Paper No. 22
`
`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’ RESPONSE TO MOTION TO AMEND
`
`1 Case No. CBM2015-00160
`
`
`
`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’ RESPONSE TO MOTION TO AMEND
`
`1 Case No. CBM2015-00160
`
`
`
`Table of Contents
`
`I.
`
`II.
`
`Introduction......................................................................................................1
`
`The Amendment Is Not Properly Presented in this Proceeding......................1
`
`III.
`
`The Proposed Amended Claim Is Not Patentable Over Stefik .......................2
`
`A.
`
`The Stefik Next-Set-Of-Rights Element Satisfies The “Exercising”
`Step Of Proposed Substitute Claim 37..................................................3
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`The NSOR Controls Usage Rights Creation...............................4
`
`A Participant In The System Can Choose Whether To Exercise
`An NSOR ....................................................................................7
`
`The NSOR Element Can Specify Particular Rights By Itself ....9
`
`The NSOR Is Not “Itself” A Usage Right ................................10
`
`The NSOR Does Not “Result In” Actions To Content.............10
`
`B.
`
`C.
`
`Stefik Discloses The “Determining” Step Of Proposed Substitute
`Claim 37 ..............................................................................................13
`
`Stefik Renders The Separate Exercise Of A Meta-Right And A Usage
`Right Obvious......................................................................................15
`
`IV. ContentGuard Has Failed To Demonstrate Written Description Support For
`The Proposed Substitute Claim .....................................................................19
`
`V.
`
`The Proposed Substitute Claim Is Not “Substantially Identical” To Original
`Claim 1...........................................................................................................22
`
`VI. Conclusion .....................................................................................................25
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc)..........................................................19
`
`Corning Optical Comm’ns RF, LLC, v. PPC Broadband, Inc.,
`IPR2014-00441, Paper 19 at 4 (PTAB Oct. 30, 2014).................................19, 20
`
`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027, Paper 26 at 8 (PTAB June 11, 2013) ......................................19
`
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) ............................................................................24
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)............................................................................................16
`
`Nichia Corp. v. Emcore Corp.,
`IPR2012-00005, Paper 27 at 4 (PTAB June 3, 2014) .......................................20
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc)..........................................................24
`
`Statutes
`
`35 U.S.C. § 120........................................................................................................19
`
`Rules
`
`37 C.F.R. § 42.121(a)(2)......................................................................................2, 25
`
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) .........................................................23
`
`ii
`
`
`
`EXHIBIT LIST
`
`Petitioners’ Exhibit #
`1032
`1033
`
`Description
`Declaration of Benjamin Goldberg, Ph.D.
`Deposition Transcript of David Martin, Ph.D.
`
`iii
`
`
`
`I.
`
`Introduction
`
`Patent Owner ContentGuard’s motion to amend should be denied for three
`
`reasons: (i) it does not demonstrate patentability over the Stefik ’012 prior art
`
`reference cited in the Board’s Institution Decision, (ii) it does not establish that the
`
`proposed substitute claim meets the written description requirement, and
`
`(iii) ContentGuard effectively admits the amendments are not prompted by any
`
`issue of patentability presented in this proceeding. ContentGuard does not present
`
`separate patentability arguments for claims 5 and 11, so the proposed amendment
`
`is futile for those claims as well.
`
`II.
`
`The Amendment Is Not Properly Presented in this Proceeding
`
`In its motion to amend, ContentGuard effectively admits the amendments
`
`are not responsive to any issue of patentability raised in this proceeding. First,
`
`ContentGuard admits the terms “content” and “usage rights” being added to claim
`
`1 simply makes explicit what is already implicit in the claims. See, e.g., Paper 16 at
`
`3. Its proposed amendment that a “meta-right” specify “a “usage right or another
`
`meta-right” likewise is admitted to simply make explicit the meaning of the
`
`generic term “right” in the claim. Id. (“The parties are in agreement that “right”
`
`would be understood as generic for usage right or meta-right.”). And the last
`
`amendment it proposes, adding the phrase “wherein the meta-right is not itself a
`
`usage right because exercising the meta-right does not result in action to the
`
`1
`
`
`
`content,” is again portrayed as not having any effect on the scope or meaning of
`
`the claim. Id. at 24-25.
