UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________
`
`GOOGLE INC. AND APPLE INC.
`
`Petitioners
`
`v.
`
`CONTENTGUARD HOLDINGS, LLC
`
`Patent Owner
`
`U.S. Patent No. 7,774,280
`
`_________________________________
`
`Case CBM: CBM2015-000401
`
`_________________________________
`
`DECLARATION OF BENJAMIN GOLDBERG, PH.D. IN SUPPORT OF
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE AND
`OPPOSITION TO PATENT OWNER’S
`CONTINGENT MOTION TO AMEND
`
`1 Case No. CBM2015-00160
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________
`
`GOOGLE INC. AND APPLE INC.
`
`Petitioners
`
`v.
`
`CONTENTGUARD HOLDINGS, LLC
`
`Patent Owner
`
`U.S. Patent No. 7,774,280
`
`_________________________________
`
`Case CBM: CBM2015-000401
`
`_________________________________
`
`DECLARATION OF BENJAMIN GOLDBERG, PH.D. IN SUPPORT OF
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE AND
`OPPOSITION TO PATENT OWNER’S
`CONTINGENT MOTION TO AMEND
`
`1 Case No. CBM2015-00160
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`OVERVIEW
`
`1. I have been retained as an expert witness on behalf of Google Inc. for the
`
`above-captioned covered business method review. I am competent to make this
`
`declaration. I submitted a declaration in support of the Petition originally filed
`
`for this case (Exhibit 1014).
`
`2. I am being compensated for my time in connection with this covered business
`
`method review at my standard consulting rate, which is $450 per hour. My
`
`compensation is not dependent on the substance of my opinions, my testimony,
`
`or the outcome of this covered business method patent review.
`
`3. In preparing this Declaration, I have reviewed the ‘280 patent and the ‘012
`
`Stefik patent, Patent Owner’s Response, Patent Owner’s Contingent Motion to
`
`Amend, Dr. Martin’s declaration and the transcript of Dr. Martin’s deposition.
`
`4. 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 in the art in early 2001. I am familiar with the level of
`
`skill of a person of ordinary skill in the art with respect to the technology at
`
`issue in June, 2001, which I understand is the earliest possible priority date for
`
`the ‘280 patent.
`
`2
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`BACKGROUND AND QUALIFICATIONS
`
`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 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 from September 1995 through August 1998 and from
`
`September 2003 through August 2006.
`
`In addition, I held a one-year visiting
`
`professorship at the Institut National de Recherche en informatique et en
`
`Automatique (INRIA), a national laboratory in France, and was twice appointed
`
`to a month-long position as an 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 1984. My
`
`undergraduate degree from Williams College in 1982 was a Bachelor of Arts
`
`degree with highest honors in Mathematical Sciences.
`3
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`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.
`
`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.
`
`The Next-Set-of-Rights (NSOR) Grammar Element Controls Usage Rights
`Creation
`
`9. The following example illustrates how the NSOR element, as described in the
`
`U.S. Patent No. 5,634,012 (the “Stefik ‘012 patent” or “’012 patent”), can be
`
`used to grant the right to add, delete, or replace certain usage rights for a work
`
`after it is transported. Consider two digital works with the following rights:
`
`Work 1
`
`Work 2
`[Play] [Copy]
`[Loan] [Next-Set-of-Rights: (Delete:
`Copy Loan) (Add: Print)]
`10.If the Loan right for either work is exercised, the repository will make a copy of
`
`[Play] [Copy]
`[Loan]
`
`the content and then will create usage rights for that copy either according to
`4
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`the default rules (Work 1) or as specified in the Next-Set-of-Rights (Work 2).
`
`Thus, for Work 1, the repository will create Play, Copy, and Loan usage rights
`
`for the new copy of the work. This is because there is no NSOR element that
`
`modifies the default rules. See Ex. 1002 at 21:50-52.
`
`For Work 2,
`
`the
`
`repository will create for the new copy of the work a different set of usage
`
`rights: (i) it will create a Play usage right (same as the original copy), (ii) it will
`
`not create a Copy or Loan usage right for that copy (i.e., it will “delete” those
`
`usage rights in the copy) and (iii) it will add a “Print” usage right (not present in
`
`original copy). The different set of usage rights in the copy relative to the usage
`
`rights for the original digital work is directly attributable to actions taken by the
`
`repository when using the NSOR. In other words, the data in the NSOR directs
`
`the repository to: (i) delete the Copy and Loan usage rights from the copy (i.e.,
`
`by specifying “Delete: Copy Loan”) and (ii) add the Print usage right to the
`
`copy (i.e., “Add: Print”).
