UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________
`
`GOOGLE INC.
`
`Petitioner
`
`v.
`
`CONTENTGUARD HOLDINGS, LLC
`
`Patent Owner
`
`U.S. Patent No. 7,774,280
`
`_________________________________
`
`Case CBM: Unassigned
`
`_________________________________
`
`DECLARATION OF BENJAMIN GOLDBERG, PH.D.
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`GOOG-1014
`Declaration of Benjamin Goldberg
`
`
`
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________
`
`GOOGLE INC.
`
`Petitioner
`
`v.
`
`CONTENTGUARD HOLDINGS, LLC
`
`Patent Owner
`
`U.S. Patent No. 7,774,280
`
`_________________________________
`
`Case CBM: Unassigned
`
`_________________________________
`
`DECLARATION OF BENJAMIN GOLDBERG, PH.D.
`
`GOOG-1014
`Declaration of Benjamin Goldberg
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`
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`OVERVIEW
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`1.
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`I have been retained as an expert witness on behalf of Google Inc. for
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`the above-captioned covered business method review. I am competent to make this
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`declaration.
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`2.
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`I am being compensated for my time in connection with this covered
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`business method review at my standard consulting rate, which is $450 per hour.
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`My compensation is not dependent on the substance of my opinions, my testimony,
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`or the outcome of this covered business method patent review.
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`3.
`
`I understand that the petition for covered business method patent
`
`review (“the Petition”) involves U.S. Patent No. 7,774,280 (“the ‘280 patent”),
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`(GOOG-1001), which is a continuation-in-part of U.S. Application No.
`
`10/162,212, filed on June 5, 2002. That application claims the benefit of three
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`provisional applications: U.S. App. Nos. 60/296,113 filed June 7, 2001,
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`60/331,625, filed November 20, 2001 and 60/331,624, filed November 20, 2001.
`
`4.
`
`In preparing this Declaration, I have reviewed the ‘280 patent and
`
`considered each of the documents cited in this Declaration. In formulating my
`
`opinions, I have relied upon my experience in the relevant art. I have also
`
`considered, in formulating my opinions, the viewpoint of a person of ordinary skill
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`in the art in early 2001. I am familiar with the level of skill of a person of ordinary
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`skill in the art with respect to the technology at issue in June, 2001, which I
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`understand is the earliest possible priority date for the ‘280 patent.
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`BACKGROUND AND QUALIFICATIONS
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`5.
`
`I am a tenured Associate Professor in the Department of Computer
`
`Science of the Courant Institute of Mathematical Sciences, New York University
`
`(“NYU”), in New York, NY.
`
`I have held this position since September 1994.
`
`From 1987 to 1994, I was an Assistant Professor in the Department of Computer
`
`Science at NYU. Since September 2014, I have been the Director of Graduate
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`Studies for the MS programs in the Department of Computer Science, having
`
`previously served in that role from September 2009 through August 2012. I served
`
`as the Director of Undergraduate Studies for the Department of Computer Science
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`from September 1995 through August 1998 and from September 2003 through
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`August 2006.
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`In addition, I held a one-year visiting professorship at the Institut
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`National de Recherche en informatique et en Automatique (INRIA), a national
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`laboratory in France, and was twice appointed to a month-long position as an
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`invited professor at the Ecole Normale Supérieur, a University in Paris.
`
`6.
`
`I received my Doctoral degree in Computer Science from Yale
`
`University, New Haven, Connecticut in 1988, having previously received Master
`
`of Science and Master of Philosophy degrees in Computer Science from Yale in
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`1984. My undergraduate degree from Williams College in 1982 was a Bachelor of
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`Arts degree with highest honors in Mathematical Sciences.
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`7.
`
`I have taught courses at the undergraduate and graduate level in,
`
`among other things, software development, programming languages, embedded
`
`systems (including mobile devices and media devices), operating systems, object-
`
`oriented programming, hardware design, and other areas related to the technology
`
`of the ‘280 patent. The content of these courses (e.g. operating systems, embedded
`
`systems, etc.)
`
`includes computer security and digital content distribution.
