Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 9
`Entered: June 24, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00040
`Patent 7,774,280 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`35 U.S.C. § 324(a) and 37 C.F.R. § 42.208
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 9
`Entered: June 24, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00040
`Patent 7,774,280 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`35 U.S.C. § 324(a) and 37 C.F.R. § 42.208
`
`
`
`
`
`
`CBM2015-00040
`Patent 7,774,280 B2
`
`I.
`
`INTRODUCTION
`A. Background
`Petitioner, Google Inc. (“Google”), filed a Petition (“Pet.”) requesting
`a review under the transitional program for covered business method patents
`of claims 1, 5, 11, 12, and 22 of U.S. Patent No. 7,774,280 B2 (“the ’280
`patent,” Ex. 1001). Paper 1. Patent Owner, ContentGuard Holdings, Inc.
`(“ContentGuard”), timely filed a Preliminary Response (“Prelim. Resp.”).
`Paper 8.
`We have jurisdiction under 35 U.S.C. § 324(a),1 which provides that a
`covered business method patent review may not be instituted unless the
`information presented in the Petition demonstrates “that it is more likely
`than not that at least 1 of the claims challenged in the petition is
`unpatentable.” Taking into account the arguments presented in
`ContentGuard’s Preliminary Response, we determine that the information
`presented in the Petition establishes that claims 1, 5, and 11 are more likely
`than not unpatentable under 35 U.S.C. §§ 102(b) and 103(a). We, however,
`determine that the information presented in the Petition does not establish
`that claims 12 and 22 are more likely than not unpatentable. Pursuant to 35
`
`
`1 See Section 18(a)(1) of the Leahy-Smith America Invents Act, Pub. L. No.
`112-29, 125 Stat. 284, 329 (2011) (“AIA”), which provides that the
`transitional program for covered business method patents will be regarded as
`a post-grant review under Chapter 32 of Title 35 of the United States Code,
`and will employ the standards and procedures of a post-grant review, subject
`to certain exceptions.
`
`2
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`Patent 7,774,280 B2
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`U.S.C. § 324 and § 18(a) of the AIA, we hereby institute a covered business
`method patent review only as to claims 1, 5, and 11 of the ’280 patent.
`B. Related Matters
`The parties indicate that the ’280 patent has been asserted in the
`
`following three district court cases: (1) ContentGuard Holdings, Inc. v.
`Google Inc., No. 2:14-cv-00061-JRG-RSP (E.D. Tex); (2) Google Inc. v.
`ContentGuard Holdings, Inc., No. 3:14-cv-00498-WHA (N.D. Cal.); and
`(3) ContentGuard Holdings, Inc. v. Amazon.com Inc., No. 2:13-cv-01112-
`JRG (E.D. Tex.). Pet. 6–7; Paper 7, 1–2. In addition to this Petition, Google
`filed another Petition requesting a review under the transitional program for
`covered business method patents of a certain subset of claims in U.S. Patent
`No. 8,001,053 (Case CBM2015-00043). Pet. 7; Paper 7, 1.
`C. Standing
`Section 18 of the AIA governs the transitional program for covered
`
`business method patent reviews. Section 18(a)(1)(B) of the AIA limits such
`reviews to persons, or their privies, that have been sued or charged with
`infringement of a covered business method patent. Google asserts that,
`because it has been sued for infringement of the ’280 patent, it has standing
`to file its Petition. Pet. 8 (citing Ex. 1004). Based on the record before us,
`we agree.
`
`D. The ’280 Patent
`The ’280 patent, titled “System and Method for Managing Transfer of
`Rights using Shared State Variables,” issued August 10, 2010, from U.S.
`Patent Application No. 10/956,121, filed on October 4, 2004. Ex. 1001, at
`
`3
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`[54], [45], [21], [22]. The ’280 patent is a continuation-in-part of U.S.
