • Expectation of Success: Integrating a known method of mobile content storage and access (Sato) with a secure transaction framework (Ginter) would have been a predictable implementation, as both systems dealt with managing digital content on user devices.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Ginter with Poggio (European Patent Application, Publication No. EP0809221A2) for its teachings on transactional methods for purchasing content; combining Ginter with both Poggio and Stefik; and combining Ginter with Maari (JP Patent Application Publication No. H10-269289) for its teachings on user notifications for access permission.

4. Key Claim Construction Positions

  • "payment data" (Claim 1): Petitioner proposed this term be construed as "data representing payment made for requested content data," distinct from general "access control data." This construction was argued to be critical because the prior art often discusses access credentials separately from transactional payment information, and clarifying this distinction was central to mapping the art to the claims.
  • "supplementary data" (Claim 10): Petitioner proposed this term be construed as "advertising data, customer reward management data, and hot links to web sites," based on the patent’s specification. This construction limits the scope of the claim to specific disclosed data types, which Petitioner argued were known in the prior art in the context of content delivery systems.

5. Relief Requested

  • Petitioner requests institution of a Covered Business Method Patent Review and cancellation of claims 1, 6-8, 10, and 11 of the ’458 patent as unpatentable under 35 U.S.C. §§ 102 and 103.