`
`Additional information concerning the computer science courses that I have taught,
`
`my professional publications and presentations in the field of computer science are
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`set forth in my current Curriculum Vitae, a copy of which is attached as Exhibit A.
`
`8.
`
`In sum,
`
`I have over 30 years of experience in research and
`
`development in the areas of computer science as a professor, researcher and
`
`consultant. I consider myself to be at least a person of ordinary skill in the art, as
`
`described below.
`
`DOCUMENTS CONSIDERED
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`9.
`
`In formulating my opinion, I have considered the following exhibits
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`attached to the Petition as well as the file history of the ‘280 patent:
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`Exhibit
`#
`1001
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`1002
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`1015
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`1020
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`Description
`
`U.S. Patent No. 7,774,280 to Nguyen et al. (“the ‘280 patent”)
`
`U.S. Patent No. 5,634,012 to Stefik et al. (“the ‘012 patent”)
`
`Extensible Markup Language (XML) 1.0
`
`Definition of “variable” – free dictionary online
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`10.
`
`I was asked to provide an opinion regarding the skill level of a person
`
`of ordinary skill in the art of the ‘280 patent in early to mid-2001. In my opinion, a
`
`person of ordinary skill in the art of the ‘280 patent is a person with a bachelor’s
`
`degree in electrical engineering, computer science or a related field, with a few years
`
`(e.g. two years) of experience with digital content distribution and/or computer
`
`security. I have been informed that the owner of the ‘280 patent has offered the same
`
`definition of a person of ordinary skill in the art in the pending litigation involving this
`
`patent.
`
`Anticipation
`
`RELEVANT LEGAL STANDARDS
`
`11.
`
`I have been informed by counsel and understand that a patent is
`
`invalid on the basis of anticipation under 35 U.S.C. § 102 if a single prior art
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`reference discloses, either expressly or inherently, each and every limitation of the
`
`claimed invention. Under the principles of inherency, if the prior art necessarily
`
`functions in accordance with or includes the claimed limitations, it anticipates and
`
`therefore invalidates the patent’s claim(s).
`
`Obviousness
`
`12.
`
`I also understand that a claimed invention is not patentable under 35
`
`U.S.C. § 103 if the differences between the invention and the prior art is such that
`
`the subject matter as a whole would have been obvious to a person having ordinary
`
`skill in the art at the time of the invention. I understand obviousness is based on
`
`the scope and content of the prior art, the differences between the prior art and the
`
`claim, the level of ordinary skill in the art, and, to the extent that they exist and
`
`have an appropriate connection to the claimed invention, secondary indicia of non-
`
`obviousness. I understand that secondary considerations must have a nexus to the
`
`claim and that even substantial evidence of secondary considerations may not
`
`overcome a strong prima facie showing of obviousness. Secondary indicia of non-
`
`obviousness include: (1) the invention's commercial success; (2) long felt but
`
`unresolved needs; (3) the failure of others; (4) skepticism by experts; (5) praise by
`
`others; (6) teaching away by others; (7) recognition of a problem and (8) copying
`
`of the invention by competitors.
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`13.
`
`I understand that whether any relevant differences exist between the
`
`prior art and the claimed inventions is to be analyzed from the view of a person of
`
`ordinary skill in the art at the time of the inventions.
`
`14.
`
`I also understand that I must consider the impact, if any, of such
`
`differences on the obviousness or non-obviousness of the invention as a whole
`
`when analyzing the differences between the claimed invention and the prior art.
`
`The person of ordinary skill faced with a problem in the field is able to apply his or
`
`her experience and ability to help to solve the problem and also look to any
`
`available prior art.
`
`15.
`
`I further understand that a precise teaching in the prior art directed to
`
`the subject matter of the claimed invention is not necessary. I understand that one
`
`of skill in the art may take into account the inferences and creative steps that a
`
`person of ordinary skill in the art would have employed in reviewing prior art at
`
`the time of the invention. For example, if the claimed invention combined elements
`
`known in the prior art and the combination yielded results that would have been
`
`predictable to a person of ordinary skill in the art at the time of the invention, such
`
`evidence would make it more likely that the claim was obvious. On the other hand,
`
`if the combination of known elements yielded unexpected or unpredictable results,
`
`or if the prior art teaches away from combining the known elements, then this
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`evidence would make it more likely that the claim that successfully combined such
`
`elements was not obvious.