`
`Notably absent in the motion to amend is any explanation how the proposed
`
`amendments address and resolve the patentability issues identified by the Board to
`
`that exist for the claims. This failure is fatal to the motion as it does not in any
`
`manner advance the resolution of the patentability issues raised for claim 1. See 37
`
`C.F.R. § 42.121(a)(2) (“A motion to amend may be denied where: (i) The
`
`amendment does not respond to a ground of unpatentability involved in the trial”).
`
`And, as explained in more depth below, the amendments in fact do not resolve the
`
`patentability deficiencies of the claims over the Stefik ’012 patent.
`
`III. The Proposed Amended Claim Is Not Patentable Over Stefik
`
`ContentGuard’s motion fails to demonstrate the amended claim is patentable
`
`over the closest known prior art. In particular, it fails to demonstrate the claims are
`
`patentable over the Stefik ’012 reference, which is the basis of the unpatentability
`
`grounds in the Institution Decision.2
`
`2 Petitioners do not address Patent Owner’s assertions of patentability over the
`
`other references addressed in the motion to amend, but reserve their right to rely on
`
`those references in other legal proceedings as prior art against any claim of the
`
`’280 patent, including the proposed substitute claim (if entered).
`
`2
`
`
`
`The modifications set forth in ContentGuard’s proposed amendment do not
`
`distinguish Stefik. The additions to the “obtaining” step (“of content,” “usage” and
`
`“or another meta-right”) are admitted to not alter that step in any manner. See
`
`Paper 16 at 3, 9-11. And, as set forth below, Stefik discloses and suggests methods
`
`that fully satisfy the amended “exercising” step (including the limitation “and
`
`wherein the meta-right is not itself a usage right because exercising the meta-right
`
`does not result in action to the content”). The amended claim thus remains
`
`unpatentable over Stefik.
`
`A.
`
`The Stefik Next-Set-Of-Rights Element Satisfies The “Exercising”
`Step Of Proposed Substitute Claim 37
`
`The operation of the “Next-Set-of-Rights” (“NSOR”) element, as described
`
`in Stefik, meets the “exercising” step of proposed substitute claim 37. In particular,
`
`as the Board previously found, the NSOR element is a meta-right because it is a
`
`right that one has to generate, manipulate, modify, dispose of or otherwise derive
`
`another right. See Paper 9 at 35-36. The added requirement that a “meta-right” is
`
`not a “usage right” and exercising it does not result in an action to content has no
`
`effect on the status of the NSOR as a “meta-right”—the NSOR is plainly not a
`
`“usage right” and exercising it does not result in actions to content, but instead
`
`results in creation, deletion or modification of “usage rights.”
`
`There is no evidence whatsoever that the NSOR is “itself” a usage right. Nor
`
`is there any evidence that using the Stefik NSOR “result[s] in”—i.e., causes—an
`
`3
`
`
`
`action to content. Thus, ContentGuard’s proposal to add to the claim an express
`
`requirement that “the meta-right is not itself a usage right because exercising a
`
`meta-right does not result in action to the content” has no bearing on the identified
`
`patentability deficiency of claim 1 over Stefik.
`
`Importantly, even as amended, the claim would not require a meta-right to
`
`be exercised separately from a usage right. Even if it did, separating the exercise of
`
`a meta-right from that of a usage right would have been an obvious modification to
`
`Stefik for a person of ordinary skill in the art in 2001. See Ex. 1014 ¶¶ 96-99;
`
`Paper 9 at 40-42.
`
`1.
`
`The NSOR Controls Usage Rights Creation
`
`The NSOR element is used by repositories in the Stefik scheme to control
`
`what usage rights the repository can create, delete, or modify for a work after it is
`
`transported. See Ex. 1002 at 21:47-59; Ex. 1014 ¶ 64. If the NSOR does not
`
`specify the rights for the next copy of the work, the new copy’s rights will be the
`
`same as those of the original copy. Ex. 1002 at 21:50-52; Ex. 1014 ¶ 64. If the
`
`NSOR does specify rights, those usage rights will be added, deleted, or replaced
`
`when the NSOR is exercised. Ex. 1002 at 21:47-59.
`
`A simple example illustrates how the NSOR element can be used by a
`
`publisher to specifically grant the right to add, delete, or replace certain usage
`
`rights. Consider two digital works with the following rights:
`
`4
`
`
`
`Work 1
`
`Work 2
`[Play] [Copy]
`[Loan] [Next-Set-of-Rights: (Delete:
`Copy Loan) (Add: Print)]
`In this example, if the Loan right for either work is exercised, the repository
`
`[Play] [Copy]
`[Loan]
`
`will make a copy of the content and then will create usage rights for that copy
`
`either according to the default rules (Work 1) or as specified in the NSOR (Work
`
`2). Ex. 1032 ¶ 9. 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 id.; 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). Importantly, 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”). See Ex. 1032 ¶ 9; see also Ex. 1014 ¶¶ 64-66, 72.
