Takeaway: In the context of AIA § 18(d)(1), the phrase “financial product or service” is not limited to products or services of the financial services industry, but instead was intended to encompass patents claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.

In its Decision, the Board granted institution of covered business method patent review on the ground that claims 2 and 11 of the ’221 patent are anticipated by Ginter. No other grounds were authorized. Petitioner had sought covered business method patent review of claims 2, 11, and 32 of the ’221 patent, alleging that each of these three claims was anticipated by Ginter. Petitioner submitted the Declaration of Dr. Jeffrey A. Bloom in support of its contentions.

The ’221 patent relates to technology designed to allow “data owners to make their data available over the Internet with less fear of data piracy.” Each of challenged claims 2, 11, and 32 is directed to a data access terminal. The Board construed the claim term “access rule” under the broadest reasonable interpretation standard to mean “a rule specifying a condition under which access to content is permitted.”

Patent Owner had argued that claim 32 did not satisfy the “financial in nature” requirement of AIA § 18(d)(1). The Board disagreed, finding that “the subject matter recited by claim 32 is directed to activities that are financial in nature, namely data access conditioned on payment validation.” As understood by the Board, in the context of AIA § 18(d)(1), the term “financial product or service” is to be interpreted broadly, is not limited to the products or services of the financial services industry, and was intended to encompass patents “claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.”

Patent Owner had also argued that claim 32 fell within the “technological inventions” exclusion of AIA § 18(d)(1), asserting that “ claim 32, as a whole, recites at least one technological feature that is novel and unobvious over the prior art.” The Board disagreed. As characterized by the Board, “the ’221 patent makes clear that the asserted novelty of the invention is not in any specific improvement of software or hardware, but in the method of controlling access to data.” Thus, the Board concluded “that the ’221 patent is a covered business method patent under AIA § 18(d)(1) and is eligible for review under the transitional covered business method patent program.”

As for the asserted anticipation of claims 2, 11, and 32 of the ’221 patent by Ginter, the Board noted that this same reference had been applied to the same claims of the ’221 patent in CBM2014-00103 (which in turn had been consolidated with CBM2014-00102). Nonetheless, the Board declined to exercise its discretion under § 325(d) to reject the instant Petition because it found that there were “sufficient differences in the way Ginter has been asserted in the two cases.”

The Board then found that each of claims 2 and 11 is unpatentable as anticipated by Ginter. In doing so, the Board agreed with Petitioner that “Ginter’s electronic appliance 600 is equivalent to the claimed ‘data access terminal,’ Ginter’s external object repository is equivalent to the claimed ‘data supplier,’ and Ginter’s removable PEA 2600 is equivalent to the claimed ‘data carrier.’” However, the Board was not persuaded that it has been shown that it is more likely than not that claim 32 is anticipated by Ginter.

Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd. v. Smartflash LLC, CBM2014-00199
Paper 9: Decision Granting Institution of Covered Business Method Patent Review
Dated: March 30, 2015
Patent: 8,118,221 B2
Before: Jennifer S. Bisk, Rama G. Elluru, Gregg I. Anderson, Matthew R. Clements, and Peter R. Chen
Written by: Bisk
Related Proceedings: Smartflash LLC v. Apple Inc., Case No. 6:13-cv-447 (E.D. Tex.); Smartflash LLC v. Samsung Electronics Co., Case No. 6:13-CV-448 (E.D. Tex.); CBM2014-00102; CBM2014-00103; CBM2014-00106; CBM2014-00107; CBM2014-00108; CBM2014-00109; CBM2014-00112; CBM2014-00113; CBM2014-00194; CBM2014-00190; CBM2014-00192; CBM2014-00193; CBM2014-00196; CBM2014-00197; CBM2014-00198; CBM2014-00200; and CBM2014-00204