`
`16.
`
`Finally, I understand that hindsight must not be used or considered
`
`when comparing the prior art to the invention for the purposes of an obviousness
`
`analysis.
`
`Incorporation by Reference
`
`17.
`
`I understand that a patent may include technical information in its
`
`specification by making an explicit reference to another public document, such as a
`
`patent or publication, and incorporate that document into the specification by
`
`explicit reference to the document.
`
`18.
`
`I further understand that those portions of U.S. Patent No. 5,634,012
`
`(“the ‘012 patent”) concerning “authentication, authorization, accounting, payment
`
`and financial clearing, rights specification, rights verification, rights enforcement,
`
`and document protection” (GOOG-1001, 1:36-43) were incorporated by reference
`
`into the specification of the ‘280 patent. I have reviewed the ‘280 patent and ‘012
`
`patent at length.
`
`STATE OF THE ART
`
`19.
`
`The state of the art of digital rights management and digital data
`
`transfer was quite advanced in the 2001 time period. The state of the art is amply
`
`described by the ‘012 patent, much of which, as mentioned above, is incorporated
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`into the ‘280 patent. At its core, digital rights management involved (and still does)
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`the control of one’s reception and use of digital content. Thus, digital rights
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`management
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`involved programming, using traditional
`
`and well known
`
`programming languages of the time, of computer devices such that they enforced
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`rules about how and when content, like music or videos, could be electronically
`
`transferred and how they could be used. As described in the ‘012 patent, any
`
`processing device could be utilized to implement these rules and known safeguards
`
`such as passwords, encryption and digital certificates were programmed into the
`
`processors of the common computing devices to ensure that only authorized and
`
`authenticated devices were part of the “trusted” environment. A system of usage
`
`rights, defined by a grammar from which the “rules” of the DRM could be
`
`enforced is described by the ‘012 patent in Figure 15. A programmer could thus
`
`use the grammar of Figure 15 in any way desired, including any preferred order of
`
`steps, to create and execute the DRM rules and processes described specifically
`
`and generally by the ‘012 patent.
`
`THE ‘280 PATENT
`
`20.
`
`The ‘280 patent is directed generally to digital rights management
`
`(“DRM”) and specifically to the concept of transferring “usage rights” that grant
`
`one or more users access to digital content, like a movie or an eBook.
`
`(See
`
`GOOG-1001, 1:36-51; 2:51-64; 12:41-46; 13:65-14:43.) The ‘280 patent describes
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`known ways of implementing DRM over the internet, where content owners or
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`distributors attach prescribed usage rights to digital content. (See GOOG-1001,
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`2:14-29.) The usage rights define one or more manners of use, i.e., how a recipient
`
`of the content may use the digital content. (See GOOG-1001, 2:14-16.) For
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`example, an owner or distributor of digital content may grant the recipient of the
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`digital content the usage rights for “viewing only.” (GOOG-1001, 2:16-18; 2:9-
`
`14.) Conditions on use may also be included with the usage rights such that “usage
`
`rights can be contingent on payment or other conditions.” (GOOG-1001, 2:18-19.)
`
`21. As noted already, the ‘280 patent describes known, prior art DRM
`
`concepts like “authentication, authorization, accounting, payment and financial
`
`clearing, rights specification, rights verification, rights enforcement, and document
`
`protection” that are described in the ‘012 patent and which is incorporated by
`
`reference into the ‘280 patent specification. (GOOG-1001, 1:34-43; 2:9-16.)
`
`22.
`
`The ‘280 patent specification describes two drawbacks of the prior art.
`
`First, it says that content owners cannot control the use of content by downstream
`
`users unless the content owners remain a party to the transaction: “the publisher
`
`cannot readily control rights granted to downstream parties, such as the first or
`
`subsequent users unless the publisher
`
`remains a party to the downstream
`
`transaction.” (GOOG-1001, 2:34-39; 2:22-42) Additionally, the ‘280 patent also
`
`notes that the prior art fails to provide a facility for allowing a downstream party to
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`grant rights that are different from the rights held by the downstream party itself.