`
`The “Loan” usage right thus specifies certain actions that can be taken on the
`
`content; namely, making a copy of the content and transferring it to another
`
`5
`
`
`
`repository. Ex. 1032 ¶ 10. 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. Id. 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. Id.
`
`Exercising the NSOR is what results in addition of the “Print” usage right that
`
`would not be created by exercising the Loan usage right, and it is the NSOR which
`
`causes deletion of the “Copy” and “Loan” usage rights in the copy of the digital
`
`work. This can be easily appreciated by recognizing if there is no NSOR (i.e., as in
`
`the Work 1 example), the Loan usage right will create the copy with the same set
`
`of usage rights as the original.
`
`Because exercising the NSOR element determines what usage rights a
`
`repository can generate during a transaction, it is “a right that one has to generate,
`
`manipulate, modify, dispose of or otherwise derive another right,” which satisfies
`
`the Board’s construction. For the same reasons, the NSOR element is also “a right
`
`about a right” (the construction of “meta-right” proposed in the Petition) and “a
`
`right that, when exercised, creates or disposes of usage rights (or other meta-
`
`rights)” (a requirement of ContentGuard’s proposed construction).
`
`ContentGuard nonetheless argues the NSOR element must be considered a
`
`“usage right” because the NSOR is consulted during the exercise of the Loan usage
`
`right. Paper 15 at 53. But in its arguments, ContentGuard improperly conflates the
`
`6
`
`
`
`use of the NSOR element with the use of the associated Loan usage right. What
`
`Stefik actually shows is that exercising 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 exercising the NSOR creates or deletes “usage rights” which are attached to
`
`the copy of the digital work. Ex. 1032 ¶ 11. Both are exercised, for different
`
`purposes, as Petitioners and Dr. Goldberg have clearly and consistently explained.
`
`2.
`
`A Participant In The System Can Choose Whether To Exercise
`An NSOR
`
`ContentGuard contends an NSOR is not a “right” (meta or usage) because it
`
`is “unconditionally applied” and the user has no choice about whether to use it.
`
`Paper 15 at 49, 52. But Stefik 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 the 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:
`
`7
`
`
`
`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-
`
`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-
`
`30; see also Ex. 1014 ¶ 76; Ex. 1032 ¶ 13; Ex. 1033 at 113:12-14 (confirming the
`
`first Loan right costs $10 to exercise). The same is true for Remaining-Copy-
`
`Rights. 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. Ex.
`
`1032 ¶ 13.
`
`In addition, the NSOR element allows a publisher to control usage rights
`
`creation as a digital work is passed down a chain of repositories. See Ex. 1014
`
`¶ 64. 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.
`
`Ex. 1032 ¶¶ 14-16. The publisher could thereby exert control over usage rights
`
`creation as a digital work is passed down a chain of repositories, while permitting a
`
`8
`
`
`
`degree of choice (as to which NSOR element to use) by downstream distributors
`
`and consumers. Id.; see also Ex. 1002 at 27:1-28:3; Ex. 1014 ¶¶ 59, 64, 68.
`
`3.
`
`The NSOR Element Can Specify Particular Rights By Itself
`
`ContentGuard argues that “an NSOR parameter cannot even be interpreted
`
`as a separate right all by itself.” Paper 15 at 54. The point of this argument is
`
`unclear, since Dr. Martin admitted the claims do not require that a meta-right has
`
`to be interpreted all by itself. Ex. 1033 at 150:23-151:7. ContentGuard nevertheless
`
`proceeds to discuss an embodiment of Stefik in which the NSOR parameter is
`
`unspecified. Paper 15 at 54. But the embodiments of greater interest (because they
`
`use the NSOR to create rights) are those in which the NSOR parameter is
`
`specified. In those embodiments the NSOR determines usage rights that get added
`
`or created, without reference to other usage rights.
`
`The Board recognized this in its Institution Decision. As it correctly found,
`
`Stefik teaches that the NSOR grammar element can be implemented by including
`
`key words in the NSOR, including “Add.” Paper 9 at 33-34, 37. Indeed, Stefik
`
`clearly explains this, stating: “Versions of rights after Add: are added to the current
`
`set of rights. Ex. 1002 at 21:53-54. “Add” precisely identifies rights may be
`
`generated and do so without reference to other usage rights.