`Patent Application No. 10/162,701, filed on June 6, 2002. Id. at [63]. The
`’280 patent also claims priority to the following provisional applications:
`(1) U.S. Provisional Application No. 60/331,624, filed on November 20,
`2001; (2) U.S. Provisional Application No. 60/331,623, filed on November
`20, 2001; (3) U.S. Provisional Application No. 60/331,621, filed on
`November 20, 2001; (4) U.S. Provisional Application No. 60/296,113, filed
`June 7, 2001; (5) U.S. Provisional Application No. 60/296,117, filed on June
`7, 2001; and (6) U.S. Provisional Application No. 60/296,118, filed on June
`7, 2001. Id. at [60].
`The ’280 patent generally relates to a method and system for
`managing the transfer of rights associated with digital works using shared
`state variables. Ex. 1001, 1:18–20. According to the ’280 patent, one of the
`most important issues impeding the widespread distribution of digital works
`is the current lack of ability to enforce the rights of content owners during
`the distribution and use of their digital works. Id. at 1:24–29. In particular,
`content owners do not have control over downstream parties unless they are
`privy to transactions with the downstream parties. Id. at 2:33–34.
`Moreover, the concept of content owners simply granting rights to others
`that are a subset of the possessed rights is not adequate for multi-tier
`distribution models. Id. at 2:45–48.
`The ’280 patent purportedly addresses these problems by providing a
`method and system for transferring rights associated with an item—
`presumably a digital work—from a supplier to a consumer. Ex. 1001, 2:52–
`
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`55. The consumer obtains a set of rights associated with the digital work,
`which includes meta-rights specifying rights that may be derived therefrom.
`Id. at 2:55–57. If the consumer is entitled to the rights derived from the
`meta-rights, the disclosed invention then derives at least one right from the
`meta-rights. Id. at 2:58–60. The rights that may be derived from the meta-
`rights include at least one state variable based on the set of rights, which, in
`turn, may be used to determine a state of the derived right. Id. at 2:62–64.
`E. Illustrative Claims
`Claims 1 and 12 are the only independent claims challenged in this
`proceeding. Claim 1 is directed to a method for transferring rights
`associated with an item from a rights supplier to a rights consumer, whereas
`claim 12 is directed to a system for performing the same. Claims 5 and 11
`directly depend from independent claim 1; and claim 22 directly depends
`from independent claim 12. Independent claims 1 and 12 are illustrative of
`the challenged claims and are reproduced below:
`1.
`A computer-implemented method for transferring
`rights adapted to be associated with items from a rights supplier
`to a rights consumer, the method comprising:
`obtaining a set of rights associated with an item, the set
`of rights including a meta-right specifying a right that can be
`created when the meta-right is exercised, wherein the meta-
`right is provided in digital form and is enforceable by a
`repository;
`determining, by a repository, whether the rights
`consumer is entitled to the right specified by the meta-right; and
`exercising the meta-right to create the right specified by
`the meta-right if the rights consumer is entitled to the right
`specified by the meta-right, wherein the created right includes
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`at least one state variable based on the set of rights and used for
`determining a state of the created right.
`
`Ex. 1001, 15:7–22.
`
`12. A system for transferring rights adapted to be
`associated with items from a rights supplier to a rights
`consumer, the system comprising:
`
`means for obtaining a set of rights associated with an
`item, the set of rights including a meta-right specifying a right
`that can be created when the meta-right is exercised, wherein
`the meta-right is provided in digital form and is enforceable by
`a repository;
`
`means for determining whether the rights consumer is
`entitled to the right specified by the meta-right; and
`
`means for exercising the meta-right to create the right
`specified by the meta-right if the rights consumer is entitled to
`the right specified by the meta-right, wherein the created right
`includes at least one state variable based on the set of rights and
`used for determining a state of the created right.
`
`Id. at 15:52–67.
`
`F. Covered Business Method Patent
`Under § 18(a)(1)(E) of the AIA, we may institute a transitional review
`proceeding only for a patent that is a covered business method patent. A
`“covered business method patent” is a patent that “claims a method or
`corresponding apparatus for performing data processing or other operations
`used in the practice, administration, or management of a financial product or
`service, except that the term does not include patents for technological
`inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). For purposes of
`determining whether a patent is eligible for a covered business method
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`patent review, the focus is on the claims. See Transitional Program for
`Covered Business Method Patents—Definitions of Covered Business
`Method Patent and Technological Invention; Final Rule, 77 Fed. Reg.
