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 CBM 2015-000401
`
`U.S. Patent 7,774,280
`Filed October 4, 2004
`Issued August 10, 2010
`Title: SYSTEM AND METHOD FOR MANAGING TRANSFER OF
`RIGHTS USING SHARED STATE VARIABLES
`____________________
`
`Attorney Docket No. 20318-134361
`Customer No: 22242
`____________________
`
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND UNDER
`37 C.F.R. § 42.121
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`_______________________________
`1 Case CBM2015-00160 has been joined with this proceeding.
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`GOOGLE INC. and APPLE INC.,
`Petitioners
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.
`Patent Owner
`____________________
`
`Case CBM 2015-000401
`
`U.S. Patent 7,774,280
`Filed October 4, 2004
`Issued August 10, 2010
`Title: SYSTEM AND METHOD FOR MANAGING TRANSFER OF
`RIGHTS USING SHARED STATE VARIABLES
`____________________
`
`Attorney Docket No. 20318-134361
`Customer No: 22242
`____________________
`
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND UNDER
`37 C.F.R. § 42.121
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`_______________________________
`1 Case CBM2015-00160 has been joined with this proceeding.
`
`
`
`Table of Contents
`
`I.
`INTRODUCTION ................................................................................ 1
`CLAIM LISTING ................................................................................. 1
`II.
`SCOPE OF THE SUBSTITUTE CLAIM ............................................ 2
`III.
`IV. SUPPORT FOR THE SUBSTITUTE CLAIM .................................... 3
`V.
`CLAIM CONSTRUCTION ................................................................. 6
`VI. THE SUBSTITUTE CLAIM IS PATENTABLE ................................ 6
`A.
`The Closest Known Prior Art ..................................................... 7
`B.
`The Level of Ordinary Skill in the Art ....................................... 8
`C.
`No Reference Anticipates The Proposed Substitute
`Claim .......................................................................................... 9
`1.
`Stefik ‘012 Does Not Anticipate ...................................... 9
`2.
`Ireton Does Not Anticipate ............................................ 11
`3.
`England Does Not Anticipate ........................................ 13
`4.
`Gruse Does Not Anticipate ............................................ 16
`5.
`Ginter Does Not Anticipate ........................................... 17
`6. Wyman Does Not Anticipate ......................................... 19
`The Proposed Substitute Claim Is Nonobvious Over the
`Prior Art .................................................................................... 20
`VII. SUBSTITUTE
`CLAIM
`37
`IS
`SUBSTANTIALLY
`IDENTICAL TO ORIGINAL CLAIM 1 WITHIN THE
`MEANING OF 35 U.S.C. ¶252 ......................................................... 23
`VIII. CONCLUSION .................................................................................. 25
`
`
`D.
`
`i
`
`
`
`Table of Authorities
`
`Cases
`Toyota Motor Corp. v. American Vehicular Sciences LLC,
`IPR2013-0419, Paper 32 (PTAB Mar. 7, 2014) .......................................... 1
`ZTE Corporation et al. v. ContentGuard Holdings Inc.,
`IPR2013-00136, Paper 33 (PTAB Nov. 7, 2013) ....................................... 1
`Statutes
`35 U.S.C. § 102(b) .......................................................................................... 7
`35 U.S.C. § 103(a) .......................................................................................... 7
`35 U.S.C. § 316(d) .......................................................................................... 1
`Regulations
`37 C.F.R. 42.104(b) ........................................................................................ 6
`37 C.F.R. 42.121 ............................................................................................. 1
`37 C.F.R. 42.121(a) ........................................................................................ 3
`37 C.F.R. 42.121(b) .................................................................................... 2, 4
`37 C.F.R. 42.121(ii) ........................................................................................ 3
`37 C.F.R. 42.22(a) .......................................................................................... 1
`37 C.F.R. 42.221(a) ........................................................................................ 1
`
`
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`
`This contingent motion to amend is submitted in compliance with 37 C.F.R.
`
`§42.121. If original claim 1 of U.S. Patent No. 7,774,280 (“the ‘280 patent”) is
`
`found unpatentable, the Board is requested to cancel independent claim 1 and
`
`replace it with proposed substitute claim 37. See 37 C.F.R. §42.22(a)(2); 35 U.S.C.
