Takeaway: In order to satisfy the financial product or service requirement of a covered business method patent, the patent must be related to a financial activity, but does not have to be used specifically in the financial or banking field.

The Board began with claim construction, but determined that no claim terms required an express construction for purposes of its decision. The Board then discussed whether the 772 Patent is a “covered business method patent,” which is one that “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” Only one claim of a patent must be directed to a covered business method to be eligible for review.

The Board began by discussing whether the ’720 Patent is directed to a financial product or service. Petitioner asserted that claim 8 concerned a computer system for performing data processing and other operations used in the practice, administration, or management of a financial activity and service, because it described transmitting payment data to a payment validation system, receiving payment validation, and controlling access to data based on payment. The Board agreed with Petitioner and disagreed with Patent Owner’s assertion that a financial product or service should be limited to only technology used specifically in the financial or banking industry.

Next, the Board discussed whether the ’772 Patent falls within the exclusion for technological inventions. Petitioner asserted that claim 8 does not fall within the exclusion because it does not recite a technological feature that is novel and unobvious over the prior art. Patent Owner disagreed, but the Board sided with Petitioner and found that claim 8 as a whole does not recite a technological feature that is novel and unobvious over the prior art, and instead makes clear that the asserted novelty of the invention is the method of controlling access to the data. Therefore, the Board found that the ’772 Patent is eligible for covered business method patent review.

The Board then turned to Petitioner’s argument that claim 1 is anticipated by Stefik, or rendered obvious by Stefik alone or in combination with various other references. The Board focused on claim 1’s disclosure of “code to request identifier data identifying one or more items of multimedia content stored in the non-volatile memory,” which Petitioner asserted corresponds to Stefik’s hierarchical document storage system. The Board found that Petitioner provided insufficient explanation as to how Stefik or any of the other cited references disclose, teach, suggest, or would have otherwise rendered obvious the claimed “code to request identifier data.” Further, the Board determined that Petitioner did not explain why a person of ordinary skill in the art would understand that Stefik necessarily disclosed requesting identifier data.

Next, the Board determined that each of independent claims 8, 14, 19, 25, and 30 include limitations similar to those discussed above with regard to claim 1. Thus, for similar reasons as for claim 1, the Petition was lacking with regard to claims 8, 14, 19, 25, and 30.

Apple Inc. v. Smartflash LLC, CBM2014-00110
Paper 7: Decision Denying Institution of Covered Business Method Patent Review
Dated: September 30, 2014
Patent: 8,336,772 B2
Before: Jennifer S. Bisk, Rama G. Elluru, Neil T. Powell, Jeremy M. Plenzler, and Matthew R. Clements
Written by: Powell
Related Proceedings: Smartflash LLC v. Apple Inc., No. 6:13-cv-447 (E.D. Tex.);Smartflash LLC v. Samsung, No. 6:13-cv-448 (E.D. Tex.); Smartflash LLC v. Google, No. 6:14-cv-435 (E.D. Tex.); CBM2014-00102; CBM2014-00103; CBM2014-00104; CBM2014-00105; CBM2014-00106; CBM2014-00107; CBM2014-00108; CBM2014-00109; CBM2014-00111; CBM2014-00112; CBM2014-00113