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Paper No. 30
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`GOOGLE INC. AND APPLE INC.,
`Petitioners,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC,
`Patent Owner.
`___________________
`
`Case No. CBM2015-000401
`U.S. Patent No. 7,774,280
`____________________
`
`__________________________________________________________________
`
`PETITIONERS’ RESPONSE TO PATENT OWNER’S MOTION
`FOR OBSERVATIONS ON CROSS-EXAMINATION
`OF DR. GOLDBERG
`
`
`
`
`
`
`
`
`1 Case No. CBM2015-00160 has been joined with this proceeding.
`
`
`
`

`
`
`
`As authorized by the Board’s Scheduling Order (Paper 10), Petitioners
`
`submit the following responses to Patent Owner’s observations on cross-
`
`examination of Dr. Ben Goldberg (Paper 28).
`
`I.
`
`Response to Observation 1
`
`Patent Owner cites to Ex. 2024 at 88:17-23, where Dr. Goldberg agrees
`
`Stefik does not “explicitly disclose” any examples where the next-set-of-rights
`
`field is “processed” independently from a usage right. Patent Owner contends this
`
`is relevant to “whether Stefik discloses a right that can be exercised to create usage
`
`rights without resulting in actions to content.” Paper No. 28 (“Obs.”) at 1. Patent
`
`Owner is incorrect – the cited testimony does not address whether exercising the
`
`next-set-of-rights results in action to content, but instead whether Stefik expressly
`
`describes an example of a next-set-of-rights being exercised separately from a
`
`usage right. It is undisputed that the claims do not require a meta-right to be
`
`exercised separately from a usage right. See Ex. 1033 at 23:1-23 (testimony of
`
`Patent Owner’s expert).
`
`II. Response to Observation 2
`Patent Owner cites to Ex. 2024 at 91:22-92:9, where Dr. Goldberg states that
`
`the examples of usage rights creation explicitly disclosed in Stefik are in the
`
`context of exercising a different usage right to create a new copy of a digital work.
`
`This testimony is not relevant to any issue in this proceeding, because it does not
`
`
`
`1
`
`

`
`
`
`address whether exercising a next-set-of-rights results in action to content, but
`
`only whether the next-set-of-rights is exercised simultaneously with a usage right.
`
`It is undisputed that the claims do not require a meta-right to be exercised
`
`separately from a usage right. Ex. 1033 at 23:1-23 (testimony of Patent Owner’s
`
`expert).
`
`III. Response to Observation 3
`Patent Owner cites to Ex. 2024 at 105:22-106:6, where Dr. Goldberg is
`
`discussing one example of an “Embed” transaction described in Stefik at 41:58 to
`
`42:14, and contends this testimony is inconsistent with Dr. Goldberg’s opinion that
`
`the “Embed” usage right can be exercised without an action to content. Patent
`
`Owner fails to bring to the attention of the Board Dr. Goldberg’s deposition
`
`testimony where he explains this passage of Stefik is describing only one example
`
`of an “Embed” operation, see Ex. 2023 at 112:16-114:1 (explaining passage at
`
`41:58-42:14 is describing an example where a digital work would be copied and
`
`then embedded into a second digital work); see id. at 109:19-110:25 (same), and
`
`that other passages in Stefik show the “Embed” usage right being exercised
`
`without actions resulting to content, see id. at 107:14-108:4 (discussing Stefik
`
`example of “Embed” usage right being exercised to add fees to a digital work); id.
`
`at 109:5-18; Ex. 2023 at 111:1-112:12.
`
`
`
`2
`
`

`
`
`
`IV. Response to Observation 4
`Patent Owner’s motion cites Ex. 2024 at 106:24-107:13, where Dr. Goldberg
`
`answers two different questions asked by Patent Owner’s counsel: the first relates
`
`to an example of the Stefik “Embed” usage right described in paragraph 27 of Dr.
`
`Goldberg’s supplemental declaration, and the second relates to the exemplary
`
`“Embed” transaction described in Stefik at 41:58-42:14. Patent Owner contends
`
`that Dr. Goldberg’s opinion that the “Embed” usage right can be exercised without
`
`an action to content is inconsistent with Stefik at 41:58-42:14. As it did with
`
`observation 3, Patent Owner overlooks Dr. Goldberg’s testimony describing how
`
`Stefik shows the “Embed” transaction being used in other contexts. See Ex. 2023
`
`at 112:16-114:1, 109:19-110:25 (explaining Stefik at 41:58-42:14 is just an
`
`example of how the “Embed” transaction could work); Ex. 2023 at 107:14-108:4,
`
`109:5-18, 111:1-112:12 (describing other examples disclosed in Stefik of the
`
`“Embed” transaction where fees are added without an action to content).
`
`Dated:
`
`February 15, 2016
`
` Respectfully submitted,
`
`/ Robert R. Laurenzi /
`Robert R. Laurenzi
`Registration No. 45,557
`Kaye Scholer LLP
`250 W55th Street
`New York, NY 10019
`robert.laurenzi@kayescholer.com
`
`Attorney for Petitioner Google Inc.
`
`/ Jeffrey P. Kushan /
`Jeffrey P. Kushan
`Registration No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`
`Attorney for Petitioner Apple Inc.
`
`3
`
`
`
`
`
`

`
`
`
`Certificate of Service
`
`I hereby certify that on this 15th day of February, 2016, a copy of this
`
`Petitioners’ Response to Patent Owner’s Motion for Observations on Cross-
`
`Examination of Dr. Goldberg has been served in its entirety by email on the
`
`following counsel of record for Patent Owner:
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Attorney for Petitioner Apple
`
`Timothy P. Maloney
`Nicholas T. Peters
`Fitch Even Tabin & Flannery LLP
`tpmalo@fitcheven.com
`ntpete@fitcheven.com
`
`Robert A. Cote
`McKool Smith, P.C.
`rcote@mckoolsmith.com
`
`February 15, 2016
`
`
`
`
`Dated:
`
`
`
`
`
`4

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