Google Inc v. Smartflash LLC

1. Case Identification

• Case #: CBM2015-00132
• Patent #: 8,118,221
• Filed: May 6, 2015
• Petitioner(s): Google Inc.
• Patent Owner(s): Smartflash LLC
• Challenged Claims: 3

2. Patent Overview

• Title: Data Storage and Access Systems
• Brief Description: The ’221 patent describes a system for controlling access to data (e.g., digital content) based on payment validation. The system involves a data access terminal that reads payment data from a portable data carrier, forwards it for validation, and upon receiving confirmation, retrieves the requested data for the user.

3. Grounds for Unpatentability

Ground 1: Claim 3 is unpatentable under 35 U.S.C. §101 as being directed to patent-ineligible subject matter.

• Prior Art Relied Upon: This ground is not based on prior art references but on the argument that the claim is directed to an abstract idea without adding an inventive concept, per the framework established in Alice Corp. v. CLS Bank Int’l.
• Core Argument for this Ground: Petitioner argued that claim 3 fails both steps of the Alice test for patent eligibility. The claim is directed to the abstract idea of controlling access to content based on payment, and the claim elements, viewed individually and as an ordered combination, do not transform this abstract idea into a patent-eligible application.
  • Mapping to Abstract Idea (Alice Step 1): Petitioner asserted that the core of the challenged claim is the long-standing and fundamental economic practice of conditioning access to something of value upon payment. The claim recites steps inherent to this concept: reading payment data (e.g., credit card information), forwarding it for validation, receiving confirmation, and then providing access to the content. Petitioner contended that this is a "building block of the modern economy," akin to other commercial practices previously found to be abstract by the courts. The petition noted that the Board had already found parent claim 1, from which claim 3 depends, to be directed to this same abstract idea in a related proceeding.
  • Lack of an Inventive Concept (Alice Step 2): Petitioner argued that claim 3 lacks an inventive concept sufficient to transform the abstract idea into a patent-eligible invention. The additional features recited in the claim were characterized as falling into three categories previously found insufficient by the Supreme Court:
    • Generic Computer Implementation: The claim’s recitation of a "data access terminal," "data carrier," "processor," and "interface" does not supply an inventive concept. Petitioner argued these are merely generic computer components performing their conventional functions to implement the abstract idea. The petition cited the ’221 patent’s specification, which describes the terminal as a "conventional computer" and the data carrier as a "standard smart card," confirming their lack of novelty.
    • Insignificant Pre- or Post-Solution Activity: The additional limitation in claim 3—outputting information to a user about available content (identifier, value, and use rules)—was argued to be insignificant post-solution activity. Petitioner contended that providing a user with a menu of available items for purchase is a conventional aspect of the abstract idea itself and does not add a meaningful limitation or inventive step.
    • Field-of-Use Limitation: Limiting the abstract idea to the specific technological environment of digital "data" access was argued to be an insufficient field-of-use limitation. Petitioner asserted that simply applying an abstract idea to a particular field, without more, cannot confer patent eligibility.

4. Key Claim Construction Positions

• Petitioner argued that claim terms should be given their broadest reasonable interpretation (BRI), which should be at least as broad as constructions adopted in co-pending district court litigation to prevent the Patent Owner from asserting broad constructions for infringement and narrow ones for validity.
• “data carrier”: Petitioner proposed the construction "any medium, regardless of structure, that is capable of storing information." This broad construction was based on the Patent Owner's litigation positions in related cases and the ’221 patent’s disclosure that the carrier could be a generic device like a "standard smart card."
• “payment data”: Petitioner proposed the construction "any information that can be used in connection with the process of making a payment for content." This was intended to encompass a wide range of information beyond specific financial account numbers, reflecting the broad manner in which the term was used in the specification and asserted in litigation.
• “payment validation system”: Petitioner proposed the construction "any system that returns information in connection with an attempt to validate payment data." This construction emphasized that the system is a generic, functional component that could be an existing third-party e-payment system, not a novel technological component.

5. Relief Requested

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