`
`11.The “Loan” usage right therefore specifies certain actions that can be taken on
`
`the content; namely, making a copy of the content and transferring it to another
`
`repository. For both Work 1 and Work 2, exercising the Loan right causes the
`
`same action to the content: a copy is made and loaned to another repository. But
`
`the usage rights that are created in the loaned copies are different because only
`
`one of the works has a Next-Set-of-Rights meta-right.
`5
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`12.Stefik shows that the usage right controls the actions being taken on the content
`
`(e.g., making a copy or loaning a copy of the digital work), while the NSOR is
`
`used exclusively to create or delete “usage rights” which are attached to the
`
`copy of the digital work. Changing the NSOR changes the usage rights that a
`
`repository can create or delete during a transaction; it does not change the
`
`action that gets taken on the content.
`
`A Participant in The System of the Stefik ‘012 Patent Can Choose Whether To
`Exercise an NSOR
`
`13.The Stefik ‘012 patent illustrates that a participant in its distribution scheme can
`
`choose whether to exercise an NSOR by selecting from multiple versions of the
`
`same usage right, and furthermore that use of the NSOR can be subject to
`
`conditions. See, e.g., Ex. 1002 at 27:15-33. For example, Stefik describes a
`
`digital work with two different versions of a “Loan” right:
`
`Ex. 1002 at 27:15-33; see also Paper 15 at 58-59 (discussing this example). In this
`
`example, the first “Loan” right has an NSOR element, as well as a Remaining-
`
`6
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`Copy-Rights element that can also be exercised to create rights (for the original
`
`copy owner), and it requires a daily $10 fee. Ex. 1002 at 27:27-30. The second
`
`“Loan” right has no NSOR element and no rights specified in the Remaining-
`
`Copy-Rights. Id. at 27:30-33. When this digital work is loaned to another
`
`repository, the NSOR element is only exercised if the first Loan right is selected
`
`and the $10 fee is paid. Id. at 27:27-30.The specified Remaining-Copy-Rights are
`
`also only created if the first Loan right is selected and the $10 fee is paid. Id. As
`
`this example shows, a participant in the system may choose to exercise a particular
`
`version of a usage right based on its associated NSOR element or its Remaining-
`
`Copy-Rights, and must meet the corresponding conditions to do so.
`
`Usage Rights Creation Can Be Controlled as a Work is Passed
`
`14.The NSOR element allows a publisher to control usage rights creation as a
`
`digital work is passed down a chain of repositories. For example, the publisher
`
`could supply a digital work with multiple versions of a Copy usage right, each
`
`with a different NSOR element bearing a different fee. The publisher could
`
`thereby exert control over usage rights creation as a digital work is passed down
`
`a chain of repositories, while permitting a degree of choice (as to which NSOR
`
`element to use) by downstream distributors and consumers. See Ex. 1014 ¶¶ 59,
`
`64, 68.
`
`15.Consider the following exemplary set of usage rights:
`7
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`(Play)
`
`(Copy Next-Set-of-Rights: (Delete: Copy)
`
`Fee: Per-Use: $1.00 To: Account-ID-567)
`
`(Copy Next-Set-of-Rights: (Delete: Copy Add: Print)
`
`Fee: Per-Use: $2.00 To: Account-ID-567)
`
`16.In this example, the user has a choice of two Copy rights. One allows the user
`
`to create a copy that only has a Play right and the other allows the user to create
`
`a copy that has the Play and Print rights. The user is not required to exercise
`
`each NSOR element; he can choose between creating a copy that has the Play
`
`right only or one that has both a Play and a Print right. Supplying a digital work
`
`with multiple versions of a usage right, each with a different NSOR element,
`
`allows a publisher to exert control over usage rights creation as a digital work is
`
`passed down a chain of repositories, while permitting a degree of choice by
`
`downstream distributors and consumers.
`
`The NSOR Is a Meta-Right
`
`17.Exercising the NSOR element only creates, destroys, or modifies usage rights;
`
`it does not result in actions to content. For example, if a “Copy” usage right has
`
`an NSOR element, exercising the Copy usage right results in an action to
`
`content (making a copy) while exercising the NSOR element results in creating
`
`or destroying usage rights for the copy of the digital work (the rights specified
`8
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`using “Add:” or “Delete:”). Because the NSOR element is “a right that, when
`
`exercised, creates or disposes of usage rights (or other meta-rights) but that is
`
`not itself a usage right because exercising a meta-right does not result in action
`
`to content,” it satisfies even ContentGuard’s alternative construction of a “meta-
`
`right.”
`
`18.Under ContentGuard’s proposed construction of “meta-right,” the only
`
`requirement is that meta-rights must create, dispose of, or alter usage rights.
