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
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00351
`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
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 1
`
`
`571-272-7822
`
`Paper 9
`Entered: June 24, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00351
`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
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 1
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`IPR2015-00351
`Patent 7,774,280 B2
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`I. INTRODUCTION
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`Petitioner, Apple Inc. (“Apple”), filed a Petition (“Pet.”) requesting an
`
`inter partes review of claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and 34 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. § 314(a), which provides that an
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`inter partes review may not be instituted unless the information presented in
`
`the Petition shows “there is a reasonable likelihood that the petitioner would
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`prevail with respect to at least 1 of the claims challenged in the petition.”
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`Taking into account the arguments presented in ContentGuard’s Preliminary
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`Response, we conclude that the information presented in the Petition does
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`not establish that there is a reasonable likelihood that Apple will prevail in
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`challenging claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and 34 of the ’280
`
`patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the
`
`Petition.
`
`A. Related Matters
`
`
`
`The ’280 patent has been asserted in the following three district court
`
`cases: (1) ContentGuard Holdings, Inc. v. Amazon.com Inc., No. 2:13-cv-
`
`01112 (E.D. Tex.); (2) Google Inc. v. ContentGuard Holdings, Inc., No.
`
`3:14-cv-00498 (N.D. Cal.); and (3) ContentGuard Holdings, Inc. v. Google
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`Inc., No. 2:14-cv-00061 (E.D. Tex). Pet. 1; Paper 7, 2. In addition to this
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`Petition, Apple filed at least seven other Petitions challenging the
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`patentability of a certain subset of claims in the following patents owned by
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`ContentGuard: (1) the ’280 patent (Cases IPR2015-00352, IPR2015-00353,
`
`and IPR2015-00354); and (2) U.S. Patent No. 8,001,053 B2 (Cases
`
`2
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`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 2
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`IPR2015-00355, IPR2015-00356, IPR2015-00357, and IPR2015-00358).
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`Pet. 2; Paper 7, 1.
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`B. 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
`
`[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
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`’280 patent also claims priority to the following provisional applications:
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`(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
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`November 20, 2001; (4) U.S. Provisional Application No. 60/296,113, filed
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`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
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`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
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`most important issues impeding the widespread distribution of digital works
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`is the current lack of ability to enforce the rights of content owners during
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`the distribution and use of their digital works. Id. at 1:24–29. In particular,
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`content owners do not have control over downstream parties unless they are
`
`privy to transactions with the downstream parties. Id. at 2:33–34.
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`Moreover, the concept of content owners simply granting rights to others
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`3
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`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 3
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`Patent 7,774,280 B2
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`that are a subset of the possessed rights is not adequate for multi-tier
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`distribution models. Id. at 2:45–48.
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`The ’280 patent purportedly addresses these problems by providing a
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`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,
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`which includes meta-rights specifying rights that may be derived therefrom.
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`Id. at 2:55–57. If the consumer is entitled to the rights derived from the
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`meta-rights, the disclosed invention then derives at least one right from the
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`meta-rights. Id. at 2:58–60. The rights that may be derived from the meta-
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`rights include at least one state variable based on the set of rights, which, in
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`turn, may be used to determine a state of the derived right. Id. at 2:62–64.
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`C. Illustrative Claim
`
`
`
`Of the challenged claims, claims 1, 12, and 24 are independent.
`
`Claims 1, 12, and 24 are directed to a method, a system, and a device,
`
`respectively, for transferring rights associated with an item from a rights
`
`supplier to a rights consumer. Claims 2–5, 8, and 11 directly depend from
`
`independent claim 1; claims 13–16, 19, and 22 directly depend from
`
`independent claim 12; and claims 25–28, 31, and 34 directly depend from
`
`independent claim 24. Independent claim 1 is illustrative of the challenged
`
`claims and is reproduced below:
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`A computer-implemented method for transferring
`1.
`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-
`
`4
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`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 4
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`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
`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.