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`(GOOG-1001, 2:42-48.) The ‘280 patent concludes that these problems “hinder[]
`
`the distribution of digital content and other items.” (GOOG-1001, 2:41-42.)
`
`23.
`
`In order to purportedly address these shortcomings, the ‘280 patent
`
`claims the use of “meta-rights” and “state variables.” Meta-rights are usage rights
`
`that permit the granting of rights to others, i.e., meta-rights are rights that allow a
`
`recipient of the right to create a new usage right and send that new usage right on
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`to another party. (GOOG-1001, 5:47-56.) State variables track dynamic state
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`conditions. (GOOG-1001, 8:3-16.)
`
`24.
`
`Figure 12 of the ‘280 patent depicts a situation where a creator of
`
`digital media (1201) offers usage rights to a distributor of digital media (1202 and
`
`1203). The usage rights provided by the content creator to the distributors include
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`meta-rights, which grant the distributor the rights to provide “play” right to users
`
`of the digital content further down the distribution chain in the form of licenses
`
`(1204, 1205 and 1206). State variables track the “play” right exercised by the user
`
`(e.g., Alice, Bob, and Cathy). The “play” right is limited to 5 concurrent plays for
`
`each organization (urn:acme:club, urn:foo:club) and the play uses are tracked by
`
`the respective state variables. (GOOG-1001, 12:57-13:8.) Here, state variables are
`
`counters where a state represents the number of times the “play” right is exercised.
`
`(GOOG-1001, 13:9-17; 13:54-64.)
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`Claims Considered
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`25.
`
`I have evaluated the patentability of claims 1, 5, 11, 12 and 22 of the
`
`‘280 patent. Claim 1 recites:
`
`P
`
`A
`
`Claim Element
`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
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`Claim Element
`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.
`
`B
`
`C
`
`D
`
`26. Claim 5 is dependent on claim 1 and further recites that the state
`
`variable in step D is updated upon the exercise of a right associated with the state
`
`variable.
`
`27. Claim 11 is dependent on claim 1 and further recites that the created
`
`right in steps C and D are included in a generated license if the rights consumer is
`
`entitled to the right specified by the meta-right.
`
`28. Claim 12 is an apparatus claim which contains parallel elements from
`
`method claim 1 and therefore can (except when otherwise noted) be analyzed
`
`together for purposes of invalidity. Each claim respectively recites methods and
`
`means for “obtaining,” “determining” and “exercising” rights, including state
`
`variables to determine the state of a created right. The following table illustrates
`
`that language (in bold lettering) that is shared by the claims:
`
`Claim 1
`
`Claim 12
`
`1. A computer-implemented
`method for transferring rights
`adapted to be associated with items
`
`12. A system for transferring
`rights adapted to be associated
`with items from a rights supplier
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`Claim 1
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`Claim 12
`
`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 at least one state variable
`based on the set of rights and used
`for determining a state of the
`created right.
`
`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.
`
`29. Dependent claims 11 and 22 also have parallel recitations and,
`
`therefore, they can be analyzed together. Each claim recites “generating a license
`
`including the created right, if the rights consumer is entitled to the right specified
`
`by the meta-right.” (GOOG-1002, 15:49-50; 16:26-28.)
`
`Claim Construction
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`30.
`
`I understand that the terms in the challenged claims must be given
`
`their broadest reasonable construction in light of the ‘280 patent’s specification,
`
`which means the words of the claims should be given the broadest possible
`
`meaning that is consistent with the statements of the specification.
`
`31. Meta-Rights: “Meta” means “self-referential.” (GOOG-1018.) The
`
`‘280 patent’s specification describes the purpose of meta-rights, examples of their
`
`use, and how they improve upon known DRM systems.
`
`(GOOG-1001, 2:14-16;
`
`2:36-39; 4:8-10; 5:39-6:17.) The specification describes meta-rights as extensions
`
`of usage rights and the ‘012 patent explicitly defines usage rights. (GOOG-1001,
`
`5:43-47, GOOG-1002, 53:48-51.) Under the broadest reasonable construction, and
`
`consistent with the specification, “meta-right” would have been understood by one
`
`of skill in the art to mean “a right about a right.”
