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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`GOOGLE INC. AND APPLE INC.,
`Petitioners,
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`v.
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`CONTENTGUARD HOLDINGS, INC,
`Patent Owner.
`___________________
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`Case No. CBM2015-000401
`U.S. Patent No. 7,774,280
`____________________
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`__________________________________________________________________
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`PETITIONERS’ RESPONSE TO PATENT OWNER’S MOTION
`FOR OBSERVATIONS ON CROSS-EXAMINATION
`OF DR. GOLDBERG
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`1 Case No. CBM2015-00160 has been joined with this proceeding.
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`As authorized by the Board’s Scheduling Order (Paper 10), Petitioners
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`submit the following responses to Patent Owner’s observations on cross-
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`examination of Dr. Ben Goldberg (Paper 28).
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`I.
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`Response to Observation 1
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`Patent Owner cites to Ex. 2024 at 88:17-23, where Dr. Goldberg agrees
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`Stefik does not “explicitly disclose” any examples where the next-set-of-rights
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`field is “processed” independently from a usage right. Patent Owner contends this
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`is relevant to “whether Stefik discloses a right that can be exercised to create usage
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`rights without resulting in actions to content.” Paper No. 28 (“Obs.”) at 1. Patent
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`Owner is incorrect – the cited testimony does not address whether exercising the
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`next-set-of-rights results in action to content, but instead whether Stefik expressly
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`describes an example of a next-set-of-rights being exercised separately from a
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`usage right. It is undisputed that the claims do not require a meta-right to be
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`exercised separately from a usage right. See Ex. 1033 at 23:1-23 (testimony of
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`Patent Owner’s expert).
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`II. Response to Observation 2
`Patent Owner cites to Ex. 2024 at 91:22-92:9, where Dr. Goldberg states that
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`the examples of usage rights creation explicitly disclosed in Stefik are in the
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`context of exercising a different usage right to create a new copy of a digital work.
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`This testimony is not relevant to any issue in this proceeding, because it does not
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`address whether exercising a next-set-of-rights results in action to content, but
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`only whether the next-set-of-rights is exercised simultaneously with a usage right.
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`It is undisputed that the claims do not require a meta-right to be exercised
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`separately from a usage right. Ex. 1033 at 23:1-23 (testimony of Patent Owner’s
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`expert).
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`III. Response to Observation 3
`Patent Owner cites to Ex. 2024 at 105:22-106:6, where Dr. Goldberg is
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`discussing one example of an “Embed” transaction described in Stefik at 41:58 to
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`42:14, and contends this testimony is inconsistent with Dr. Goldberg’s opinion that
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`the “Embed” usage right can be exercised without an action to content. Patent
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`Owner fails to bring to the attention of the Board Dr. Goldberg’s deposition
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`testimony where he explains this passage of Stefik is describing only one example
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`of an “Embed” operation, see Ex. 2023 at 112:16-114:1 (explaining passage at
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`41:58-42:14 is describing an example where a digital work would be copied and
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`then embedded into a second digital work); see id. at 109:19-110:25 (same), and
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`that other passages in Stefik show the “Embed” usage right being exercised
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`without actions resulting to content, see id. at 107:14-108:4 (discussing Stefik
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`example of “Embed” usage right being exercised to add fees to a digital work); id.
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`at 109:5-18; Ex. 2023 at 111:1-112:12.
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`IV. Response to Observation 4
`Patent Owner’s motion cites Ex. 2024 at 106:24-107:13, where Dr. Goldberg
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`answers two different questions asked by Patent Owner’s counsel: the first relates
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`to an example of the Stefik “Embed” usage right described in paragraph 27 of Dr.
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`Goldberg’s supplemental declaration, and the second relates to the exemplary
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`“Embed” transaction described in Stefik at 41:58-42:14. Patent Owner contends
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`that Dr. Goldberg’s opinion that the “Embed” usage right can be exercised without
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`an action to content is inconsistent with Stefik at 41:58-42:14. As it did with
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`observation 3, Patent Owner overlooks Dr. Goldberg’s testimony describing how
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`Stefik shows the “Embed” transaction being used in other contexts. See Ex. 2023
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`at 112:16-114:1, 109:19-110:25 (explaining Stefik at 41:58-42:14 is just an
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`example of how the “Embed” transaction could work); Ex. 2023 at 107:14-108:4,
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`109:5-18, 111:1-112:12 (describing other examples disclosed in Stefik of the
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`“Embed” transaction where fees are added without an action to content).
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`Dated:
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`February 15, 2016
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` Respectfully submitted,
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`/ Robert R. Laurenzi /
`Robert R. Laurenzi
`Registration No. 45,557
`Kaye Scholer LLP
`250 W55th Street
`New York, NY 10019
`robert.laurenzi@kayescholer.com
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`Attorney for Petitioner Google Inc.
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`/ Jeffrey P. Kushan /
`Jeffrey P. Kushan
`Registration No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
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`Attorney for Petitioner Apple Inc.
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`Certificate of Service
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`I hereby certify that on this 15th day of February, 2016, a copy of this
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`Petitioners’ Response to Patent Owner’s Motion for Observations on Cross-
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`Examination of Dr. Goldberg has been served in its entirety by email on the
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`following counsel of record for Patent Owner:
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`Respectfully submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Attorney for Petitioner Apple
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`Timothy P. Maloney
`Nicholas T. Peters
`Fitch Even Tabin & Flannery LLP
`tpmalo@fitcheven.com
`ntpete@fitcheven.com
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`Robert A. Cote
`McKool Smith, P.C.
`rcote@mckoolsmith.com
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`February 15, 2016
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`Dated:
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