`
`9
`
`
`
`4.
`
`The NSOR Is Not “Itself” A Usage Right
`
`ContentGuard’s proposal to require that a meta-right is “not itself a usage
`
`right” makes no difference to patentability. Importantly, there is no evidence in the
`
`record that the NSOR is “itself” a usage right. Certainly, ContentGuard has never
`
`suggested this is the case. In fact, ContentGuard’s expert acknowledged the NSOR
`
`exists as a discrete and distinct field within a data structure that also includes the
`
`data representing the usage rights. See, e.g., Ex. 2009 ¶¶ 104-105.
`
`ContentGuard argues instead that the NSOR is “part of the data defining a
`
`usage right,” Paper 16 at 10 (emphasis added). But ContentGuard’s proposed
`
`amendment does not preclude a meta-right from being “part of the data defining a
`
`usage right.” It says, instead, that the meta-right is not itself a usage right. Since no
`
`party to this proceeding contends that the NSOR is one and the same thing as a
`
`usage right, ContentGuard’s proposed carve-out has no effect on whether Stefik
`
`anticipates or renders obvious the ’280 claims at issue.
`
`5.
`
`The NSOR Does Not “Result In” Actions To Content
`
`The proposed amended claim language “because exercising the meta-right
`
`does not result in action to the content” also fails to distinguish proposed substitute
`
`claim 37 from Stefik. There is no evidence that using a Stefik NSOR “result[s]
`
`in”—i.e., causes—an action to content. Critically, ContentGuard’s expert Dr.
`
`Martin offered no opinion in his declaration that using the NSOR results in an
`
`10
`
`
`
`action to content. See Ex. 1033 at 149:22-150:6. Dr. Martin also agreed the NSOR
`
`does not cause a usage right to be exercised. Id. at 148:19-24 (“… I guess I would
`
`agree that the presence of a next set of rights parameter does not cause a particular
`
`usage right to be exercised.”).
`
`Instead, the NSOR element creates, destroys, or modifies usage rights, while
`
`the usage right results in an action to content. For example, if a Copy 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 (e.g., by specifying rights using “Add:” or “Delete:”). Ex.
`
`1032 ¶ 17. ContentGuard’s contention that the NSOR “cannot be exercised without
`
`resulting in action to the content” (Paper 16 at 10-11) obscures the fact that it is the
`
`usage right that results in action to content, while the NSOR results in action to
`
`rights.
`
`To the extent there is any causal relationship between use of the NSOR and
`
`exercise of a usage right, it is that the usage right can trigger the exercising of the
`
`NSOR, not the other way around. This is how ContentGuard itself describes the
`
`system, stating, for example, that “the only way to perform the NSOR parameter’s
`
`instructions is to begin by exercising a usage right such as transfer, copy, or loan”
`
`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.” Paper
`
`11
`
`
`
`16 at 10; Paper 15 at 53 (emphasis added in both); see also Ex. 1033 at 148:10-18.
`
`Whether the usage right causes the system to consult the NSOR is immaterial to
`
`the proposed substitute claim. That sequence is not one in which exercising the
`
`NSOR “result[s] in action to the content.”
`
`At his deposition, Dr. Martin seemed to attribute relevance to the notion that
`
`the NSOR is used “in the context of exercising a usage right that does result in
`
`actions to content.” Ex. 1033 at 150:3-6. But, again, this cannot distinguish the
`
`claims at issue from the NSOR in Stefik, because no claim limitation bars a meta-
`
`right from operating “in the context of” a usage right, or otherwise being used
`
`contemporaneously with a usage right. The question, under ContentGuard’s
`
`proposed construction, is whether exercising the NSOR will “result in” action to
`
`content. The evidence demonstrates it does not.
`
`To summarize, there is no evidence in the record establishing that the
`
`exercise of the NSOR results in actions to content, so the proposed amendment
`
`does not help ContentGuard to distinguish Stefik. Whether exercising the usage
`
`right results in exercising the NSOR is irrelevant, as is whether the NSOR is
`
`exercised contemporaneously with actions that are being taken on content. Because
`
`there is no evidence that using the NSOR “results in” an action to content, the
`
`NSOR is not distinguishable from a meta-right in ContentGuard’s proposed
`
`substitute claim.
`
`12
`
`
`
`B.