`
`Under this definition, the NSOR is a meta-right. That the data representing the
`
`meta-right is stored in a common file structure with other data representing
`
`usage rights is of no consequence to this conclusion.
`
`NSOR Elements Cannot Be Exercised Unless All Conditions Are Satisfied,
`Including Those Specific to The NSOR and to The Requesting Repository
`
`19.The Stefik ‘012 patent teaches that to exercise a usage right with a NSOR, a
`
`repository must first determine whether all applicable conditions are met. For
`
`example, in the Loan example discussed above (Ex. 1002 at 27:15-33), a $10
`
`fee must be paid to exercise the first Loan right. If the $10 is not paid, the
`
`requester can still borrow the work (using the second Loan right), but different
`
`rights are created (at both the original copy owner’s and the requester’s
`
`repositories). Id. at 27:26-33. This example shows that compliance with the $10
`
`fee condition controls whether the NSOR element is exercised. See id. Ex.
`
`9
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`1014, ¶ 76. Similarly, if a Loan right contains a “Security Level” parameter, the
`
`Loan right cannot be exercised unless the requesting repository meets the
`
`minimum security level requirement. See Ex. 1002 at 26:16-28 (discussing
`
`“SC:3” element). As Stefik explains, during a transaction, a server repository
`
`validates all conditions on the exercise of a usage right, including any security
`
`level conditions applicable to the consumer repository. See, e.g., id. at 7:23-29,
`
`27:15-33. In the “SC:3” example, “Copy or transfer operations can take place
`
`only with repositories of security level three or greater.” Ex. 1002 at 26:28-36.
`
`Unless the server repository determines that the consumer repository is entitled
`
`to the right because it has sufficient security, any usage rights specified by an
`
`NSOR element associated with the Copy or Transfer right will not be created.
`
`See Ex. 1014, ¶ 77.
`
`ContentGuard’s Proposed Substitute Claim 37
`
`20.I understand that, in its Contingent Motion to Amend, ContentGuard proposes
`
`to substitute claim 37, reproduced below, for claim 1 (new text that would be
`
`introduced by the proposed amendment is underlined):
`
`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
`10
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`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.
`
`ContentGuard’s Patent Applications Establish that Meta-Rights Create or Dispose
`of Other Rights
`
`21.For the purpose of arguing that its patent applications disclose the above-
`
`indicated subject matter it seeks to add to the claim, ContentGuard cites various
`
`passages in its patent applications and asserts that they are “explaining that
`
`meta-rights are different from usage rights because exercising meta-right does
`
`not act on content.” Paper 16 at 4-5. Notably, however, one of these cited
`
`passages (in Provisional Patent Application 60/331,624) states: “[w]hen
`
`exercising rights, actions result, for example viewing or using content.” Ex.
`
`11
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`2013 at 2 (emphasis in original). By using the generic term “rights,” this
`
`sentence suggests that meta-rights can result in actions to content.
`
`A Person Of Ordinary Skill Would Have Been Motivated To Adapt Stefik To
`Exercise The NSOR In A Separate Transaction
`
`22.As I already noted in my previous declaration, there are only two options for
`
`when the NSOR might be exercised relative to when a usage right is exercised:
`
`at the same time or at a different time. Ex. 1014 ¶ 98. A person of ordinary skill
`
`in the art would have recognized that segmenting a transaction into discrete
`
`actions was a conventional technique in Internet-based transactions, and it
`
`would have been common sense to perform those actions at different times. Ex.
`
`1014 ¶¶ 98-99. Adjusting the timing of actions so that the NSOR element was
`
`exercised separately from the “Copy” or “Transfer” action thus would have
`
`been one of a finite number of identified, predictable solutions that was readily
`
`within the grasp of the skilled person. Ex. 1014 ¶¶ 98-99.
`
`Importantly,
`
`exercising the NSOR at a different time than the usage right is exercised would
`
`have no practical consequences for operation of the Stefik scheme; the NSOR
`
`would still be used according to its established function disclosed in Stefik, with
`
`only the timing and/or circumstances of use being modified.
`
`23.Stefik discloses that usage rights can be combined to create complex
`
`distribution channels, and it describes numerous distribution models supported
`
`12
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`by usage rights. Ex. 1002 at 45:20-24. For example, Stefik shows a scenario
`
`where a separately issued “distribution license” is used to control whether
`
`downstream parties can make copies of a digital work. Ex. 1002 at 46:1-44.
`
`Parties with such a license can make copies, while parties that do not have the
`
`distribution license cannot do so. Id. at 46:20-27, 46:40-44; see also id. at
`
`26:46-52 (showing analogous usage rights statements). Stefik therefore suggests
`
`to the skilled person that it is desirable to manage rights at one level of a
`
`distribution chain in order to control rights granted at a subsequent, downstream
`
`level of the chain.