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`D. Prior Art Relied Upon
`
`
`
`Apple relies upon the following prior art references:
`
`
`England US 6,327,652 B1
`
`
`
`
`
`
`
`Gruse US 6,389,538 B1
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`
`
`
`
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`Ireton US 2002/0077984 A1
`
`
`
`
`
`
`
`
`
`Dec. 4, 2001
`(filed Jan. 8, 1999)
`May 14, 2002
`
`(filed Oct. 22, 1998)
`June 20, 2002
`
`(filed Dec. 19, 2000)
`
`Ex. 1009
`
`Ex. 1008
`
`Ex. 1010
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`E. Asserted Grounds of Unpatentability
`
`
`
`Apple challenges claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and 34 of
`
`the ’280 patent based on the asserted grounds of unpatentability (“grounds”)
`
`set forth in the table below. Pet. 3, 25–60.
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Ireton
`
`§ 103(a)
`
`1–5, 8, 11–16, 19, 22, 24–28, 31, and 34
`
`Ireton and England § 103(a)
`
`1–5, 8, 11–16, 19, 22, 24–28, 31, and 34
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`Ireton and Gruse
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`§ 103(a)
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`1–5, 8, 11–16, 19, 22, 24–28, 31, and 34
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`
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`5
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`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 5
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`II. ANALYSIS
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`A. Claim Construction
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`
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`In an inter partes review, we construe claims by applying the broadest
`
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`
`see In re Cuozzo Speed Tech., LLC, 778 F.3d 1271, 1281–82 (Fed. Cir.
`
`2015) (“Congress implicitly adopted the broadest reasonable interpretation
`
`standard in enacting the AIA,” and “the standard was properly adopted by
`
`PTO regulation”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,766 (Aug. 14, 2012). Under the broadest reasonable interpretation
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`standard, and absent any special definitions, claim terms are given their
`
`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art in the context of the entire disclosure. In re Translogic Tech.
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for
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`claim terms or phrases must be set forth with reasonable clarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994).
`
`
`
`Apple proposes constructions for numerous terms or phrases, some of
`
`which are not recited explicitly in the challenged claims. Pet. 5–24. In
`
`response, ContentGuard proposes alternative constructions for most of the
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`terms or phrases construed by Apple. Prelim. Resp. 18–33. For purposes of
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`this decision, we need only assess the constructions offered by the parties for
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`the claim term “repository” because our determination to deny the Petition is
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`based, at least in part, on the construction of this claim term.
`
`
`
`Apple contends that the broadest reasonable interpretation of the
`
`claim term “repository” is “a trusted system, which maintains physical,
`
`communications and behavioral integrity, and supports usage rights using
`
`6
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`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 6
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`information that enables it to enforce both ‘meta-rights’ and ‘usage rights’
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`associated with a particular digital work.” Pet. 19 (citing Ex. 1003 ¶¶ 284–
`
`89). Apple argues that the construction it offers for the claim term
`
`“repository” in this proceeding is consistent with the construction of the
`
`same claim term in previous inter partes review proceedings handled by
`
`another panel of the Board, one of which involves U.S. Patent No. 5,634,012
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`(“Stefik”) that is incorporated by reference into the ’280 patent. See id. In
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`those proceedings, Apple asserts that the Board determined that the claim
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`term “repository” was defined explicitly as “a trusted system, which
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`maintains physical, communications and behavioral integrity, and supports
`
`usage rights.” Id. (citing Ex. 1035, 9) (emphasis omitted). Apple also
`
`asserts that, in those proceedings, the Board observed that to possess
`
`“physical integrity,” the repository must, among other things, “prevent[]
`
`access to information by a non-trusted system.” Id. (citing Ex. 1035, 11).
`
`
`
`
`
`Although Apple does not address separately “communications
`
`integrity” and “behavioral integrity” in its Petition, Apple’s declarant, Dr.
`
`Atul Prakash, nonetheless addresses these aspects of the claim term
`
`“repository” in his supporting testimony. Dr. Prakash testifies that, in
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`previous inter partes review proceedings before the Board, one of which
`
`involved Stefik, the Board defined “communications integrity” as “only
`
`communicates with other devices that are able to present proof that they are
`
`trusted systems, e.g., by using security measures such as encryption,
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`exchange of digital certificates, and nonces.” Ex. 1003 ¶ 284 (citing
`
`Ex. 1041, 12). Dr. Prakash further testifies that the Board defined
`
`“behavioral integrity” as requiring “software to include a digital certificate
`
`in order to be installed in the repository.” Id. (citing Ex. 1041, 13).