`
`§ 316(d). Proposed substitute independent claim 37 amends original independent
`
`claim 1 to expressly incorporate the meaning of the term “meta-right” as it would
`
`be interpreted in district court litigation. Claims 2-11 depend from original claim 1,
`
`would be unchanged in scope, and would depend from proposed substitute claim
`
`37. See Toyota Motor Corp. v. American Vehicular Sciences LLC, IPR2013-0419,
`
`Paper 32 at 2 (PTAB Mar. 7, 2014)(when independent claim cancelled and
`
`replaced with substitute claim, an unchanged dependent claim retains its same
`
`scope and need not be rewritten as substitute claim); ZTE Corporation et al. v.
`
`ContentGuard Holdings Inc., IPR2013-00136, Paper 33 at 3-4 (PTAB Nov. 7,
`
`2013)(not necessary to present unchanged dependent claims as substitute claims
`
`when substituting for independent claim).
`
`ContentGuard has satisfied the conference requirement of 37 C.F.R. §
`
`42.221(a) for this motion. (See Paper 13.)
`
`II. CLAIM LISTING
`
`The following is a complete listing of the proposed claim amendment with a
`
`1
`
`
`
`correlation of the substitute claim to the original claim. See C.F.R. ¶42.121(b).
`
`1. (Cancelled)
`
`2-11. (Unchanged claims to depend from proposed substitute claim 37)
`
`37. (Proposed substitute for original claim 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 of content, the
`set of rights including a meta-right specifying a usage right or another
`meta-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 at least one state
`variable based on the set of rights and used for determining a state of
`the created right, and wherein the meta-right is not itself a usage right
`because exercising the meta-right does not result in action to the
`content.
`
`III. SCOPE OF THE SUBSTITUTE CLAIM
`
`The proposed substitute claim presents one substitute claim for the cancelled
`
`original claim, satisfying the general presumption that “only one substitute claim
`
`would be needed to replace each challenged claim.” See 37 C.F.R. §42.121(a)(3).
`2
`
`
`
`The proposed substitute claim 37 is not broader than the original claim.
`
`Claim 37 includes all limitations of original independent claim 1 and additional
`
`clarifying language. The word “content” inserted in the first limitation makes
`
`explicit that items with which rights are associated are items of content. This is
`
`implicit in the claim as a whole in view of the patent specification, and is inserted
`
`for proper antecedent basis for the inserted phrase “does not result in action to the
`
`content.” The rewording of “a right” to read “a usage right or another meta-right”
`
`also does not change claim scope. The parties are in agreement that “right” would
`
`be understood as generic for usage right or meta-right. (Paper 1 at 30; Paper 8 at
`
`33; Paper 9 at 14.) The language inserted in the last limitation conforms the
`
`meaning of “meta-right” to how the term has been interpreted by the U.S. District
`
`Court for the Eastern District of Texas in pending litigation involving Patent
`
`Owner and Petitioner. (Ex. 2001 at 106.) The proposed substitute claim therefore
`
`complies with 37 C.F.R. §42.121(ii).
`
`IV. SUPPORT FOR THE SUBSTITUTE CLAIM
`
`Support for the proposed substitute claim from the original disclosure of the
`
`patent and from each earlier-filed disclosure for which benefit of the earlier filing
`
`date is sought is provided below. See 37 C.F.R. §§42.121(b)(1)-(2).
`
`
`
`Support for the substitute claim in the original application for the ‘280
`
`patent, application No. 10/956,121, filed October 4, 2004 (Ex. 2011) can be found
`
`3
`
`
`
`in, e.g.,: [0006](describing ‘012 patent for controlling usage rights, and
`
`incorporating ‘012 disclosure by reference); [0008](summarizing method of
`
`transferring rights using meta-rights); [0037]-[0038](explaining characteristics and
`
`functions of meta-rights); Fig. 2 and [0040]-[0042](describing meta-rights and
`
`usage rights in distribution network); Fig. 5 and [0049]-[0055](describing
`
`authorizing request to exercise meta-right, and exercising meta-right to create new
`
`right); Figs. 9-12 and [0065]-[0072](illustrating meta-rights specifying new right,
`
`determining recipient’s entitlement, exercising meta-right, and state variables);
`
`[0044](explaining that meta-rights are not usage rights because exercising meta-
`
`right does not act on content; stating that repository of incorporated ‘012 patent is
`
`used to enforce meta-rights); [0046]-[0047](describing function of conditions and
`
`state variables); and [0057](describing determining recipient’s entitlement to
`
`specified right and exercising meta-right to create new right).
