PTAB

CBM2015-00143

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 ’516 patent describes systems and methods for controlling access to multimedia content (e.g., music, video, games) stored on a handheld terminal. Access is conditioned upon receiving validation from a remote system that payment for the content has been made.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 are unpatentable under 35 U.S.C. §101

  • Prior Art Relied Upon: Not applicable (challenge based on patent-ineligible subject matter).
  • Core Argument: Petitioner argued that the challenged claims are directed to the abstract idea of controlling access to a product based on payment, implemented using only generic and conventional computer components, without adding an inventive concept. The argument followed the two-step framework from Alice Corp. v. CLS Bank Int'l.
    • Directed to an Abstract Idea (Alice Step 1): Petitioner asserted that the core of the invention is the "long-familiar commercial transaction" of conditioning access to something of value upon payment. The claims recite fundamental concepts inherent in this idea: (1) presenting items for purchase, (2) validating that payment has been made for a selected item, and (3) providing access to the item only after receiving payment validation. Petitioner contended this is a basic "building block of the modern economy," akin to renting a movie or paying a toll, and is therefore an abstract idea. The petition noted that the Board had previously found that the shared specification of the ’516 patent and its relatives "makes clear that the heart of the claimed subject matter is restricting access to stored data based on supplier-defined access rules and validation of payment."
    • Lack of an Inventive Concept (Alice Step 2): Petitioner argued that the claims fail to provide "significantly more" than the abstract idea itself, analyzing the additional limitations as falling into three insufficient categories.
      • 1. Generic Computer Implementation: The claims recite a "handheld multimedia terminal" with conventional components like a processor, non-volatile memory, a wireless interface, and a display. Petitioner argued that the specification confirms these elements are generic and that their physical embodiment is "not critical." Implementing an abstract idea on a generic computer does not confer patent eligibility. The petition cited previous Board decisions involving related patents that found recitations of an "interface," "processor," and "non-volatile memory" to be generic and insufficient to make the claims patentable.
      • 2. Field-of-Use Limitations: The claims limit the abstract idea to the field of "multimedia content." Petitioner contended that simply applying an abstract idea to a particular technological environment (like digital media) does not make it patent-eligible. The underlying concept of controlling access based on payment remains abstract regardless of the subject matter being controlled.
      • 3. Insignificant Pre- or Post-Solution Activity: Dependent claims add only insignificant activities, such as retrieving and transmitting "advertising data" (claim 3), "content information" like cost (claims 10 and 18), or an "access rule" (claims 12, 19, and 24). Petitioner argued that adding such generic data-gathering or rule-application steps does not transform the fundamental abstract idea into a patentable invention.

4. Key Claim Construction Positions

  • "payment data": Petitioner argued this term should be construed broadly as "any information that can be used in connection with the process of making a payment for content." This position was based on the patent owner's own broad assertions in district court litigation and the broadest reasonable interpretation (BRI) standard. A broad construction would emphasize the term's connection to the abstract financial concept at the heart of the invalidity argument.
  • "payment validation system": Petitioner proposed construing this term as "any system that returns information in connection with an attempt to validate payment data." This construction, also derived from the patent owner's litigation positions and the BRI standard, was intended to show that the claims do not require any specific, inventive technology but rather encompass any generic system for checking payment status.
  • "access rule": Petitioner adopted the Board's previous construction from related cases: "a rule specifying a condition under which access to content is permitted." Petitioner noted that while the patent owner had argued for a much broader interpretation in district court, the claims were invalid even under the Board's narrower construction.

5. Key Technical Contentions (Beyond Claim Construction)

  • Invention Solves a Business Problem, Not a Technical One: A central contention was that the ’516 patent does not represent a technological invention. Petitioner argued the patent identifies a business problem—"data piracy"—and proposes solving it by applying the abstract commercial practice of payment-for-access using generic technology. The specification itself allegedly acknowledges that the "physical embodiment of the system is not critical," confirming that the asserted novelty is not in any specific improvement to computer hardware or software but in the business method itself. This argument was foundational to both the petition's threshold assertion that the patent qualifies for Covered Business Method (CBM) review and its substantive argument that the claims lack an inventive concept under §101.

6. Relief Requested

  • Petitioner requested institution of a Covered Business Method patent review and cancellation of claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 of the ’516 patent as unpatentable under 35 U.S.C. §101.