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`7
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`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 7
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`With a few exceptions, ContentGuard generally agrees with Apple’s
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`proposed construction for the claim term “repository,” including its and Dr.
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`Prakash’s definitions of “physical integrity,” “communications integrity,”
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`and “behavioral integrity.” Prelim. Resp. 24–26. ContentGuard argues that
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`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 24 (emphasis added). ContentGuard argues
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`that its proposed construction is consistent with both the Board’s
`
`construction of the claim term “repository” in the previous inter partes
`
`review proceedings, which considered Stefik, and the construction adopted
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`by a district court for the ’280 patent. Id. at 24–25 (citing Pet. 19; Ex. 2001,
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`15, 99). ContentGuard urges us to adopt its proposed construction for
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`reasons specified by the district court. Id. at 25. ContentGuard further
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`argues that we should not adopt the language in Apple’s proposed
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`construction that characterizes a repository as enforcing both meta-rights and
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`usage rights because it would render the claim language describing a “meta-
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`right . . . enforceable by a repository” redundant. Id.
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`
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`As an initial matter, we agree with the parties that the specification of
`
`the ’280 patent does not provide an explicit definition for the claim term
`
`“repository.” We also agree with the parties that the ’280 patent
`
`incorporates by reference Stefik, which provides an explicit definition for
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`the claim term “repository.” Ex. 1001, 2:9–12; Ex. 1012, 53:23–27. Stefik
`
`provides a glossary that explicitly defines the claim term “repository” as
`
`“[c]onceptually a set of functional specifications defining core functionality
`
`in the support of usage rights. A repository is a trusted system in that it
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`8
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`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 8
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`maintains physical, communications and behavioral integrity.” Ex. 1012,
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`53:23–27.
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`
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`With this glossary definition from Stefik in mind, we decline to adopt
`
`the language in Apple’s proposed construction pertaining to “using
`
`information that enables it to enforce both ‘meta-rights’ and ‘usage rights’
`
`associated with a particular digital work.” 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,
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`1362 (Fed. Cir. 2007). We agree with ContentGuard that, if we were to
`
`adopt this language proposed by Apple, it would render the claim phrase a
`
`“meta-right . . . enforceable by a repository,” explicitly recited in
`
`independent claims 1, 12, and 24, superfluous.
`
`
`
`After reviewing the remaining language in the constructions offered
`
`by both parties, we discern little, if any, difference between a “repository”
`
`that is “a trusted system which maintains physical, communications, and
`
`behavioral integrity, and supports usage rights,” and one that is “a trusted
`
`system in that it maintains physical, communications, and behavioral
`
`integrity in the support of usage rights.” Pet. 19; Prelim. Resp. 24
`
`(emphases added). We view the Board’s construction of the claim term
`
`“repository” in the previous inter partes reviews, which were brought
`
`against ContentGuard patents that share a similar disclosure with Stefik
`
`incorporated by reference in the ’280 patent, as informative. We give more
`
`weight to the panel’s construction of the claim term “repository” in those
`
`proceedings than the district court’s construction of the same claim term
`
`primarily because this proceeding and the previous proceeding before the
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`9
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`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 9
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`Board both apply the broadest reasonable interpretation standard to the
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`challenged claims of an unexpired patent. 37 C.F.R. § 42.100(b).
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`
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`For purposes of this proceeding, we construe the claim term
`
`“repository” as “a trusted system which maintains physical,
`
`communications, and behavioral integrity, and supports usage rights.” We
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`further define “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 measures such an 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
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`repository.”