`
`The ‘121 application is a continuation-in-part of application No. 10/162,701,
`
`filed June 6, 2002. (Ex. 2012.) Support for the proposed substitute claim in the
`
`‘701 parent application can be found in, e.g.: [0006](describing ‘012 patent system
`
`for controlling usage rights, and incorporating ‘012 disclosure by reference);
`
`[0008](summarizing method of transferring rights using meta-rights); [0028]-
`
`[0029](explaining characteristics and functions of meta-rights); Fig. 2 and [0031]-
`
`[0033](describing meta-rights and usage
`
`rights
`
`in distribution network);
`
`4
`
`
`
`[0035](explaining that meta-rights are different from usage rights because
`
`exercising meta-right does not act on content; stating that repository of
`
`incorporated ‘012 patent is used to enforce meta-rights); [0037]-[0038](describing
`
`function of conditions and state variables); and Fig. 5 and
`
`[0040]-
`
`[0046](describing authorizing request to exercise a meta-right, and exercising
`
`meta-right to create new right).
`
`The ‘280 patent also claims priority to provisional application No.
`
`60/331,624, filed November 11, 2001. (Ex. 2013.) Support for the proposed
`
`substitute claim in the ‘624 provisional application can be found in, e.g.: p. 1
`
`(incorporating ‘012 disclosure by reference; describing characteristics and
`
`functions of meta-rights); pp. 2-3 (explaining that meta-rights are different from
`
`usage rights because exercising meta-right does not act on content; stating that
`
`repositories of incorporated ‘012 patent are used to enforce meta-rights); p. 3 flow
`
`chart (describing process of exercising meta-right, including authenticating
`
`recipient’s entitlement to receive new right); p. 4 (describing meta-right conditions
`
`and state variables; illustrating license embodying a meta-right); p. 5 (describing
`
`components of system, including functions of Authorization, Meta-rights Manager
`
`and Rights Manager); p. 6-7 (describing authorization process for determining
`
`requestor’s entitlement to right specified in meta-right); and p. 8 (describing
`
`exercise of meta-right).
`
`5
`
`
`
`V. CLAIM CONSTRUCTION
`
`
`
`Constructions are provided for the terms “content” and usage right” of
`
`substitute claim 37, which were not in the original claim 1. See 37 C.F.R.
`
`§42.104(b)(3). These constructions reflect the broadest reasonable interpretation
`
`consistent with the specification.
`
`
`
`One of ordinary skill in the art would understand that the term “content”
`
`means “the digital information (i.e. raw bits) representing a digital work.” The ‘280
`
`specification incorporates by reference the disclosure of U.S. Patent No. 5,634,012
`
`to Stefik (“Stefik ‘012”). (Ex. 1001 at 1:37-43.) The incorporated Stefik disclosure
`
`includes a Glossary, which defines “content” in that manner. (Ex. 1002 at 52:32-
`
`34.)
`
`The district court construed “usage rights” to mean “indications that are
`
`attached, or treated as attached, to [a digital work / digital content / content / a
`
`digital document] and that indicate the manner in which the [digital work / digital
`
`content / content / digital document] may be used or distributed as well as any
`
`conditions on which use or distribution is premised.” (Ex. 2001 at 23–33, 106–08.)
`
`The construction is based on the ‘280 patent specification and the disclosure of the
`
`Stefik patents incorporated by reference. It reflects the broadest reasonable
`
`construction based on the entirety of the ‘280 patent disclosure.
`
`VI. THE SUBSTITUTE CLAIM IS PATENTABLE
`
`6
`
`
`
`A. The Closest Known Prior Art
`
`Google, Inc. (“Google”) filed a Petition for Covered Business Method
`
`Review under the Leahy-Smith America Invents Act (“AIA”) regarding claims of
`
`the ‘280 patent. (Paper 1.) On June 24, 2015, the Board entered a Decision
`
`instituting trial on claims 1, 5 and 11 for grounds of rejection based on anticipation
`
`under §102(b) by Stefik ‘012 and obviousness under §103(a) over the combination
`
`of Stefik ‘012 and the knowledge of one of ordinary skill in the art. (Paper 9 at 43.)
`
`Substitute independent claim 37 is patentable over the Stefik ‘012 reference.
