PTAB

CBM2015-00129

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 ’317 patent describes systems and methods for controlling access to data based on payment. The core concept involves conditioning the provision of a data item on the receipt and validation of payment data, using components such as a data carrier, data access terminal, and an electronic payment system.

3. Grounds for Unpatentability

Ground 1: Claims 7, 12, and 17 are ineligible for patenting under 35 U.S.C. § 101 as being directed to an abstract idea.

  • Legal & Factual Basis Relied Upon: Key Supreme Court precedents on patent eligibility, including Alice Corp. v. CLS Bank Int’l, Bilski v. Kappos, and Mayo Collaborative Servs. v. Prometheus Labs., Inc.; historical evidence of controlling access based on payment (e.g., leasehold estates, rental libraries, toll roads).
  • Core Argument for this Ground: Petitioner argued that the challenged claims are unpatentable under the two-step framework established in Alice. The claims are directed to the abstract idea of controlling access to an item based on payment, and they lack an inventive concept sufficient to transform that abstract idea into a patent-eligible invention.
    • Step 1 (Abstract Idea): Petitioner asserted that the challenged claims are drawn to the fundamental and long-standing economic practice of conditioning access to something of value on payment. This concept is a basic "building block of the modern economy" that has existed for centuries in various forms, such as paying rent for an apartment, paying a fee to borrow a library book, or paying a toll to use a road. The claims merely recite the core functions of this abstract idea: receiving payment information for a requested item (claims 7 and 17) and providing the item only after payment is received or validated (claims 7, 12, and 17).
    • Step 2 (Lacks Inventive Concept): Petitioner contended that the claims, when considered as a whole, add nothing "significantly more" to the abstract idea itself. The additional claim elements fall into categories that the Supreme Court has found insufficient to confer patent eligibility:
      • Generic Computer Implementation: The claims recite generic computer components (e.g., "computer system," "data carrier," "processor," "program store") and conventional computer functions (e.g., receiving, storing, transmitting data) to implement the abstract idea. Petitioner argued that simply stating the abstract idea and adding "apply it with a computer" does not make it patentable, as the claims do not improve the functioning of the computer itself or any other technology.
      • Insignificant Pre- or Post-Solution Activity: Claim 7 recites combining partial data from two sources, and storing records of available data items. Claim 17 recites outputting "access rule data" with a purchased item. Petitioner characterized these as insignificant data-gathering or information-outputting steps that are not inventive and do not transform the underlying abstract idea.
      • Field-of-Use Limitations: The claims limit the abstract idea to the particular field of controlling access to "data" or "data items." Petitioner argued that limiting an abstract idea to one field of use does not make it patentable.

4. Key Claim Construction Positions

  • “data carrier”: Petitioner argued this term should be construed as "any medium, regardless of structure, that is capable of storing information." This construction was based on the specification's broad disclosures (e.g., smart card, memory stick), the Patent Owner's broad positions in district court litigation, and previous Board findings that the term refers to a "generic hardware device known in the prior art."
  • “payment data”: Petitioner proposed the construction "any information that can be used in connection with the process of making a payment for content." This broad construction was supported by the district court's construction in related litigation (urged by the Patent Owner) and the patent's specification, which used the term broadly to refer to whatever data is used for making a payment.
  • “electronic payment system”: Petitioner asserted this term should mean "a system related to processing and/or distributing a payment." This construction was based on the specification's disclosure of generic payment-related functions and the Board's prior observation that the system of the ’317 patent may be one that is already commercially available.

5. Relief Requested

  • Petitioner requested institution of a Covered Business Method patent review and cancellation of claims 7, 12, and 17 of the ’317 patent as unpatentable under 35 U.S.C. § 101.