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`Paper No. 46
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`GOOGLE INC. AND APPLE INC.,
`Petitioners,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC,
`Patent Owner.
`___________________
`
`Case No. CBM2015-000401
`U.S. Patent No. 7,774,280
`__________________________________________________________________
`
`Petitioners’ Joint Reply Brief on CBM Eligibility
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`
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`1 Case No. CBM2015-00160
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`The purported purpose of the ’280 patent is to enable a “business model” for
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`DRM involving “multi-tier” distribution. Paper 44 at 3, citing Ex. 1001 at 2:24-48.
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`In this model, entities “in the business of manipulating the rights associated” with
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`digital content include “supplier[s] granting rights to [ ] consumer[s] downstream
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`in the distribution channel.” Ex. 1001 at 5:39-43, 6:1-13. Claim 1 uses these same
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`economic terms—“supplier” and “consumer”—to describe transfers of rights
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`between these business model participants. See id. at 15:7-8. Consistent with that
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`claim language, the specification is replete with references to the financial nature
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`of this claimed exchange between suppliers and consumers. See Paper 44 at 4-7.
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`ContentGuard’s brief ignores the overwhelming evidence that the claimed
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`invention is “financial in nature,” and disregards the invention’s purported purpose
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`—to enable a particular DRM business model. Instead, ContentGuard clings to the
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`few suggestions in the specification that the system described might be deployed
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`without explicitly requiring financial transactions, and argues that the claims could
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`be read to cover such transactions. Even if ContentGuard’s reading of the claims
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`were correct (and as Petitioners explained, it is not, see Paper 44 at 7-8), that
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`would only mean that the claimed scheme for enabling a multi-tier DRM business
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`model can, at the margins, be used to support “fee free” transactions. That
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`possibility cannot save the ’280 patent from CBM review. See Blue Calypso LLC
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`v. Groupon, Inc., 815 F.3d 1331, 1340 & n.3 (Fed. Cir. 2016).
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`1
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`
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`I.
`
`The ’280 Patent Claims Are “Financial in Nature”
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`ContentGuard asserts that the term “consumer” is “used consistently
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`throughout the specification to refer to parties engaged in rights transfers occurring
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`in non-financial contexts.” Paper 45 at 5. Not so. The hospital example
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`ContentGuard provides is the only example in which “consumer” is used in a non-
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`financial context. Elsewhere, “consumer” is explicitly used in the financial
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`context, to refer to participants in the “business model” that the ’280 patent
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`purportedly enables. See Ex. 1001 at 5:39-43 (“consumer” participates in “typical
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`business models for distributing digital content”); 6:1-17 (“consumer” is a “party
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`in the distribution chain” who may be “in the business of manipulating the rights
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`associated with the content”).
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`ContentGuard also points to “transfer of rights among employees of an
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`enterprise,” and “controlling content usage within an enterprise,” as supposedly
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`“non-financial” implementations of the invention. Paper No. 45 at 5, 6. But the
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`’280 specification explicitly describes usage of the claimed invention within an
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`enterprise as financial in nature: “For example, an enterprise might create,
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`distribute, and sell content and carry out those activities using different personnel
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`or different business units within the enterprise.” Ex. 1001 at 6:63-65 (emphasis
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`added). ContentGuard also contends that the specification’s university library
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`scenario is non-financial (see Paper No. 45 at 6-7), but ignores that the
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`2
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`
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`specification describes a “site license” under which the university is required to
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`track students’ usage of digital content. As Petitioners explained, both the
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`“enterprise” and “university” examples only confirm that the claimed invention is
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`financial in nature. See Paper 44 at 6, 9.
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`ContentGuard’s attempts to rely on the few non-financial examples further
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`fail because the ’280 specification repeatedly identifies “the preferred
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`embodiment” of the invention as financial in nature. Figure 1, “a schematic
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`illustration of a rights management system in accordance with the preferred
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`embodiment,” includes “rights label 40,” which “may include usage rights
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`permitting a recipient to view content for a fee of five dollars and view and print
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`content for a fee of ten dollars.” Id. at 3:15-16, 4:8-10. “License 52” in the
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`preferred embodiment “can be issued for the view right when the five dollar fee
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`has been paid.” Id. at 4:11-12. Similarly, the Figure 4 provides “an example of a
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`license expressed with an XML based rights language in accordance with the
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`preferred embodiment,” id. at 3:21-23, which explicitly includes a license fee, see
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`id. at Fig. 4. The preferred embodiment shown in Figure 1 also includes
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`“clearinghouse 90,” which the specification states “can be used to process payment
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`transactions and verify payment prior to issuing a license.” Id. 5:36-38.