`
`32. Rights: The ‘280 patent’s specification does not define the term
`
`“right(s),” but does describe it in the context of the alleged inventions and uses it
`
`interchangeably with “usage rights.” (GOOG-1001, 2:30-32; 2:36-37; 4:36-38.)
`
`The specification also uses “rights” to describe the combination of both meta-rights
`
`and usage rights.
`
`(GOOG-1001, 4:36-38.) Under
`
`the broadest
`
`reasonable
`
`construction, and consistent with the specification, “right(s)” would have been
`
`understood by one of ordinary skill in the art to mean “a usage right or a meta-
`
`right.”
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`33. License: The ‘280 patent’s specification describes a license as a
`
`granting of rights such as usage rights and meta-rights that allow a user to utilize
`
`and/or consume digital content in various ways. (GOOG-1001, 4:7-14; 5:13-17;
`
`8:27-31.) Under the broadest reasonable construction, and consistent with the
`
`specification, “license” would have been understood by one of ordinary skill in the
`
`art to mean “data embodying a grant of rights.”
`
`34.
`
`State variable: The ‘280 patent’s specification does not define the
`
`term “state variable,” but does describe it in the context of conditions for usage
`
`rights and explains that the dynamic, or changing, condition of a usage right can be
`
`tracked by state variables. (GOOG-1001, 7:66-8:16.) Further, “variable” is a well-
`
`known term in the field of computer science meaning “a named unit of storage that
`
`can be changed to any of a set of specified values during execution of a program.”
`
`(GOOG-1020.). Under the broadest reasonable construction, and consistent with
`
`the specification, “state variable” would have been understood by one of ordinary
`
`skill in the art to mean “a variable that tracks a changing condition of a right.”
`
`35.
`
`The ‘280 patent’s specification does not define the term “repository,”
`
`but does describe it in the context of a place where rights are stored. (GOOG-1001,
`
`9:18-22; 9:43-46.) It also incorporates the ‘012 patent’s discussion of repository,
`
`which provides an explicit definition for the term. (GOOG-1002, 53:23-27.) I also
`
`understand the PTAB provided a definition for “repository” in an IPR proceeding
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`for a patent related to the ‘012 patent. Because the ‘012 patent is incorporated by
`
`reference, I understand it discloses the ‘280 patent’s claimed repository, however
`
`the Board construes the term “repository” in this proceeding.
`
`ANALYSIS
`
`The ‘280 patent is Incidental to Financial
`Services and Not Directed to a Technological Invention
`
`36.
`
`I understand that in order to be eligible for CBM review, a patent must
`
`claim activities that are financial in nature, incidental to a financial activity, or
`
`complementary to a financial activity, and must not be directed towards a
`
`technological invention.
`
`37.
`
`I understand that to be directed to a technological invention, (1) the
`
`claimed subject matter as a whole must recite a technological feature that is novel
`
`and unobvious over the prior art and (2) it must solve a technical problem using a
`
`technical solution. It is my belief that the ‘280 patent satisfies neither prong and is
`
`not excluded from CBM review.
`
`38.
`
`First, it is my opinion that the ‘280 patent does not recite a novel or
`
`unobvious feature over the prior art. Claim 1 recites a “computer-implemented
`
`method for transferring rights adapted to be associated with items from a rights
`
`supplier to a rights consumer.” (GOOG-1001, 15:7-9.) Claim 12 recites a generic
`
`“system” for doing the same. (GOOG-1001, 15:52-54; 16:33-35.) The limitations
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`of the claims following the preamble merely implicate technologies and concepts
`
`that were well-known in 2001, such as rights, repositories and state variables, to
`
`accomplish the claimed transferring of rights and recite no novel technological
`
`feature.
`
`39.