`
`B. Obviousness Based on Ireton
`
`
`
`Apple contends that claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and 34
`
`are unpatentable under § 103(a) over Ireton. Pet. 24–45. Apple explains
`
`how Ireton purportedly teaches the claimed subject matter of each
`
`challenged claim (id. at 26–38), and relies upon the Declaration of
`
`Dr. Prakash (Ex. 1003 ¶¶ 236–308, 343–53, 661–780)1 to support its
`
`
`
`1 Our governing statute and rules require a petitioner to set out their claim
`challenges “with particularity” and with a “detailed explanation of the
`significance of the evidence.” 35 U.S.C. § 312(a)(3); 37 C.F.R.
`§§ 42.22(a)(2), 42.104(b)(4), (5). Likewise, the Office Patent Trial Practice
`Guide admonishes a petitioner to “focus on concise, well organized, easy-to-
`follow arguments supported by readily identifiable evidence of record.” 77
`Fed. Reg. 48,756–73, 48,763 (Aug. 14, 2012). In general, citations to
`voluminous sections, e.g., one hundred and nineteen paragraphs, of an expert
`declaration do not conform to these requirements and guidance, and are
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`10
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`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 10
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`positions (Pet. 24–25). We have considered Apple’s explanations and
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`supporting evidence, but we are not persuaded Apple has presented
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`sufficient evidence to support a finding that Ireton teaches the claimed
`
`“repository” that exhibits “behavioral integrity.”
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`
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`We begin our analysis with the principles of law that generally apply
`
`to a ground based on obviousness, followed by a brief discussion of Ireton,
`
`and then we turn to the parties’ arguments directed to the claimed
`
`“repository” that exhibits “behavioral integrity.”
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`1. Principles of Law
`
`A claim is unpatentable under § 103(a) if the differences between the
`
`claimed subject matter and the prior art are such that the subject matter, as a
`
`whole, would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations,
`
`including: (1) the scope and content of the prior art; (2) any differences
`
`between the claimed subject matter and the prior art; (3) the level of skill in
`
`the art; and (4) where in evidence, so-called secondary considerations.
`
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze this
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`asserted ground based on obviousness with the principles identified above in
`
`mind.
`
`
`
`unhelpful. As such, citations of this type, as well as statements they
`allegedly support, are not entitled to consideration.
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`11
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`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 11
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`2. Ireton
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`
`
`Ireton generally relates to media content and, in particular, enabling
`
`the sharing of protected digital media between playback devices. Ex. 1010
`
`¶ 1. Figure 1 of Ireton, reproduced below, illustrates a block diagram of a
`
`media system.
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`
`
`
`
`As shown in Figure 1 of Ireton, the system includes playback devices
`
`105a and 105b, digital media servers 110a and 110b, and computers 115a
`
`and 115b operatively coupled to one another via network 120. Ex. 1010
`
`¶ 17. According to Ireton, this system allows a consumer of digital media to
`
`access copies of the digital media in a number of locations without violating
`
`prescribed usage rules associated with the digital media. Id. ¶ 19.
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`
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`In one embodiment, Ireton discloses that each connection to a system
`
`component is established with a secure authenticated channel (“SAC”).
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`12
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`Ex. 1010 ¶ 34. A SAC is a mechanism for communicating digital data
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`between two system components over a connection that is secure by virtue
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`of the encrypted or otherwise decoded digital data. Id. Ireton discloses
`
`using conventional encryption or encoding techniques, such as public-
`
`private key encryption, to secure the communication channel. Id. ¶¶ 35, 50.
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`
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`In addition, Ireton discloses that each component in the system may
`
`verify or authenticate the identity of other components included in the
`
`system. Ex. 1010 ¶ 34. This layer of security, in conjunction with security
`
`provided by a SAC, prevents data from being copied illicitly, used, or
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`otherwise tampered with as it is transferred between devices. Id.
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`3. “Repository” That Exhibits “Behavioral Integrity”
`
`
`
`Independent claim 1 recites, in relevant part, “wherein the meta-right
`
`is provided in digital form and is enforceable by a repository,” and
`
`“determining, by a repository, whether the rights consumer is entitled to the
`
`rights specified by the meta-right.” Ex. 1001, 15:12–16 (emphases added).