`48,734, 48,736 (Aug. 14, 2012). A patent need have only one claim directed
`to a covered business method to be eligible for review. See id.
`1. Financial Product or Service
`In promulgating rules for covered business method reviews, the
`United States Patent and Trademark Office (“Office”) considered the
`legislative intent and history behind the AIA’s definition of a “covered
`business method patent.” 77 Fed. Reg. at 48,735–36. The “legislative
`history explains that the definition of covered business method patent was
`drafted to encompass patents ‘claiming activities that are financial in nature,
`incidental to a financial activity or complementary to a financial activity.’”
`Id. at 48,735 (citing 157 CONG. REC. S5432 (daily ed. Sept. 8, 2011)
`(statement of Sen. Schumer)). The legislative history indicates that
`“‘financial product or service’ should be interpreted broadly.” Id.
`Google contends that the challenged claims of the ’280 patent
`encompass embodiments that are, at the very least, incidental or
`complementary to a financial activity. Pet. 10. In particular, Google argues
`that the invention embodied in independent claims 1 and 12 is described
`using economic terms, such as the transfer of rights between a “supplier”
`and a “consumer.” See id. In addition, Google argues that these
`independent claims are directed toward “obtaining a set of rights” by a
`consumer, including “meta-rights” relating to an item such as a digital work.
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`7
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`Id. at 10–11 (citing Ex. 1001, 15:10–11, 15:55–56). Google then asserts that
`the specification of the ’280 patent confirms the financial nature of a
`consumer acquiring a digital work from a supplier, as required by
`independent claims 1 and 12. See id. at 11–12 (citing Ex. 1001, 4:3–14,
`4:39–53, 5:4–11, 5:35–37).
`ContentGuard contends that Google has not met its burden of
`demonstrating that the ’280 patent is a covered business method patent
`because the challenged claims, as a whole, do not recite processes or
`operations for a financial product or service. Prelim. Resp. 4–7.
`ContentGuard argues that, when the focus is on the challenged claims as a
`whole, it is clear that these claims are directed to computer security
`technology for creating, transferring, managing, and enforcing rights
`associated with digital works. Id. at 8. ContentGuard asserts that such
`technology has no particular connection to the financial services sector. Id.
`at 9, 13–16. ContentGuard further argues that the challenged claims are not
`directed to financial concepts that would qualify the ’280 patent as a covered
`business method patent eligible for review. Id. at 10–12.
`We are not persuaded by ContentGuard’s arguments because they
`narrowly focus on whether the challenged claims explicitly recite financial
`products or services. As we explained previously, the definition of a
`covered business method patent should be interpreted broadly to encompass
`patents claiming activities that are incidental or complementary to a
`financial activity. 77 Fed. Reg. at 48,735. ContentGuard does not direct us
`to a statutory or regulatory provision, much less legislative history, which
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`would require a covered business method patent to recite explicitly a
`financial product or service.
`Independent claim 1 of the ’280 patent recites “[a] computer-
`implemented method for transferring rights adapted to be associated with
`items from a rights supplier to a rights consumer.” Ex. 1001, 15:7–9
`(emphasis added). In our view, the transfer of rights associated with an item
`from a supplier to a consumer is an activity that, at the very least, is
`incidental or complementary to a financial activity.
`Our determination in this regard is further supported by the
`description of the invention in the specification of the ’280 patent. For
`example, the specification discloses that the transfer of rights associated with
`an item from a supplier to a consumer may require the payment of a fee and
`processing by a clearinghouse. See, e.g., Ex. 1001, 4:3–14 (disclosing how a
`consumer is permitted to view the digital works it purchased for a fee of $5
`or, alternatively, view and print the digital content for a fee of $10), 4:39–43
`(disclosing how a right specified in a license may include payment of a fee),
`5:4–11 (disclosing that, when a consumer wishes to obtain a digital work,
`the use may go through a series of steps, including paying a fee), 5:35–37
`(disclosing the use of a clearinghouse to process payment transactions).