`
`On September 11, 2015, the Board entered a Decision instituting covered
`
`business method patent review in response to a Petition filed by Apple Inc. in
`
`CBM2015-00160. The Decision instituted CBM review of the same claims based
`
`on the same grounds instituted in this proceeding. The Decision further ordered
`
`that CBM2015-00160 be joined with this proceeding. (Paper 13.)
`
`
`
`The original claim 1 of the ‘280 patent has been challenged in other petitions
`
`filed by Apple, Inc. before the Patent Trial & Appeal Board, designated Inter
`
`Partes Review Nos. IPR2015-00351, IPR2015-00352, IPR2015-00353 and
`
`IPR2015-00354. The primary prior art references asserted in those proceedings are:
`
`U.S. Patent Application Publication No. 2002/0077984 to Ireton (“Ireton”)(Ex.
`
`2014); U.S. Patent No. 6,327,652 to England et al. (“England”)(Ex. 2015); U.S.
`
`Patent No. 6,389,538 to Gruse et al. (“Gruse”)(Ex. 2016); and U.S. Patent No.
`
`7
`
`
`
`5,892,900 to Ginter et al. (“Ginter”)(Ex. 2017). The Board denied each petition as
`
`failing to show a reasonable likelihood that the Petitioner would prevail on any
`
`proposed rejections of claim 1. Google and Apple have asserted the above-
`
`mentioned references as well as U.S. Patent No. 5,260,999 to Wyman
`
`(“Wyman”)(Ex. 2018) against original claim 1 in the pending litigation.2 CG
`
`considers these references to be the closest other known prior art references to
`
`proposed substitute claim 37. (Ex. 2009 at ¶109-111.) Substitute claim 37 is
`
`patentable over this additional prior art.
`
`Patentability is supported by the declaration of David M. Martin Jr., Ph.D.
`
`With over 35 years of experience with computer software and a Ph.D. in Computer
`
`Science from Boston University, Dr. Martin is an expert in computer security and
`
`privacy and is highly qualified to address the digital rights management technology
`
`pertaining to the ‘280 patent. (Ex. 2009 at ¶¶ 7-13.)
`
`B. The Level of Ordinary Skill in the Art
`
`At the time of the ‘280 invention, the person of ordinary skill in the art would
`
`have had a bachelor’s degree in electrical engineering, computer science or a related
`
`
`
`2 U.S. Patent No. 5,629,980 to Stefik et al. has also been asserted in the
`
`litigation. It contains substantially the same disclosure as Stefik ‘012 and is
`
`therefore not separately addressed in this motion.
`
`8
`
`
`
`field with a few years (e.g., two years) of experience with digital content distribution
`
`and/or computer security. (Ex. 2009 at ¶16.) Such a person would have thought
`
`along the lines of conventional DRM systems, with ordinary creativity, and would
`
`have been constrained to operate in known DRM environments according to their
`
`own many complex interdependent components and methodologies due to the
`
`difficulty of modifying such systems without impacting fundamental principles of
`
`their operation. (Id. at ¶¶153-156.) There is no reason to believe that such a person
`
`would have perceived problems with existing DRM systems when operated in
`
`complex content distribution networks or would have been led to the solution
`
`offered by the ‘280 patent. (Id.)
`
`C. No Reference Anticipates The Proposed Substitute Claim
`
`1. Stefik ‘012 Does Not Anticipate
`
`Proposed substitute claim 37 requires exercising a meta-right to create a new
`
`right, and expressly recites that the meta-right is not itself a usage right because
`
`exercising it does not result in action to content.
`
`Stefik ‘012 represents a trusted repository DRM approach in which
`
`repositories enforce usage rights that control access to and the permitted manners
`
`of using digital content. (Ex. 2009 at ¶59.) Stefik explains that the usage rights
`
`statement for a digital work may include a “Next-Set-of-Rights” (“NSOR”)
`
`parameter. When a digital work is copied, transferred or loaned, the next set of
`
`9
`
`
`
`rights is automatically associated with the transported copy. (Id. at ¶¶60-61.) Each
`
`of these usage rights transactions results in the server repository transmitting the
`
`content of the digital work to the requestor repository, followed by additional
`
`actions performed on the content by the requestor repository. (Id. at ¶63.)