`
`Independent claims 12 and 24 recite similar limitations. Id. at 15:58–61,
`
`16:40–43. By virtue of their dependence to at least one of independent
`
`claims 1, 12, and 24, claims 2–5, 8, 11, 13–16, 19, 22, 25–28, 31, and 34
`
`also require “a repository.”
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`
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`In its Petition, Apple contends that Ireton’s digital media servers 110a
`
`and 110b each constitute the claimed “repository.” Pet. 29–31. In
`
`particular, Apple argues that Ireton’s digital media servers 110a and 110b
`
`enforce usage rights associated with digital media by implementing an
`
`outtake process that encrypts the digital media using conventional public-
`
`private key encryption techniques. Id. at 30–31 (citing Ex. 1010 ¶¶ 35, 50;
`
`Ex. 1003 ¶ 678, 689). Apple further argues that these techniques ensure that
`
`13
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`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 13
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`encrypted digital files and the usage rights associated therewith only may be
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`accessed by components of Ireton’s system that have the necessary private
`
`key. See id. at 31. Apple, therefore, asserts that Ireton’s digital media
`
`servers 110a and 110b exhibit “behavioral integrity.” Id. (citing Ex. 1003
`
`¶ 681).
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`
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`In response, ContentGuard contends that Apple fails to demonstrate
`
`that Ireton’s digital media servers 110a and 110b each constitute the claimed
`
`“repository” that exhibits “behavioral integrity.” Prelim. Resp. 44.
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`ContentGuard argues that “behavioral integrity” was defined by both a
`
`previous panel of the Board and a district court to require “software to
`
`include a digital certificate in order to be installed in the repository.” Id.
`
`(citing Ex. 1041, 13; Ex. 2001, 19–21). ContentGuard further argues that
`
`Apple’s reliance on Ireton’s conventional public-private key encryption
`
`techniques to prevent unauthorized access to stored content has no bearing
`
`on “behavioral integrity” as previously defined by the Board and the district
`
`court because it does not ensure that software is trusted before being
`
`installed on Ireton’s digital media servers 110a and 110b. Id. ContentGuard
`
`also argues that the supporting testimony of Dr. Prakash should be entitled to
`
`little, if any, weight because his definition of “behavioral integrity” does not
`
`comport with how the same term was defined by both the previous Board
`
`panel and the district court. Id. at 44–45 (citing Ex. 1003 ¶ 681).
`
`
`
`As we explained in the claim construction section, we construe
`
`“repository” as “a trusted system which maintains physical,
`
`communications, and behavioral integrity, and supports usage rights.” See
`
`supra Section A. Of particular importance in this case is our definition of
`
`14
`
`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 14
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`
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`IPR2015-00351
`Patent 7,774,280 B2
`
`
`“behavioral integrity” as “requiring software to include a digital certificate
`
`in order to be installed in the repository.” Id.
`
`
`
`We agree with ContentGuard that Ireton’s digital media servers 110a
`
`and 110b each do not constitute a claimed “repository” that exhibits
`
`“behavioral integrity” because the private key used by these digital media
`
`servers to access or decrypt the encrypted digital files, and the usage rights
`
`associated therewith, does not constitute a digital certificate. Apple does not
`
`direct us to, nor can we find, a disclosure in Ireton that contemplates using
`
`the private key to perform the same function as a digital certificate—namely,
`
`to authenticate the source of the software. Rather, Ireton merely refers to
`
`conventional public-private key encryption techniques, which, at best,
`
`indicates that the private key is used in the traditional sense to access or
`
`decrypt the encrypted digital files and the usage rights associated therewith.
`
`See, e.g., Ex. 1010 ¶¶ 35 (disclosing that “conventional encryption or
`
`encoding techniques” are employed to secure the communication
`
`channel), 50 (disclosing that “conventional public-private key encryption
`
`techniques” are used to encrypt the digital media).
`
`
`
`We also agree with ContentGuard that, when attesting to the teachings
`
`of Ireton, Dr. Prakash applies a new definition of “behavioral integrity” that
`
`is different from the Board’s previous definition, the definition adopted by
`
`the district court, and the definition adopted for purposes of this proceeding.