`These cited disclosures in the specification reinforce that the transfer of
`rights associated with an item from a supplier to a consumer is, at the very
`least, incidental or complementary to a financial activity. On this record,
`therefore, the recited transfer of rights associated with an item from a
`supplier to a consumer in independent claim 1 satisfies the “financial
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`product or service” component of the definition for a covered business
`method patent set forth in § 18(d)(1) of the AIA.
`2. Technological Invention
`The definition of a “covered business method patent” in §18(d)(1) of
`the AIA does not include patents for “technological inventions.” When
`determining whether a patent is for a technological invention, we consider
`the following: “[(1)] whether the claimed subject matter as a whole recites a
`technological feature that is novel and unobvious over the prior art; and [(2)]
`solves a technical problem using a technical solution.” 37 C.F.R.
`§ 42.301(b). The following claim drafting techniques typically do not render
`a patent a “technological invention”:
`
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug.
`14, 2012).
`
`Google contends that the claimed subject matter of independent claim
`1, as a whole, does not recite a technological feature that is novel and
`unobvious. Pet. 16. To support its contention, Google argues that the
`specification of the ’280 patent discloses that the technology used to
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`accomplish the method steps recited in independent claim 1 is old and well
`known. Id. at 16–17 (citing Ex.1001, 3:15–16, 3:55–58, 6:27–31, 9:28–31,
`14:50–67, Fig. 1). For instance, Google argues that, as evidenced by the
`asserted prior art, the claimed features such as a “repository” and “rights
`language” are old and well known. Id. at 18–19. Google then asserts that
`the method steps recited in independent claim 1, either taken individually or
`collectively, do not recite a novel way of processing or transmitting rights
`associated with an item from a supplier to a consumer. See id. at 19–20.
`
`ContentGuard contends that the ’280 patent is for a technological
`invention because the challenged claims recite a number of novel and non-
`obvious technical features. Prelim. Resp. 16 (citing Ex. 1001, 15:6–22).
`ContentGuard argues that Google once again fails to address the challenged
`claims as a whole, particularly the concept of meta-rights as implemented in
`combination with a repository and specific types of state variables. Id. at
`17–18. ContentGuard further argues that Google ignores that the claimed
`“repository”—whether prior art or not—presents a concept unique to the
`computer security environment. Id. at 20.
`
`Based on our independent assessment of independent claim 1, the
`only feature recited in the body of the claim that resembles a technological
`feature is the claimed “repository.” The claimed “repository,” however,
`does not direct independent claim 1 to a technological invention because, as
`evidenced by the asserted prior art, this feature was not novel and unobvious
`as of the earliest effective filing date of the ’280 patent. In addition,
`regardless of whether the method steps of “obtaining,” “determining,” and
`
`11
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`“exercising” recited in independent claim 1 impart a novel and non-obvious
`way of processing or transmitting rights associated with an item from a
`supplier to a consumer, this claim only uses known prior art technology—
`namely, the claimed “repository”—to accomplish this method. We,
`therefore, are persuaded by Google’s explanation that the claimed subject
`matter of independent claim 1, as a whole, does not recite a technological
`feature that is novel and unobvious over the prior art.
`We need only assess whether one of the factors set forth 37 C.F.R.
`§ 42.301(b) is deficient to determine whether independent claim 1 is not for
`a “technological invention.”2 As such, the current situation does not require
`us to assess whether independent claim 1 solves a technical problem using a
`technical solution. On this record, because we are persuaded by Google’s
`explanation that independent claim 1, as a whole, does not recite a
`technological feature that is novel and unobvious over the prior art, we are
`satisfied that Google has met its burden of demonstrating that the ’280
`patent is a covered business method patent eligible for review.