`
`Stefik Discloses The “Determining” Step Of Proposed Substitute
`Claim 37
`
`ContentGuard’s argument that Stefik does not disclose the “determining”
`
`step (Paper 16 at 11) is incorrect on multiple grounds.
`
`First, ContentGuard argues that Stefik does not describe a mechanism for a
`
`repository to evaluate whether the recipient is entitled to receive the rights
`
`identified in an NSOR parameter. But, to exercise a usage right with a
`
`corresponding NSOR element, the repository must first determine whether all
`
`conditions are met. A particularly telling example is the one in which two Loan
`
`rights, only one of which has an NSOR element, are available, where one requires
`
`payment of a $10 fee and the other is not subject to a fee. Ex. 1002 at 27:15-33. In
`
`this example, a $10 fee must be paid to exercise the Loan right that includes the
`
`NSOR element. If the $10 is not paid, the user can still borrow the work, but he
`
`cannot exercise the particular NSOR element. Id. at 27:30-31. The $10 fee
`
`condition controls whether the NSOR element can be exercised. Id. at 27:26-33;
`
`Ex. 1032 ¶ 19. 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); Ex. 1032 ¶ 19.
`
`Second, ContentGuard asserts that the server repository checks conditions of
`
`its own usage rights to determine if it can perform a requested transaction. But the
`
`13
`
`
`
`“determining” claim step does not prohibit checking conditions of usage rights to
`
`determine whether a recipient is entitled to the rights specified in the NSOR.
`
`ContentGuard’s argument presumes the existence of a limitation that does not
`
`appear in the claim text or any claim construction at issue.
`
`Third, ContentGuard contends that Stefik’s disclosure of checking security
`
`conditions is somehow different from checking the requestor’s entitlement to
`
`receive the rights specified by the NSOR parameter. But this procedure checks a
`
`characteristic of the requesting repository to determine whether it is entitled to
`
`receive the rights specified in the NSOR. See, e.g., Ex. 1002 at 26:28-36 (“Copy or
`
`transfer operations can take place only with repositories of security level three or
`
`greater.”). The consumer repository will be deemed entitled to the rights specified
`
`by the NSOR element only if the server repository determines that the consumer
`
`repository has sufficient security. Otherwise, those rights will not be created. Ex.
`
`1032 ¶ 19.
`
`Fourth, ContentGuard claims that Stefik’s decision-making procedure for
`
`performing a transaction is completely independent of whatever rights are
`
`specified in the NSOR field. To the extent this is meant as a distinction from the
`
`proposed substitute claim, it has no basis in the claim text or claim constructions.
`
`14
`
`
`
`C.
`
`Stefik Renders The Separate Exercise Of A Meta-Right And A
`Usage Right Obvious
`
`ContentGuard’s proposed substitute claim 37 does not require the meta-right
`
`to be exercised separately from a usage right. As discussed above, the only new
`
`restrictions it adds on the meta-right are that it “is not itself a usage right” and
`
`“exercising the meta-right does not result in action to the content.” A meta-right
`
`could be exercised together with (or immediately after) a usage right without
`
`running afoul of either of these restrictions.
`
`Even if the proposed substitute claim did require a meta-right to be exercised
`
`separately from a usage right, this claim would have been obvious in view of
`
`Stefik. See Paper 9 at 41-42 (finding original claim obvious if interpreted to require
`
`separate exercise of meta-right and usage right). This is not a case where there are
`
`a multitude of choices with different consequences. Instead, 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 been experienced in segmenting a transaction
`
`into a set of actions, and it would have been common sense to perform those
`
`actions at different times. Ex. 1014 ¶¶ 98-99. Adjusting the timing so that the
`
`NSOR element was exercised separately from an action such as “Copy” or
`
`“Transfer” thus would have been one of “a finite number of identified, predictable
`
`solutions” that was readily within the grasp of a skilled person. Ex. 1014 ¶¶ 98-99;
`
`15
`
`
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); see also id. at 417 (“If a
`
`person of ordinary skill can implement a predictable variation, § 103 likely bars its
`
`patentability.”). 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. Ex. 1032 ¶ 22; KSR, 550 U.S. at 417 (nonobviousness requires “more
`
`than the predictable use of prior art elements according to their established
`
`functions”). This means the same conditions could be applied for determining the
`
`consumer’s entitlement to the right, and all claim steps are disclosed or obvious.