`
`As we explained above, although Dr. Prakash acknowledges the Board’s
`
`previous definition of “behavioral integrity” as requiring “software to
`
`include a digital certificate in order to be installed in the repository”
`
`(Ex. 1003 ¶ 284 (citing Ex. 1041, 13)), he nonetheless applies a new
`
`definition for “behavioral integrity” when testifying that Ireton’s digital
`
`15
`
`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 15
`
`
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`IPR2015-00351
`Patent 7,774,280 B2
`
`
`media servers 110a and 110b each constitute the claimed “repository.” The
`
`relevant portion of Dr. Prakash’s testimony states that: “Ireton . . . shows
`
`that it employs ‘a trusted system which maintains physical, communications
`
`and behavioral integrity, and supports usage rights,’ where: . . . ‘behavioral
`
`integrity’ means ‘trusted software within a repository that enables control of
`
`content use.” Ex. 1003 ¶ 681.
`
`
`
`Dr. Prakash does not explain why he deviated from the Board’s
`
`previous definition of “behavioral integrity” (see, e.g., Ex. 1041, 13), which
`
`eventually was adopted by the district court (Ex. 2001, 19–21) and adopted
`
`for purposes of this proceeding (see supra Section A). Nor does Dr. Prakash
`
`explain how his new definition of “behavioral integrity” would be
`
`understood by one of ordinary skill in the art in light of the specification of
`
`the ’280 patent. Absent some underlying facts or data to support Dr.
`
`Prakash’s new definition of “behavioral integrity,” his testimony in this
`
`regard is entitled to little, if any, weight. See 37 C.F.R. § 42.65 (“Expert
`
`testimony that does not disclose the underlying facts or data on which the
`
`opinion is based is entitled to little or no weight.”).
`
`
`
`In summary, we are not persuaded that Apple has presented sufficient
`
`evidence to support a finding that Ireton’s digital media servers 110a and
`
`110b each constitute the claimed “repository” that exhibits “behavioral
`
`integrity” because the private key used by these digital media servers to
`
`access or decrypt the encrypted digital files, and the usage rights associated
`
`therewith, does not constitute a digital certificate. Based on the record
`
`before us, Apple has not demonstrated a reasonable likelihood that it will
`
`prevail on its assertion that claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and 34
`
`would have been obvious over Ireton.
`
`16
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`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 16
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`
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`IPR2015-00351
`Patent 7,774,280 B2
`
`
`C. Remaining Obviousness Grounds
`
`
`
`Apple contends that claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and 34
`
`are unpatentable under § 103(a) over the following combinations: (1) the
`
`combination of Ireton and England; and (2) the combination of Ireton and
`
`Gruse. Pet. 45–60. In each of these asserted grounds based on obviousness,
`
`Apple does not apply the teachings of England or Gruse in such a way that
`
`remedies the deficiencies in Ireton discussed above. See generally id.
`
`Therefore, for essentially the same reasons discussed above, Apple has not
`
`demonstrated a reasonable likelihood that it will prevail on its assertion that
`
`claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and 34 would have been obvious
`
`over the following combinations: (1) the combination of Ireton and
`
`England; and (2) the combination of Ireton and Gruse.
`
`
`
`III. CONCLUSION
`
`Taking into account the arguments presented in ContentGuard’s
`
`Preliminary Response, we conclude that the information presented in the
`
`Petition does not establish that there is a reasonable likelihood that Apple
`
`will prevail in challenging claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and 34
`
`of the ’280 patent as unpatentable under § 103(a).
`
`
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is ORDERED that the Petition is
`
`DENIED and no trial is instituted.
`
`17
`
`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 17
`
`
`
`18
`
`IPR2015-00351
`Patent 7,774,280 B2
`
`
`For PETITIONER:
`
`Jeffrey P. Kushan
`Michael R. Franzinger
`Sidley Austin LLP
`iprnotices@sidley.com
`
`
`
`For PATENT OWNER:
`
`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
`
`
`
`Patent Owner ContentGuard Holdings, Inc. - Exhibit 2019, p. 18
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