`
`
`2 Indeed the legislative history of the AIA supports this interpretation of the
`“technological invention” exception. See, e.g., 157 Cong. Rec. S1364 (daily
`ed. Mar. 8, 2011) (Sen. Schumer stated the “‘technological invention’
`exception only excludes those patents whose novelty turns on a
`technological innovation over the prior art and are concerned with a
`technical problem which is solved by a technical solution . . . .”) (emphases
`added).
`
`12
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`G. Prior Art Relied Upon
`Google relies upon the following prior art reference:
`Stefik
`US 5,634,012
`May 27, 1997
`(Ex. 1002)
`H. Asserted Grounds of Unpatentability
`Google challenges claims 1, 5, 11, 12, and 22 of the ’280 patent based
`on the asserted grounds of unpatentability (“grounds”) set forth in the table
`below.
`Reference
`
`Stefik
`Stefik and the
`knowledge of one of
`ordinary skill in the art
`
`Challenged Claims
`1, 5, 11, 12, and 22
`1, 5, 11, 12, and 22
`1, 5, 11, 12, and 22
`
`Basis
`§ 101
`§ 102(b)
`§ 103(a)
`
`II. ANALYSIS
`A. Claim Construction
`In a covered business method patent review, we interpret claim terms
`
`in an unexpired patent according to the broadest reasonable interpretation in
`light of the specification of the patent in which it appears. 37 C.F.R.
`§ 42.300(b). Under the broadest reasonable interpretation standard, and
`absent any special definitions, we give claim terms their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art, at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set
`forth with reasonable clarity, deliberateness, and precision. In re Paulsen,
`30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`Google proposes a construction for each of the following claim terms:
`
`(1) “meta-right” (all challenged claims); (2) “rights” (all challenged claims);
`(3) “license” (claims 11 and 22); (4) “state variable” (all challenged claims);
`and (5) “repository” (all challenged claims). Pet. 27–36. In response,
`ContentGuard proposes an alternative construction for the following claim
`terms: (1) “meta-right” (all challenged claims); (2) “usage rights” (no
`challenged claims); (3) “rights” (all challenged claims); (4) “license” (claims
`11 and 22); (5) “state variable” (all challenged claims); and (6) “repository”
`(all challenged claims). Prelim. Resp. 30–38.
`
`The parties generally agree on the constructions offered for the claim
`terms “rights” and “license.” Compare Pet. 30–31, with Prelim Resp. 33–
`34. ContentGuard also admits that the claim term “usage rights” is not
`recited explicitly in the challenged claims of the ’280 patent. Prelim. Resp.
`32. For purposes of this decision, we need not assess these claim terms
`further. We need only assess the constructions offered by the parties for the
`claim terms “meta-rights,” “state variable,” and “repository.” See, e.g.,
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (only those terms that are in controversy need to be construed, and
`only to the extent necessary to resolve the controversy).
`
`In addition, we note that independent claim 12 recites the following
`three means-plus-function limitations: (1) “means for obtaining”;
`(2) “means for determining”; and (3) “means for exercising.” Dependent
`claim 22 also recites a means-plus-function limitation—namely, “means for
`generating.” Google does not identify specific portions of the specification
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`of the ’280 patent that describe the structure corresponding to each recited
`function, as required by 37 C.F.R. § 42.204(b)(3). We also will address
`these means-plus-functions limitations recited in independent claim 12 and
`dependent claim 22 below.
`1. “meta-rights” (all challenged claims)
`Google contends that the broadest reasonable construction of the
`claim term “meta-right” is “a right about a right.” Pet. 27. To support its
`proposed construction, Google directs us to various portions of the
`specification of the ’280 patent, the supporting Declaration of Benjamin
`Goldberg, Ph.D., the definition of “meta” in a general purpose dictionary,
`and the special definition of “usage rights” in Stefik, which is incorporated
`by reference in the ’280 patent. Id. at 27–30 (citing Ex. 1001, 2:9–16, 2:63–
`67, 4:8–10, 5:49–67, 6:1–10; Ex. 1014 ¶ 31; Ex. 1002, 51:43–47, 53:48–51;
`Ex. 1018).