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`Ignoring the context of the business model the ’280 patent purportedly
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`enables, ContentGuard cites to figures and examples in the specification
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`3
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`
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`concerning exercise of meta-rights that do not explicitly mention fees. (Paper 45 at
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`7.) But these exercises of meta-rights take place within a multi-level distribution
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`scheme for DRM-protected digital content, which—as the specification
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`establishes—includes financial transactions. Indeed, the restrictions on
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`distribution in ContentGuard’s examples (for example, generating the right to play
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`content on an additional device) only make sense where content publishers and
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`distributors “are in the business of manipulating the rights associated with the
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`content,” as the ’280 specification describes. Ex. 1001 at 6:14. The ’280 patent
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`does not, as ContentGuard suggests, merely claim subject matter that “could be
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`used in a financial context.” Paper 45 at 7. The stated purpose of the ’280 patent
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`is to enable a DRM business model that the specification confirms is explicitly
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`financial in nature.
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`In contrast, the “finance-related actions” in Google, Inc. v. Unwired Planet,
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`LLC, CBM2014-00006 at 7-8 (P.T.A.B. Aug. 13, 2018) (cited at Paper 45 at 9-10)
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`were only “exemplar applications” that may or may not be used in the claims for
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`controlling access to location information. The other CBM decisions
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`ContentGuard cites (Paper 45 at 8-9) are also inapplicable, as the Board noted that
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`the specifications asserted the inventions were useful to “a variety of . . .
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`industries,” Cloud9 Techs. LLC v. IPC Sys., Inc., CBM2017-00037 at 4-8
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`(P.T.A.B. July 21, 2017) (telephony system) or “a wide range of industries and
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`4
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`
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`products,” Ford Motor Co. v. Versata Dev. Grp., Inc. CBM2016-00100 at 10
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`(P.T.A.B. Mar. 20, 2017) (“computer assisted configuration technology”), or
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`declared that “[t]he present invention [a notification method] is not limited to
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`notifying a user of events that occur with respect to a financial account.” Twilio
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`Inc. v. Telesign Corp., CBM2016-00099 at 11 (P.T.A.B. Feb. 27, 2017).
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`ContentGuard’s contention that no method claim step “relate[s] to a
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`financial product or service or any financial activity,” id. at 5, improperly reads the
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`claims in isolation from the specification. The preamble recites the same
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`“consumer” and “supplier” that participate in the multi-tier business model. Ex.
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`1001 at 15:7-14. Additionally, the “determining … whether the rights consumer is
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`entitled to the right” step will require examining financial aspects, including
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`whether appropriate fees have been paid. See id. at 4:11-14 (“License 52 can be
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`issued for the view right when the five dollar fee has been paid”); 9:9-13 (“Meta-
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`rights manager module 510 verifies license 52 . . . to authorize the request to
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`exercise meta-rights 302 to derive new rights”).
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`II. The ’280 Patent Is Not a “Technological Invention”
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`ContentGuard does not contest that the ’280 patent fails to recite a novel or
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`unobvious technological feature, or that the ’280 patent does not solve a technical
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`problem using a technical solution. See generally Paper 45 at 1-10. Either is
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`sufficient to determine that the “technological invention” exception does not apply.
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`5
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`
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`
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`Dated:
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`November 9, 2018
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`
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`Respectfully Submitted,
`
`/ Robert R. Laurenzi /
`Robert R. Laurenzi
`Registration No. 45,557
`
`
`Attorney for Petitioner Google LLC
`
`
`/ Jeffrey P. Kushan /
`Jeffrey P. Kushan
`Registration No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`
`Attorney for Petitioner Apple Inc.
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`
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`6
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`
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`Certificate of Service
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`I hereby certify that on this 9th day of November, 2018, a copy of this
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`Petitioners’ Joint Reply Brief on CBM Eligibility has been served in its entirety by
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`email on the following counsel of record for Patent Owner:
`
`Timothy Maloney (tpmalo@fitcheven.com)
`Nicholas T. Peters (ntpete@fitcheven.com)
`Robert A. Cote (rcote@mckoolsmith.com)
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`
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`Dated:
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`November 9, 2018
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`
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`Respectfully submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Attorney for Petitioner Apple
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`7
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