`
`Each claim respectively recites methods and means for “obtaining,”
`
`“determining,” and “exercising” certain rights, entitlements and meta-rights for an
`
`item, such as digital content, which were well known to those of ordinary skill in
`
`the art at the time of the invention (see Discussion of ‘012 patent at ¶¶ 67-68); the
`
`specification acknowledges this. Figure 1 illustrates “a rights management system
`
`in accordance with the preferred embodiment.” (GOOG-1001, 3:15-16.) It is a
`
`“DRM system that can be used in connection with the preferred embodiment” and
`
`utilizes a web server in a generic client-server environment. (GOOG-1001, 3:55-
`
`58; Fig. 1.) The ‘280 patent emphasizes that the inventive concept is not limited to
`
`a particular technological implementation, even with regard to the construction and
`
`operation of the various servers themselves. (GOOG-1001, 9:28-32.)
`
`40.
`
`The specification further discusses a “rights language” called XrML
`
`for specifying claimed rights and meta-rights, which is nothing more than a
`
`description of rights embodied in a XML-based format, which was well known to
`
`those of ordinary skill in the art at the time of the invention. Exhibit 1003,
`
`published in 1998, describes the XML format.
`18
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`GOOG-1014
`Declaration of Benjamin Goldberg
`
`
`
`41.
`
`The claims as a whole also lack technological novelty and
`
`unobviousness. Claim 1 recites a “method for transferring rights adapted to be
`
`associated with items from a rights supplier to a rights consumer.” This overall
`
`concept is disclosed in the ‘012 patent (“[t]he usage rights define how the digital
`
`work may be used or further distributed by a processor of the digital work.”
`
`(GOOG-1002, 4:6-8.)) The three claim elements that follow, together, purport to
`
`accomplish the recited “transferring” by the steps of obtaining the rights,
`
`determining if the consumer is entitled to the rights and then exercising the rights if
`
`allowed. (GOOG-1001, 15:5-22.) Since the rights are nothing more than digital
`
`data, the entire process takes place within the context of mere creation and transfer
`
`of said digital data from one computing element to another, a well-known process
`
`in 2001 and well before. (GOOG-1002.)
`
`42. None of the claimed and disclosed computing elements, nor the
`
`communications network itself, is new or non-obviousness. Similarly, the manner
`
`in which the digital data comprising the usage rights is expressed (an XML-based
`
`language) also is not new. The claimed process ends as would be expected, with
`
`the transfer of digital data from one location to other locations by way of known
`
`computing and network elements.
`
`43.
`
`It is also my opinion that the ‘280 patent does not solve a technical
`
`problem using a technical solution. The 280 patent explains that the problem
`19
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`GOOG-1014
`Declaration of Benjamin Goldberg
`
`
`
`addressed by the alleged inventions of the ‘280 patent concerns a particular known
`
`“business model” for creating, distributing and using digital content involving a
`
`plurality of parties. (GOOG-1001, 2:24-26.)
`
`44.
`
`The ‘280 patent purports to solve the content owner’s problem and
`
`allow the content owner to control the use of its work in such a multi-tiered
`
`distribution model. This attempt
`
`to facilitate content owners’ control and
`
`commercial exploitation of their content through licensing of rights to content is
`
`not technical, but instead addresses the shortcomings of the existing “business
`
`model.”
`
`45.
`
`The proposed solution to the problem addressed by the ‘280 patent is
`
`the creation of a right that can itself be used to generate additional rights, a meta-
`
`right (GOOG-1001, 2:52-62), and the use of a state variable to keep track of the
`
`status of the additional right.
`
`(GOOG-1001, 2:62-65.) Neither is a technological
`
`solution because both can be accomplished by a human with pencil and paper. A
`
`human keeping a count of an event, like the number of times a movie is loaned,
`
`can play the role of a state variable. Thus, the business problem is solved with a
`
`business solution.
`
`46.
`
`Prescribing rights and conditions related to the licensing of content is
`
`not “technical” in nature, nor is it an improvement on existing computing
`
`technology. Instead, the ‘280 patent uses then-existing technology, including that
`20
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`GOOG-1014
`Declaration of Benjamin Goldberg
`
`
`
`disclosed in the ‘012 patent, to prescribe additional conditions or rights in licensing
`
`digital content. The ‘280 patent describes no unconventional software, computing
`
`equipment, communication network (e.g., Internet), tools or processing capabilities
`
`in 2001; it only presents an idea aimed at increasing the commercial exploitation of
`
`licensing digital content.