`In response, ContentGuard contends that “meta-right” should be
`construed as “a right that, when exercised, creates or disposes of usage rights
`(or other meta-rights) but that is not itself a usage right because exercising a
`meta-right does not result in action to content.” Prelim. Resp. 30. To
`support its proposed construction, ContentGuard directs us to various
`portions of the specification of the ’280 patent and a district court’s
`construction of the claim term “meta-right.” Id. at 30–32 (citing Ex. 1001,
`5:52–60, 7:24–31, Figs. 9–16; Ex. 2001, 102–06). ContentGuard argues that
`Google’s proposed construction of “meta-right” in this proceeding is
`contrary to its proposed construction in the related district case where
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`Google purportedly endorsed the district court’s ruling that a meta-right “is
`not itself a usage right.” Id. at 31 (citing Ex. 2001, 1006).
`Upon reviewing the specification of the ’280 patent, we note that it
`provides an explicit definition for the claim term “meta-rights.” In
`particular, the specification discloses that “[m]eta-rights are the rights that
`one has to generate, manipulate, modify, dispose of or otherwise derive
`other rights.” Ex. 1001, 5:47–49. By using the verb “are” following “meta-
`rights,” the specification sets forth an explicit definition for this claim term
`with reasonable clarity, deliberateness, and precision. See Paulsen, 30 F.3d
`at 1480. Although the construction proposed by Google is consistent with
`this explicit definition, we decline to adopt Google’s construction because it
`does not use the same terminology the specification uses to define explicitly
`the claim term “meta-right.”
`
`We also decline to adopt ContentGuard’s proposed construction for
`the claim term “meta-right” for at least two reasons. First, it is well settled
`that our reviewing court disfavors any claim interpretation that renders a
`claim term or phrase superfluous. Stumbo v. Eastman Outdoors, Inc.,
`508 F.3d 1358, 1362 (Fed. Cir. 2007). If we were to adopt the language in
`ContentGuard’s proposed construction of “when exercised, creates or
`disposes of usage rights (or other meta-rights),” it would render the claim
`phrase “a meta-right specifying a right than can be created when the meta-
`right is exercised,” explicitly recited in independent claims 1 and 12,
`superfluous.
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`Second, we decline to adopt ContentGuard’s proposed construction,
`
`particularly the language indicating that a meta-right “is not itself a usage
`right because exercising a meta-right does not result in action to content,”
`because it would import extraneous limitations into the claims. If a feature
`is not necessary to give meaning to what the inventor means by a claim term,
`it would be “extraneous” and should not be read into the claim. Renishaw
`PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998);
`E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430,
`1433 (Fed. Cir. 1988). ContentGuard’s attempt to describe the claim term
`“meta-right” by distinguishing it from a usage right is not necessary to give
`meaning to this claim term, and should not be read into claims that recite this
`feature.
`
`For purposes of this decision, we construe the claim term “meta-right”
`as “a right that one has to generate, manipulate, modify, dispose of or
`otherwise derive another right.”
`2. “state variable” (all challenged claims)
`Google contends that the specification of the ’280 patent does not
`
`provide an explicit definition for the claim term “state variable.” Pet. 31.
`Instead, Google asserts that the broadest reasonable interpretation of the
`claim term “state variable” is “a variable that tracks a changing condition of
`a right.” Id. at 32. To support its proposed construction, Google directs us
`to various portions of the specification of the ’280 patent, the definition of
`the term “variable” in a general purpose dictionary, and the supporting
`
`17
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`CBM2015-00040
`Patent 7,774,280 B2
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`Declaration of Dr. Goldberg. Id. (citing Ex. 1001, 7:66–8:16; Ex. 1020;
`Ex. 1014 ¶ 34).
