What is the prior art landscape for the SmartFlash vs Apple (and Samsung) patents?

Apple has just been ordered to pay $530 million for infringement of a trio of patents owned by Smarflash LLC that refer to ecommerce of media items from a central resource, in this case alleged to be infringed by Apple’s iTunes, and Smartflash are also litigating against Samsung, Google and Amazon.

In a previous blog we looked at the citation based relationship between these patents and patents filed by Apple and other companies.

Apple are appealing this judgement, including at the feared PTAB, and Samsung have also filed motions against this patent at the PTAB.

The three patents concerned are all filed for a Data storage and access systems, share a common priority date of 25th October 1999, and are:

• US7334720
• US8118221
• US8336772
   

As an example of this patent, claim one of the first listed patent US7334720 reads:

1. A method of controlling access to content data on a data carrier, the data carrier comprising non-volatile data memory storing content memory and non-volatile parameter memory storing use status data and use rules, the method comprising:

• receiving a data access request from a user for at least one content item of the content data stored in the non-volatile data memory;
• reading the use status data and use rules from the parameter memory that pertain to use of the at least one requested content item;
• evaluating the use status data using the use rules to determine whether access to the at least one requested content item stored in the content memory is permitted; and
• displaying to the user whether access is permitted for each of the at least one requested content item stored in the non-volatile data memory.

Which can be simplified to:

checking to see whether remote users have access rights to media content, and displaying the results of this query

Although readers would of course recognise that every word of a granted claim is important, and never rely on a simplification such as this one. Nonetheless, this helps us understand the area of technology.

Ambercite has recently developed Cluster Searching to help find both licensing opportunities and prior art for one or more patents, as shown below:

Cluster searching can use any number of input patents, from one upwards. In this case we will input all three patent numbers and receive back a set of the highest ranked (for predicted similarity)  direct or indirect patent citations. But what do we mean by direct and indirect patent citations?

• By direct patent citations, we refer to patents already cited by the examiner or the applicant for these patents
• By indirect patent citations, we refer to patents not listed as citations to any of these patents. Indirect citations are less likely to suffer from file wrapper estoppel and so more likely to be able to used as part of evidence in front of the PTAB.

Running this type of cluster search takes just a few seconds, and results can be separated into direct and indirect prior art, which we rank for similarity. So what did we learn?

Altogether, cluster searching identified 2178 direct and indirect prior art patents worthy of further review. 

The five most similar direct and indirect patent citations are shown in the table below:

Are these patents relevant to, or could invalidate any of the Smartflash patents? 

We will leave this to the legions of lawyers working on this case for different companies to answer, but we do note:

• Our top ranked direct patent, US5754654, was listed as an examiner citation and was the first listed patent discussed in the examination report for the US7334720 patent
• Our top ranked indirect patent, US5050213, discloses 

a database access system and method at a user site which permits authorized users to access and use the database and absolutely prevents unauthorized database use and copying. The present invention also provides a facility for measuring usage of the on-site database for the purpose of billing the user according to the amount he has used the database, and for periodically conveying the measured usage information to the database owner (or his agent)–while preventing the user from tampering with the measured usage information.

So regardless of whether or not this particular patent invalidates any of the Smartflash claims. it is certainly in the right area of technology, and this is only one (even if top ranked) out  of 2123 potential prior art patents we found.

About Cluster Searching

Cluster analysis is now being used by patent owners worldwide for invalidity, licensee and FTO searching and will soon be available in online and API (Application Programming Interface) and bulk ‘smart data’ form. Please contact us if you are interested in further information.

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