`
`47.
`
`The use of repositories to implement the abstract ideas or to construct
`
`the system of the apparatus claims simply results in the normal, expected and
`
`predictable result: enforcing usage rights and meta-rights and allowing one or more
`
`users to create new rights in a traditional licensing environment. The enforcement
`
`and granting of rights is an activity that does not require the use or implementation
`
`of anything other than known computing features included in the claims.
`
`48.
`
`Even the purportedly novel features of the ‘280 patent, meta-rights
`
`and state variables, are implemented using nothing more than simple software
`
`programming concepts giving the known processors the ability to create and parse
`
`XML elements such as those shown in Figure 4 of the ‘280 patent. Since all of the
`
`technological features of the claims were disclosed in the prior art ‘012 patent, or
`
`were well known in the art, the claims of the ‘280 patent cannot be considered to
`
`cover a solution to a technological problem. I understand, therefore, that the claims
`
`do not fall under the technological invention exception.
`
`21
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`GOOG-1014
`Declaration of Benjamin Goldberg
`
`
`
`Patent Eligible Subject Matter
`
`49.
`
`The challenged claims of the ‘280 patent are directed to the abstract
`
`concept of sharing rights using licenses and sub-licenses.
`
`50.
`
`The only technology implicated by the claims involves the use of
`
`known and general purpose computers, and thus does not limit the abstract idea of
`
`rights sharing and sublicensing in any meaningful way.
`
`51. Most practical applications involving the online licensing of digital
`
`content in 2001 would have involved a “computer-implemented method” or a
`
`“repository.” The ‘280 patent claims amount to nothing significantly more than an
`
`instruction to apply the abstract idea of transferring rights that grant one or more
`
`users access to digital content using some specified, generic process. I understand
`
`that this is not enough under current law to transform the ‘280 patent’s abstract
`
`ideas into a patent-eligible invention.
`
`52.
`
`Further,
`
`the challenged dependent claims only offer insignificant
`
`modifications. First, they update the claimed state variable. Second, they claim the
`
`generation of a license including the created right. The dependent claims refer to
`
`the same general and well known technology disclosed in the specification, such as
`
`state variables and licenses, to accomplish the same abstract idea of transferring
`
`rights as in the independent claim. (GOOG-1001, 7:43-45; 7:66-8:1)
`
`22
`
`GOOG-1014
`Declaration of Benjamin Goldberg
`
`
`
`53. One of ordinary skill in the art in 2001 would understand that a
`
`repository is insignificant, conventional and routine and adds no meaningful
`
`inventive concept to the claim because a repository was not a new machine at the
`
`time of the invention. In fact,
`
`its hardware and operation features are fully
`
`described in the ‘012 patent. (GOOG-1002, 12:41-17:45.) In my experience, a
`
`device with a communications port, processor, and a memory connected to the
`
`processor which stores a program for controlling the operation of the processor, as
`
`well as the use of encryption, digital certificates and nonces had been used as
`
`general components and features in computer systems since the 1980s and
`
`throughout the 1990s.
`
`54.
`
`The repository itself comprises computer components that are
`
`described in the most general terms by Figure 12 of the ‘012 patent:
`
`23
`
`GOOG-1014
`Declaration of Benjamin Goldberg
`
`
`
`Nothing in the description of the repository represents what I would have
`
`understood to be an inventive concept in 2001. (GOOG-1002, 14:7-27.) In my
`
`experience, components such as secured housing, processing means, storage
`
`systems, clocks, external interfaces, processor elements, processor memory,
`
`transactions, decryption, decompression, microprocessors, ROM and RAM were
`
`all well-known in 2001.
`
`55. Moreover, the ‘280 patent’s specification indicates that the invention
`
`can be implemented through “any type of device.” (GOOG-1001, 14:50-53.) This
`
`means to one of ordinary skill in the art that a repository could be nothing more
`
`than a collection of general purpose computer components.
`
`Prior Art Grounds
`
`56.
`
`It is my opinion that a person of ordinary skill i
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