PTAB

CBM2014-00190

Samsung Electronics America Inc v. Smartflash LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Data Storage and Access Systems
  • Brief Description: The ’720 patent describes systems and methods for downloading and securely paying for digital content like audio, video, or software. The invention combines digital rights management (DRM) with content data storage on a portable data carrier to control access based on payment validation, aiming to prevent revenue loss from piracy.

3. Grounds for Unpatentability

Ground 1: Unpatentable Subject Matter under §101 - Claims 13 and 14

  • Prior Art Relied Upon: This ground is asserted under 35 U.S.C. §101 and does not rely on prior art references.
  • Core Argument for this Ground:
    • Abstract Idea: Petitioner argued that claims 13 and 14 are directed to the abstract idea of licensing and regulating access to copyrighted content based on payment. It asserted that the claimed steps—such as reading payment data, forwarding it for validation, retrieving content, and writing access rules—are mental processes that can be performed by a human using pen and paper, analogizing them to long-standing practices in music licensing (e.g., by ASCAP).
    • Lack of Inventive Concept: Petitioner contended that the claims fail to add an inventive concept beyond the abstract idea itself. The recitation of generic computer components like a "processor," "interface," and "program store" does not transform the abstract idea into a patent-eligible application because the patent specification repeatedly describes these components as "conventional." Petitioner argued that merely implementing a fundamental economic practice on a generic computer is insufficient to confer patent eligibility. The claims impermissibly preempt all effective uses of the abstract idea of regulating access to content based on payment.

Ground 2: Obviousness over Gruse and Stefik - Claims 13 and 14 are obvious over Gruse in view of Stefik

  • Prior Art Relied Upon: Gruse (WO 00/08909), Stefik (’235 patent), and Stefik (’980 patent).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Gruse taught a secure digital content electronic distribution system that disclosed most of the claimed elements. Gruse’s system included a "Clearinghouse" for payment validation, an "End-User Device" for retrieving content, and the use of usage rules ("Store Usage Conditions") to control content access. However, Gruse did not detail a specific secure interface for transferring content to a portable device. Stefik remedied this deficiency by teaching a portable "DocuCard" (a data carrier) and secure, standardized communication protocols (e.g., PCMCIA) for interfacing the card with a host computer or kiosk to manage rights-protected digital documents. Petitioner argued that Gruse’s "End-User Device" corresponds to the claimed "data access terminal," and Stefik’s "DocuCard" corresponds to the "data carrier."
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) seeking to implement Gruse's system, which expressly contemplated using PCs with "external media or portable consumer device[s]," would have been motivated to consult contemporaneous art for a known and reliable method to securely interface these components. Stefik provided an obvious solution, teaching a standard, secure interface like PCMCIA specifically for transferring rights-managed content to a portable device. Combining Stefik’s well-known interface technology with Gruse’s content distribution system represented a simple combination of known elements to achieve a predictable result.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the teachings. The integration involved using a standard interface (from Stefik) for its intended purpose within a known type of system (from Gruse), which would have been a straightforward design choice.

4. Key Claim Construction Positions

  • "payment data": Petitioner proposed that for the purpose of the CBM review, this term should be construed as "data that relates to previous, present, and/or prospective payment." This construction was argued to be consistent with the ’720 patent’s disclosure, which describes making access to content conditional upon a "checked and validated payment." This broad interpretation was asserted as necessary to encompass the various forms of payment validation described in the patent.

5. Key Technical Contentions (Beyond Claim Construction)

  • Eligibility for CBM Review: Petitioner argued at length that the ’720 patent was a Covered Business Method (CBM) patent and not an excluded "technological invention." It contended the patent addresses a business problem (preventing revenue loss from piracy) rather than a technical one, using only conventional computer hardware. The claims fail to recite a novel and unobvious technological feature, making the patent eligible for CBM review.
  • Effective Filing Date: Petitioner argued that the challenged claims were not entitled to the priority date of the earliest provisional application (Oct. 25, 1999). It asserted that this earlier application lacked written description support for key limitations, such as the network of processors and code "responsive to" payment validation data. Therefore, the effective filing date of the challenged claims was no earlier than October 25, 2000, which qualifies Gruse and Stefik as prior art under the applicable statutory framework.

6. Relief Requested

  • Petitioner requested institution of a Covered Business Method Patent Review and cancellation of claims 13 and 14 of the ’720 patent as unpatentable.