`
`Nonetheless, ContentGuard argues there is no motivation to adapt Stefik to
`
`include “meta-rights that are distinct from usage rights and are exercisable to
`
`create new rights without resulting in action to digital content.” Paper 16 at 20-21.
`
`But this argument incorrectly paraphrases the amended claim language, which only
`
`requires that the meta-right is not “itself” a usage right and does not “result in”
`
`actions to content. See §§ III.A.4-A.5, above. To the extent the proposed substitute
`
`claim is nonetheless read to require separate exercise of a usage right and meta-
`
`right, one of ordinary skill would have had a reason to pursue that known option
`
`when contemplating ways to exercise the meta-right, as the Board previously
`
`found. Paper 9 at 42.
`
`16
`
`
`
`Stefik provides several reasons to make this modification. Stefik discloses
`
`that the usage rights can be combined to create complex distribution channels, and
`
`it describes numerous distribution models supported 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 the 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. Ex. 1032 ¶ 23; see also Ex. 1033 at
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`126:16-23 (creator of a work “is able to exert control over that work further down
`
`the distribution chain”).
`
`Stefik also describes many other examples of using licenses and shows
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`various combinations of usage rights to control which distributors can create copies
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`of a digital work and sell them to consumers and whether additional fees can be
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`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
`
`17
`
`
`
`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 use of their work. Ex. 1001 at 2:22-48; see also Ex. 1033 at
`
`124:13-125:1 (“Distribution 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, a person of ordinary skill would have found it
`
`obvious to exercise the NSOR element separately from a usage right. Ex. 1032
`
`¶ 24. As the Stefik specification itself explains, that “those skilled in the art” would
`
`have made “various alternative, modifications, variations or improvements” of the
`
`disclosed embodiments. Ex. 1002 at 52:1-6.
`
`Stefik also teaches the desirability and feasibility of adding, removing, or
`
`modifying the rights for a digital work without any action on content. For example,
`
`Stefik discloses an “Embed” usage right that allows a distributor or retailer to add
`
`its own fees to a digital work. Ex. 1002 at 41:54-56; id. at 26:6-10. When Stefik’s
`
`Embed usage right is exercised to add a new fee condition, there is no action on the
`
`content. Ex. 1032 ¶ 25-26. (This is very similar to a meta-right that modifies
`
`conditions on a usage right, which Dr. Martin acknowledged was part of the ’280
`
`patent scheme. Ex. 1033 at 61:16-62:14.) Stefik thus suggests using rights that can
`
`be exercised separately from an action to content to change other rights, and
`
`18
`
`
`
`teaches a process for doing so. The Embed usage right with an NSOR element
`
`could also be exercised to add usage rights without performing an action on
`
`content. Ex. 1032 ¶¶ 25-27.
`
`IV. ContentGuard Has Failed To Demonstrate Written Description
`Support For The Proposed Substitute Claim
`
`The motion to amend should be denied for the independent reason that
`
`Petitioner has not shown that the proposed substitute claim is supported by the
`
`written description of the ’280 patent or applications to which it claims benefit
`
`under 35 U.S.C. § 120.
`
`It is Petitioner’s burden to demonstrate written description support for the
`
`proposed substitute claim. Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027,
`
`Paper 26 at 8 (PTAB June 11, 2013). The written description doctrine requires that
`
`the original disclosure of the application relied upon reasonably conveys to a
`
`person of ordinary skill in the art that the inventor had possession of the claimed
`
`subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
`
`1336, 1351 (Fed. Cir. 2010) (en banc). This obligation is not limited to the new
`
`language Petitioner proposes to add, but must be satisfied for the entirety of the
`
`amended claim. Corning Optical Comm’ns RF, LLC, v. PPC Broadband, Inc.,
`
`IPR2014-00441, Paper 19 at 4 (PTAB Oct. 30, 2014) (“[I]t is inadequate to show
`
`written description support for just the feature added by the proposed substitute
`
`19
`
`
`
`claim. Instead, the Patent Owner must show written description support for the
`
`entire claim.”).
`
`ContentGuard’s motion to amend includes only a cursory written description
`
`discussion. Paper 16 at 3-5. Its entire analysis of each of the relevant patent
`
`applications consists of a bare assertion that support for the proposed substitute
`
`claim can be found in the application, followed by a string of citations with short
`
`parenthetical descriptions. Id. ContentGuard cites no expert support anywhere in
`
`its written description discussion. Paper 16 at 3-5. And it is unclear, at best, which
`
`limitation(s)
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