`
`All rights disclosed in Stefik as including a NSOR parameter are usage
`
`rights, and the NSOR parameter only appears within grammar defining one of
`
`these usage rights. (Id. at ¶66.) The NSOR parameter list a set of rights, but is not
`
`itself a rights construct that can be independently exercised. The NSOR parameter
`
`is never exercised. Instead, the encapsulating usage right is exercised, and during
`
`exercise of the usage right Stefik’s system consults the NSOR parameter to
`
`populate the next set of rights for that post-operation content. (Id. at ¶¶68-73,
`
`115.)
`
`Stefik ‘012 does not disclose the step of “exercising the meta-right” of
`
`proposed claim 37, wherein the meta-right exercised is not itself a usage right and
`
`is exercised without resulting in action to the content. The NSOR parameter is part
`
`of the data defining a usage right, and the only way to perform the NSOR
`
`parameter’s instructions is to begin by exercising a usage right such as transfer,
`
`copy, or loan. The transfer of digital content necessarily results in the
`
`corresponding action to content. The NSOR parameter is not a right separate from
`
`a usage right (i.e., a right that is not itself a usage right), and it cannot be exercised
`
`10
`
`
`
`without resulting in action to the content. Therefore, the NSOR parameter of Stefik
`
`‘012 does meet the requirements of the meta-right as recited in proposed substitute
`
`claim 37. (Id. at ¶¶75, 117.) The claim also distinguishes over Stefik ‘012’s
`
`disclosure of the encapsulating transfer, copy and loan rights, which are usage
`
`rights. Exercising these usage rights results in action to content. (Id. at ¶¶79, 117.)
`
`Stefik ‘012 also fails to disclose the “determining” step of the proposed
`
`substitute claim. The NSOR parameter may identify rights that may be added to a
`
`transported copy of a digital work. Stefik ‘012 does not describe a mechanism for a
`
`repository to evaluate whether the recipient is entitled to receive the rights
`
`identified in an NSOR parameter. (Id. at ¶¶81-90, 118.) In Stefik ‘012, a server
`
`repository checks conditions of its own usage rights to determine if it can perform
`
`a requested transaction. (Id. at ¶83.) Stefik ‘012 also discusses checking security
`
`conditions to determine if a repository has adequate security to participate in the
`
`system when exercising the associated usage right. (Id. at ¶¶89, 118.) This does not
`
`disclose checking the requestor’s entitlement to receive the rights specified by the
`
`NSOR parameter. Stefik’s decision making procedure for performing a transaction
`
`is completely independent of whatever rights are specified in the NSOR field. (Id.
`
`at ¶88, 118.)
`
`2. Ireton Does Not Anticipate
`
`Ireton relates to a digital media server (“DMS”) that allows a consumer to
`
`11
`
`
`
`access a digital work at different locations by managing the transfers of the
`
`acquired usage rights between playback devices. In Ireton, a DMS first acquires
`
`user rights from a content provider that permits a number of working copies for a
`
`digital media. The DMS then transfers the acquired right to playback devices or
`
`other DMSs that request the use right, ensuring that the total number of copies on a
`
`customer’s devices does not exceed the number of rights initially acquired by the
`
`DMS. (Id. at ¶¶122-123.)
`
`Ireton does not anticipate the proposed substitute claim. (Id. at ¶124.) As the
`
`Board held in In IPR2015-00351 (Ex. 2019 at 16), Ireton’s digital media servers do
`
`not correspond to the claimed repository having “behavioral integrity.” Ireton
`
`discloses only a private key used by the digital media servers to access or decrypt
`
`digital files and their associated usage rights, but does not disclose using the
`
`private key to authenticate the source of software before permitting it to be
`
`installed in the digital media server. (Ex. 2009 at ¶124.)
`
`A DMS of Ireton’s system does not create new rights, but only exercises a
`
`usage right to copy and transfer while enforcing the associated conditions on the
`
`number of copies distributable. The right to distribute the content itself is a usage
`
`right permitting the DMS to make copies of the content and transfer the copies to
`
`other devices. When exercised, this distribution right necessarily acts on the
`
`content. Therefore, Ireton does not disclose a meta-right that is independent of a
`
`12
`
`
`
`usage right, specifies a right that can be created when the meta-right is exercised,
`
`and does not result in actions to the digital content when exercised. (Id. at ¶125.)
