Smartflash v. Samsung offers a set of backup arguments following Oil States. Questions Presented:
- Whether Administrative Patent Judges of the Patent Trial and Appeal Board (“Board”) are principal Officers of the United States who must be appointed by the President with the advice and consent of the Senate under the Appointments Clause. [DC – I discussed this argument in a January 2018 post]
- Whether retroactive application of Covered Business Method Review to patents on inventions disclosed before passage of the Leahy-Smith America Invents Act violates the Due Process Clause of the Fifth Amendment.
- Whether undisputed evidence that a patented invention is not unduly preemptive, presented to technically proficient judges of the Board, is relevant to the question whether the invention is patent-eligible under 35 U.S.C. § 101.
The third question here is most interesting to me and strikes to the heart of the purpose of the eligibility limitations. Although the courts have written that preemption avoidance is a major function of eligibility limits, the Federal Circuit has repeatedly held that evidence of no-preemption is irrelevant.
Read the petition here.
Smartflash Patents at issue here: U.S. Patent Nos. 7,334,720; 7,942,317; 8,033,458; 8,061,598; 8,118,221; 8,336,772; and 8,794,516.
Claim at issue (Claim 1 of the ‘720 patent):
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.