PTAB

CBM2015-00126

Google 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 ’221 patent describes a system for managing access to digital data (e.g., music, videos). The system involves a data access terminal that retrieves data from a supplier and provides it to a portable data carrier only after payment has been successfully validated.

3. Grounds for Unpatentability

Ground 1: Claim 3 is Unpatentable Under 35 U.S.C. § 101

  • Core Argument: Petitioner argued that claim 3 is directed to a patent-ineligible abstract idea and lacks any inventive concept sufficient to transform it into patent-eligible subject matter. The argument followed the two-step framework established in Alice Corp. v. CLS Bank Int’l.
    • Step 1 (Abstract Idea): Petitioner asserted that the claim is directed to the fundamental and long-standing economic practice of "controlling access to something based on payment." The petition argued this concept is a basic "building block of the modern economy," akin to paying rent for access to an apartment or paying a toll for use of a road. The functional steps recited in the claim—reading payment data, forwarding it to a validation system, receiving validation, and then providing access to data—were characterized as being inherent to this abstract idea. Petitioner noted that the Board had previously found that the "heart of the claimed subject matter is restricting access to stored data based on...validation of payment" in decisions related to the ’221 patent.
    • Step 2 (Lack of Inventive Concept): Petitioner contended that the claim elements, when considered individually and as an ordered combination, fail to add "significantly more" than the abstract idea itself. The argument was based on three main points:
      • Generic Computer Implementation: The claim recites generic computer components, such as a "data access terminal" (disclosed as a "conventional computer"), a "data carrier" (a generic storage medium like a smart card), an "interface," and a "processor." The functions performed by these components—"code to read," "forward," "receive," and "retrieve"—were described as purely conventional and well-understood computer functions, merely instructing the use of a generic computer to perform the abstract idea.
      • Insignificant Limitations: The petition argued that the claim’s additional limitations do not supply an inventive concept. Applying the abstract idea to the specific field of "data" was presented as a mere field-of-use limitation. The further limitation in claim 3 of outputting information about available content to a user was characterized as insignificant pre- or post-solution activity that is insufficient to confer patentability.
      • Reliance on Prior PTAB Decisions: Petitioner heavily referenced prior PTAB decisions that found other claims of the ’221 patent (claims 1, 2, 11, and 32) and claims of related patents likely invalid under §101 for the same reasons. It was argued that claim 3, which depends on the already-invalidated claim 1 and adds a limitation previously found insufficient in claim 32, must also be found unpatentable.

4. Key Claim Construction Positions

  • Petitioner argued that under the Broadest Reasonable Interpretation (BRI) standard, the key claim terms should be construed broadly, consistent with the Patent Owner's asserted positions in co-pending district court litigation. The proposed constructions included:
    • "data carrier": "any medium, regardless of structure, that is capable of storing information."
    • "payment data": "any information that can be used in connection with the process of making a payment for content."
    • "payment validation system": "any system that returns information in connection with an attempt to validate payment data."
    • "payment validation data": "information returned in connection with an attempt to validate payment data."

5. Relief Requested

  • Petitioner requested institution of a Covered Business Method Patent Review and cancellation of claim 3 of the ’221 patent as unpatentable under 35 U.S.C. § 101.