`
`Ireton also does not disclose a repository performing the “determining” and
`
`“exercising” steps of the proposed amended claim 1. In Ireton, a “secure
`
`authenticated channel” can be used to distinguish between a communications
`
`endpoint being a system component or non-system component. But this relates to
`
`preventing intruders or other non-system components from receiving the data and
`
`is not a mechanism for determining whether the rights consumer is entitled to the
`
`potential new right specified by a meta-right. (Id. at ¶126.)
`
`3. England Does Not Anticipate
`
`England relates to loading and identifying a digital rights management
`
`operating system (DRMOS”). In England’s system, content providers download
`
`content only to subscriber computers that can prove that their operating systems
`
`will enforce the limitations the provider places on the content. A DRMOS must
`
`load on a subscriber client computer and execute only OS components that are
`
`authenticated with a digital signature as respecting digital rights. The disclosed
`
`DRMOS also identifies trusted applications and prevents non-trusted applications
`
`from gaining access to the content. (Ex. 2009 at ¶127.)
`
`In the England system, a content provider downloads the content, an “access
`
`predicate” and a “license” to the DRMOS on a subscriber computer. The access
`
`13
`
`
`
`predicate specifies the properties an application must have to process the content,
`
`and may also specify applications allowed to process the content. The license
`
`restricts what kind of processing may be performed on the content. The DRMOS
`
`enforces the license. (Id. at ¶128.)
`
`The proposed substitute claim 37 is not anticipated by England. (Id. at
`
`¶129.) The Board held in IPR2015-00353 that England’s subscriber computers do
`
`not correspond to the claimed repository having “communications integrity.”
`
`According to the Board, England does not teach a mechanism for the subscriber
`
`computer running the DRMOS operating system to verify that content provider
`
`server computer is a trusted system. (Ex. 2021 at 17-18.) England also does not
`
`disclose the use of digital certificates or any other mechanism to provide
`
`communications integrity between the subscriber computer and the computer of a
`
`sublicensee. (Ex. 2009 at ¶129.) England’s DRMOS prevents non-trusted
`
`applications from accessing protected content but does not prevent them from
`
`being installed. Therefore, England’s subscriber computers also do not correspond
`
`to the claimed repository having “behavioral integrity.” (Id. at ¶130.)
`
`England also does not disclose a meta-right specifying a right that can be
`
`created when the meta-right is exercised, and wherein the exercising of the meta-
`
`right does not result in actions to the content. England describes “sublicense rights”
`
`as rights permitting an application to share the content with other computers while
`
`14
`
`
`
`imposing restrictive rights on re-distributed content. The disclosed sublicense right
`
`is a usage right permitting a subscriber to transfer content to another device. The
`
`system passes a sublicense reflecting the further usage restrictions only when a
`
`subscriber exercises the usage right to share content, which necessarily involves
`
`action to the content (i.e., copying or otherwise transferring the content). And since
`
`the sublicense rights can only repeat or restrict the original usage rights established
`
`by the content provider, England does not disclose any mechanism for creating
`
`new rights. Therefore, England does not disclose a meta-right that is not a usage
`
`right, specifies a right that can be created when the meta-right is exercised, and
`
`that functions to create a new right without resulting actions to content. (Id. at
`
`¶¶131-132.)
`
`England also fails to disclose a repository performing the “determining” or
`
`the “exercising” steps of the proposed substitute claim. It describes how the
`
`subscriber may validate other client computers and share content with them via
`
`sublicense rights, but this does not involve a determination as to whether another
`
`client computer is entitled to receive a specific right associated with an item of
`
`content. England does not disclose any mechanism through which a repository
`
`determines a downstream party’s entitlement to receive a usage right specified by a
`
`meta-right before exercising the meta-right to generate the usage right. (Id. at
`
`¶133.)
`
`15
`
`
`
`4. Gruse Does Not Anticipate
`
`Gruse discloses a secure digital content electronic distribution system
`
`involving content providers, distributors, electronic digital content stores, a
`
`clearinghouse and end-user devices. Content providers and distributors may
`
`package content for further distribution. Electronic digital content stores market
`
`content to end users. A Clearinghouse provides licensing authorization and record
`
`keeping. End-user devices contain a player application compliant with the
`
`specifications of the secure digital content electronic distribution system. (Id. at
`
`¶¶134-135.)