`
`24.Stefik also describes many other examples of using licenses and shows various
`
`combinations of usage rights to control which distributors can create copies of a
`
`digital work and sell them to consumers and whether additional fees can be
`
`added to the digital works. E.g., Ex. 1002 at 45:45 (“Paid Distributors”), 47:14
`
`(“Distribution Trees”), 47:65 (“Limited Reuse”), 48:18 (“Commercial
`
`Libraries”). Stefik explains that these distribution scenarios permit “fine grained
`
`control of the rights and fees.” Ex. 1002 at 48:6-7. Stefik therefore expressly
`
`provides a way to solve the same problem the ’280 patent purports to address,
`
`namely allowing authors to maintain adequate rights control in multi-level
`
`distribution schemes so they get paid for the use of their work. Ex. 1001 at
`
`2:22-48; see also Ex. 1033 [Martin Dep. Tr.] at 124:13-125:1 (“Distribution
`13
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`Trees” model is a type of multi-tiered distribution), 126:16-23 (creator of a
`
`work “is able to exert control over that work further down the distribution
`
`chain”); 141:16-21 (same, for publisher). To further these goals identified in
`
`Stefik, a skilled person would have found it obvious to exercise the NSOR
`
`element separately from when usage rights are exercised.
`
`Stefik Suggests Using Rights that can be Exercised Separately from an Action To
`Content
`
`25.Stefik shows use of an “Embed” usage right to enable a distributor or retailer to
`
`add its own fee conditions to a digital work. Ex. 1002 at 41:54-56 (“An embed
`
`transaction is a request . . . to add a shell d-block [to a digital work] to enable
`
`the adding of fees by a distributor of the work.”); id. at 26:6-10 (“For example,
`
`a 5% markup means that a fee of 5% of cumulative fee so far will be allocated
`
`to the distributor. . . . It is typically used in a shell provided by a distributor.”).
`
`The Embed right is exercised by creating a new fee condition and adding it to
`
`an existing digital work. When the Embed right is exercised in this manner,
`
`there is no action on the content.
`
`26.Stefik also explains how the Embed right can be used to add and remove usage
`
`fee conditions. Altering conditions is one way a meta-right can modify a usage
`
`right. Ex. 1001 at 5:56-57. In Stefik’s Paid Distributors scenario, the creator
`
`“grants an Embed right, so that anyone can add shells to have fees paid to
`
`14
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`themselves.” Ex. 1002 at 45:56-58. The distributor can add a shell specifying
`
`that fees are to be paid back to that distributor. Id. at 45:59-60. The consumer
`
`“can add his own shell with fees to be paid to himself.” Id. at 45:67. This
`
`distribution example shows how fee conditions can be added and removed from
`
`a digital work independent of any action to the content.
`
`27.Stefik also shows that the Embed right can include an NSOR element. Ex. 1002
`
`at 21:3-33, 41:41-46; Fig. 15 (1507). Just as the Embed transaction allows fees
`
`to be added without any action to the content itself, it can allow adding usage
`
`rights pursuant to an NSOR element as well. For example, a digital work could
`
`include the following rights:
`
`(Copy)
`
`(Embed Next-Set-of-Rights: (Add: Play Delete: Embed Copy) Fee: $1)
`
`(Embed Next-Set-of-Rights: (Add: Play (Loan 2) Delete: Embed Copy) Fee:
`
`$2).
`
`Exercising one of the Embed rights above would change the usage rights attached
`
`to the content, but it would not result in an action on the content itself. Thus, Stefik
`
`teaches that it is advantageous to grant a right to create new usage rights that can
`
`be exercised separately from an action to content, and teaches a process for doing
`
`so.
`
`15
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
`
`
`
`CONCLUSION
`
`28.In signing this declaration, I recognize that it will be filed as evidence in a
`
`contested proceeding before the Patent Trial and Appeal Board of the United
`
`States Patent and Trademark Office. I also recognize that I may be subject to
`
`cross-examination in the case and that cross-examination will take place within
`
`the United States. If cross-examination is required, I agree to appear within the
`
`United States during the time allotted and subject myself to cross-examination.
`
`29.I hereby declare that all the statements made herein of my own knowledge are
`
`true and that all statements made on information and belief are believed to be
`
`true, and further that these statements were made with the knowledge that
`
`willful false statements and the like so made are punishable by fine or
`
`imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`Executed on December 21, 2015
`in Palo Alto, California
`
`Benjamin Goldberg, Ph.D.
`
`16
`
`Exhibit 1032
`Declaration of Benjamin Goldberg
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