`
`In response, ContentGuard contends that Google’s construction of the
`claim term “state variable” does not reflect the broadest reasonable
`interpretation in light of the specification of the ’280 patent, because
`Google’s construction does not take into account that a state variable may
`represent the status of an item, usage rights, license, or other potentially
`dynamic conditions. Prelim. Resp. 34 (citing Ex. 1001, 7:66–8:1). Instead,
`ContentGuard argues that the broadest reasonable interpretation of the claim
`term “state variable” is “a variable having a value, or identifying a location
`at which a value is stored, that represents status of an item, rights, license, or
`other potentially dynamic conditions.” Id. at 35. To support is proposed
`construction, ContentGuard directs us to various portions of the specification
`of the ’280 patent and a district court’s construction of the claim term “state
`variable.” Id. at 34–35 (citing Ex. 1001, 7:66–8:1; 11:29–43, 12:19–21,
`Figs. 11, 17; Ex. 2001, 111, 114).
`
`Contrary to Google’s assertion, we note that the specification of the
`’280 patent does provide an explicit definition for the claim term “state
`variable.” In particular, the specification discloses that “[s]tate variables are
`variables having values that represent status of rights, or other dynamic
`conditions.” Ex. 1001, 7:67–8:1. By using the verb “are” following “state
`variables,” the specification sets forth an explicit definition for this claim
`term with reasonable clarity, deliberateness, and precision. See Paulsen,
`30 F.3d at 1480. Although the construction proposed by ContentGuard
`
`18
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`CBM2015-00040
`Patent 7,774,280 B2
`
`incorporates certain aspects of this explicit definition, we decline to adopt
`ContentGuard’s construction, in whole, because it also incorporates
`extraneous features, e.g., the language “a variable . . . identifying a location
`at which a value is stored,” that should not be read into the claims. See
`Renishaw, 158 F.3d at 1249.
`
`For purposes of this decision, we construe the claim term “state
`variable” as “a variable having a value that represents status of rights, or
`other dynamic conditions.”
`3. “repository” (all challenged claims)
`Google contends that the specification of the ’280 patent does not
`
`provide an explicit definition for the claim term “repository.” Pet. 33.
`Google, however, argues that the ’280 patent incorporates by reference
`Stefik, which provides an explicit definition for the claim term “repository.”
`Id. at 33–34 (citing Ex. 1001, 2:9–12; Ex. 1002, 53:23–27).
`In addition, Google directs us to a series of inter partes reviews
`
`brought against three ContentGuard patents that share a similar disclosure
`with Stefik. Pet. 34. Google argues that the Board panel in those
`proceedings construed the term “repository” as “a trusted system which
`maintains physical, communications, and behavioral integrity, and supports
`usage rights.” Id. at 34 (citing Ex. 1021, 10) (emphasis added). Google also
`argues that the Board panel further defined “physical integrity” as
`“preventing access to information by a non-trusted system”;
`“communications integrity” as “only communicates with other devices that
`are able to present proof that they are trusted systems, e.g., by using security
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`CBM2015-00040
`Patent 7,774,280 B2
`
`measures such as encryption, exchange of digital certificates, and nonces”;
`and “behavioral integrity” as “requiring software to include a digital
`certificate in order to be installed in the repository.” Id. (citing Ex. 1021,
`11–13). Google asserts that, although a Board panel is not bound by a
`decision from other Board panel, unless the decision has been designated as
`precedential, we should adopt this construction for the claim term
`“repository” as the broadest reasonable interpretation. See id. at 34–35.
`
`With one exception, ContentGuard generally agrees with Google’s
`proposed construction for the claim term “repository,” including its
`definition of “physical integrity,” “communications integrity,” and
`“behavioral integrity.” Prelim. Resp. 35–38. ContentGuard argues that the
`claim term “repository” should be construed as “a trusted system in that it
`maintains physical, communications, and behavioral integrity in the support
`of usage rights.” Id. at 35 (emphases added). ContentGuard argues that the
`district court considered the Board’s construction of the claim term
`“repository” in the previous inter partes reviews involving the ContentGuard
`patents referenced above, but rejected the Board’s wording in favor of the
`words emphasized above. Id. at 35–36 (citing Ex. 2001, 13–15).
`ContentGuard then urges us to adopt the district court’s construction of the
`claim term “repository” in this proceeding. Id. at 36.
`
`After reviewi
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