`
`The content provider sets usage conditions for a digital work and transmits
`
`this data to authorized electronic digital content stores in a secure container. Gruse
`
`discloses a process whereby an electronic digital content store may become
`
`authorized to offer digital content of a provider. Once authorized via the
`
`clearinghouse, the store receives a digital certificate, along with the necessary tools
`
`for processing secure containers from the digital content label so that it may offer
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`content for purchase by end-users. (Id. at ¶¶136-137.) The store may add usage
`
`conditions in the offer to end-users, but the store usage conditions are not
`
`permitted to invalidate the original conditions set by the content provider. (Id. at
`
`¶139.)
`
`Gruse does not anticipate proposed substitute claim 37. (Id. at ¶138.) In
`
`16
`
`
`
`IPR2015-00352, the Board held that the Gruse clearinghouse computer does not
`
`correspond to the claimed repository having “behavioral integrity.” (Ex. 2020 at
`
`15-17.) Gruse’s digital certificates assigned by the clearinghouse do not function
`
`to assure that software is trusted before being installed in the clearinghouse. Gruse
`
`does not disclose that the electronic digital content stores, end-user devices, or any
`
`other components of the system possess behavioral integrity. (Ex. 2009 at ¶138.)
`
`The disclosure of a content store having the right to add restrictions does not
`
`correspond to a meta-right that is exercisable to create new rights. In Gruse, rights
`
`are created by the content provider, and the content stores can only modify the
`
`conditions of usage rights specified by the content provider in a limited manner
`
`that does not invalidate the content provider’s restrictions. (Id. at ¶139.)
`
`The end-user devices in Gruse may also receive a right from the electronic
`
`store that allows licensed secondary copies to be created. Copying as described in
`
`Gruse is the exercise of a usage right. Gruse’s copy right does not disclose a meta-
`
`right that is not itself a usage right and that is exercisable to create a new right in a
`
`process that does not result in action to content, as required by the amended claim.
`
`(Id. at ¶140.) Gruse also necessarily fails to disclose a system having a repository
`
`that performs the “determining” and “exercising” steps for creating a new right, as
`
`recited in the proposed amended claim 1. (Id. at ¶141.)
`
`5. Ginter Does Not Anticipate
`
`17
`
`
`
`Ginter generally relates to secure transaction management and electronic
`
`rights protection in a virtual distribution environment in which digital content is
`
`packaged in secure containers for use by secure electronic appliances. The content
`
`cannot be accessed except as provided by the rules and controls of the container,
`
`which may specify what kinds of content usage are permitted, and what kinds are
`
`not. Rules and controls may specify “meters,” which keep track of events and
`
`handle reporting, and “budget processes,” which limit how much content usage is
`
`permitted. (Id. at ¶¶142-143.)
`
`Ginter does not anticipate the proposed substitute claim. (Id. at ¶¶144.) In
`
`IPR2015-00354, the Board held that Ginter’s secure electronic appliances do not
`
`correspond to the claimed repository having “behavioral integrity.” (Ex. 2022 at
`
`16-18.) Ginter does not disclose a rights operating system that authenticates the
`
`source of the software prior to installing it on the secure electronic appliances or
`
`any other component of Ginter’s architecture. Ginter therefore fails to satisfy the
`
`repository limitations of the proposed amended claim 1. (Ex. 2009 at ¶144.)
`
`Ginter also fails to teach the “determining” or “exercising” steps of the
`
`proposed amended claim 1, let alone a system in which those steps are performed
`
`by a repository. There are points in Ginter’s distribution scheme at which some
`
`aspect of the user or its computer device is checked. These relate to the overall
`
`trustworthiness of the end user and his or her ability to receive “usage rights”
`
`18
`
`
`
`generally. For example, Ginter mentions checking an end user’s “credit, financial
`
`records, business agreements, and/or audit histories.” (Ex. 2017 at 169:27-57.)
`
`These properties relate to whether the consumer meets minimum criteria for
`
`continuing to participate in the system generally, not whether he or she is entitled
`
`to a specific usage right for an item of content. Ginter does not disclose a
`
`mechanism for making a determination of whether the rights consumer is entitled
`
`to a particular potential new right specified in a meta-right. (Ex. 2009 at ¶145.)
`
`6. Wyman Does Not Anticipate
`
`The Wyman patent discloses a license management system in which a
`
`software application, upon start-up, requests authorization from a license server.
`
`The license server checks a database of the licenses, called “product use
`
`authorizations.” If the requested use is permitted, a grant is returned to the
`
`requesting user node. (Id. at ¶¶146-148.)
`
`Wyman does not
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