PTAB

CBM2015-00121

Apple Inc v. Smartflash LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Data Storage and Access Systems
  • Brief Description: The ’516 patent describes systems and methods for controlling access to data, such as multimedia content, by linking payment validation to the provision of that data. The technology involves a user device, a data supply server, and a process for requesting, validating payment for, and transmitting content.

3. Grounds for Unpatentability

Ground 1: Claims 1-28 are Unpatentable under §101 as Directed to Ineligible Subject Matter

  • Prior Art Relied Upon: While not a prior-art-based challenge, Petitioner cited numerous references to demonstrate that the claimed concepts and components were conventional and routine prior to the invention. Key examples included Poggio (European Application # EP0809221A2), Hair (Patent 5,675,734), and Chernow (Patent 4,999,806).
  • Core Argument for this Ground:
    • Abstract Idea Mapping: Petitioner argued the challenged claims are directed to the patent-ineligible abstract idea of "payment for and controlling access to data." This concept was asserted to be a long-standing, fundamental economic practice, a form of organizing human activity that pre-dates the patent. The petition contended that every claim requires validating a purchase or payment as a condition for providing access to content, which is the core of the abstract idea.
    • Lack of Inventive Concept: Petitioner argued that under the second step of the Alice framework, the claims add nothing more than well-understood, routine, and conventional elements. The claims recite generic computer components (e.g., "handheld multimedia terminal," "content data supply server," "processor," "data store") performing their basic functions (receiving, retrieving, transmitting data). The "code to" limitations were characterized as purely functional language that merely instructs one to implement the abstract idea using a generic computer, without teaching any specific, novel technological improvement. Petitioner compared the claims to those found ineligible in Alice, arguing that the hardware recited is "purely functional and generic" and the functions performed are "the most basic functions of a computer." The petition asserted that limiting the abstract idea to the technological environment of multimedia content does not confer patentability.

Ground 2: Claims 1-4 Lack Written Description under §112

  • Prior Art Relied Upon: Not applicable.
  • Core Argument for this Ground:
    • Inadequate Specification Support: Petitioner argued that independent claim 1, and by extension dependent claims 2-4, are unpatentable for lacking an adequate written description. The claim recites the limitation "payment data compris[ing] user identification data." The petition contended that the specification of the ’516 patent consistently describes "user identification data" and "payment data" as distinct and separate concepts. According to the Petitioner's analysis, the specification teaches that user identification data (e.g., a user ID and password) is a form of access control data used to gain access to payment data, not that it is a type of payment data itself. Because the specification allegedly fails to describe the inventor being in possession of an invention where user identification data is part of the payment data, the claim was asserted to be invalid under §112.

4. Key Claim Construction Positions

  • "payment data" (claims 1-4, 25-28): Petitioner proposed this term be construed as "data representing payment made for requested content data" and argued it is explicitly distinct from "access control data [which includes user identification data]." This construction was central to the §112 invalidity argument, as it highlights the alleged lack of support for combining user identification data within the definition of payment data.
  • "access rule" (claims 12, 13, 19, 20, 24, 26): Petitioner proposed this term be construed as a "rule specifying a condition under which access to content is permitted." This construction supports the argument that the claims merely recite the abstract concept of applying conditions to data access.
  • "supplementary data" (claims 2, 3): Petitioner proposed this term be construed as "advertising data, customer reward management data, and/or hot links to web sites." This construction was used to argue that the dependent claims adding this feature merely add conventional, non-technical business concepts to the underlying abstract idea.

5. Relief Requested

  • Petitioner requested institution of a Covered Business Method (CBM) patent review and cancellation of claims 1-28 of the ’516 patent as unpatentable under 35 U.S.C. §§ 101 and 112.