Google Inc v. Smartflash LLC

1. Case Identification

• Case #: CBM2015-00125
• Patent #: 7,334,720
• Filed: May 6, 2015
• Petitioner(s): Google Inc.
• Patent Owner(s): Smartflash LLC (assignee of Smart-Flash Limited)
• Challenged Claims: 1 and 15

2. Patent Overview

• Title: Data Storage and Access Systems
• Brief Description: The ’720 patent describes systems and methods for controlling access to data stored on a portable data carrier. Access to the data is managed based on use rules and conditions, such as whether payment has been made and validated.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 15 are unpatentable under 35 U.S.C. § 101 as directed to a patent-ineligible abstract idea.

• Prior Art Relied Upon: This ground was not based on prior art references but on legal precedent under §101, primarily Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), and related case law. Petitioner also cited historical examples of the underlying abstract concept, such as rental libraries and toll roads.
• Core Argument for this Ground:
  • Abstract Idea Mapping (Alice Step 1): Petitioner argued that the challenged claims are directed to the patent-ineligible abstract idea of "controlling access to something based on one or more conditions." This was characterized as a fundamental and long-standing commercial practice, not a technological invention. Petitioner mapped the claim limitations to this abstract concept:
    • Claim 1 recites a "method of controlling access" comprising the basic steps of receiving an access request, reading use rules and status data, evaluating them to determine if access is permitted, and displaying the result.
    • Claim 15 (dependent on un-challenged claim 14) recites a "method of providing data" comprising the fundamental commercial steps of reading payment data from a carrier, forwarding it to a validation system, retrieving the requested data, and writing access rules to the carrier that are dependent on the payment amount. The additional steps in claim 15 involve receiving and transmitting payment validation data, which Petitioner argued are also inherent to the abstract idea of a conditional transaction.
  • Lack of an Inventive Concept (Alice Step 2): Petitioner contended that the claims, when viewed as a whole, fail to provide an "inventive concept" sufficient to transform the abstract idea into a patent-eligible application. The argument centered on two main points:
    • Field-of-Use Limitation: The claims merely limit the abstract idea to a particular technological environment—controlling access to digital data on a data carrier. Petitioner argued that simply applying an abstract idea to a specific field, without more, does not confer patentability.
    • Generic Computer Implementation: The claims recite only generic and conventional computer components to carry out the abstract idea. The "data carrier," "non-volatile data memory," and "non-volatile parameter memory" were described as generic hardware elements performing their well-understood, routine functions of storing and providing data. Petitioner argued that stating an abstract idea and adding the words "apply it with a computer" does not create an invention, and the claims offered no improvement to computer functionality itself.
  • Key Aspects: Petitioner heavily emphasized that the Board had already instituted CBM reviews on other claims of the ’720 patent (claims 13 and 14) and numerous claims of four related patents, finding in each instance that the claims were likely directed to the same patent-ineligible abstract idea and lacked an inventive concept.

4. Key Claim Construction Positions

Petitioner argued for broad constructions consistent with those adopted in co-pending district court litigation and prior PTAB decisions involving the same patent family, asserting that these constructions confirm the generic nature of the claimed technology.

• "data carrier": Petitioner proposed the construction "any medium, regardless of structure, that is capable of storing information." This broad definition was intended to show the term does not recite a specific, novel, or non-obvious technological component but rather a generic storage medium.
• "use rule(s)" and "access rule(s)": Petitioner adopted the Board's construction from prior proceedings: "a rule 'specifying a condition under which access to content is permitted.'" By using the Board's own prior construction, Petitioner sought to align its invalidity arguments with the Board's previous findings on related patents.
• "non-volatile data memory" and "non-volatile parameter memory": Petitioner argued this phrase should be construed as "any generic non-volatile memory device or devices capable of assigning (randomly or otherwise) content and rules to different memory addresses." This construction emphasized that the memories need only be logically, not physically, separate, reinforcing the argument that the claim recites a conventional memory architecture.

5. Relief Requested

• Petitioner requested institution of a Covered Business Method patent review and a final judgment that claims 1 and 15 of the ’720 patent are unpatentable under 35 U.S.C. § 101.