IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`PETITION FOR INTER PARTES
`REVIEW PURSUANT TO 37
`C.F.R. § 42.100 ET SEQ.
`
`In re U.S. Patent No. 6,799,084
`
`Currently in Litigation Styled: Grobler v. Sony
`Computer Entertainment America LLC, Case No.
`5:12-cv-01526-LHK
`
`Issued: September 28, 2004
`
`Filed: January 31, 2001
`
`Applicant: Benjamin F. Grobler
`
`Title: Data Vending System
`
`
`Mail Stop Inter Partes Review
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`AMENDED PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,799,084
`
`
`
`Petitioner, Sony Computer Entertainment America LLC (“SCEA”) requests an Inter
`
`Partes Review of claims 1 and 4 of U.S. Patent No. 6,799,084 (“the ’084 Patent”) issued on
`
`September 28, 2004 to Benjamin F. Grobler (“Applicant”). Exhibit 1001, ‘084 Patent.
`
`Petitioner previously submitted the required fee under 37 C.F.R. § 42.103 and does not
`
`believe a fee is due with this filing. If necessary, the Commissioner is hereby authorized in this,
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`concurrent, and future replies, to chart payment or credit any overpayment to Deposit Account
`
`No. 50-5940.
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`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,799,084
`
`Table  of  Contents  
`I.   MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) .............................................. 1  
`A.   REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(B)(1) ............................................... 1  
`B.   RELATED MATTERS UNDER 37 C.F.R. § 42.8(B)(2) .......................................................... 1  
`C.   LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3) ......................................... 1  
`D.   SERVICE INFORMATION UNDER 37 C.F.R. § 42.8(B)(4) ..................................................... 2  
`E.   PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 .................................................................. 2  
`II.   REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§ 42.104 ....... 2  
`A.   GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) .................................................. 2  
`B.   IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF REQUESTED 3  
`1.   CLAIMS FOR WHICH INTER PARTES REVIEW IS REQUESTED UNDER 37 C.F.R.
`§ 42.104(B)(1) ................................................................................................................... 3  
`2.   THE SPECIFIC ART AND STATUTORY GROUND(S) ON WHICH THE CHALLENGE IS BASED
`UNDER 37 C.F.R. § 42.104(B)(2) ...................................................................................... 3  
`3.   HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED UNDER 37 C.F.R. § 42.104(B)(3)
` .......................................................................................................................................... 4  
`4.   HOW THE CONSTRUED CLAIM(S) ARE UNPATENTABLE UNDER 37 C.F.R. § 42.104(B)(4) 6  
`5.   SUPPORTING EVIDENCE UNDER 37 C.F.R. § 42.104(B)(5) ................................................ 6  
`III.   SUMMARY OF THE ‘084 PATENT .................................................................................. 6  
`A.   DESCRIPTION OF THE ALLEGED INVENTION OF THE ‘084 PATENT ..................................... 6  
`B.   SUMMARY OF THE PROSECUTION HISTORY OF THE ‘084 PATENT ...................................... 7  
`C.   LEVEL OF A PERSON HAVING ORDINARY SKILL IN THE ART. .......................................... 10  
`IV.   THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE OF THE
`CHALLENGED CLAIMS OF THE ‘084 PATENT IS UNPATENTABLE UNDER 37
`C.F.R. § 42.104(B)(4) ........................................................................................................... 10  
`A.   STATEMENT POINTING OUT EACH SHOWING OF A REASONABLE LIKELIHOOD THAT THE
`PETITIONER WILL PREVAIL WITH RESPECT TO AT LEAST ONE OF THE CHALLENGED
`CLAIMS ............................................................................................................................ 10  
`B.   DETAILED EXPLANATION UNDER 37 C.F.R. § 42.104(B) ................................................. 16  
`1.   SAIGH ANTICIPATES CLAIMS 1 AND 4 UNDER 35 U.S.C. § 102(E) ................................... 17  
`2.   SACHS ANTICIPATES CLAIM 1 UNDER 35 U.S.C. § 102(E) ............................................... 23  
`3.   KATZ ANTICIPATES CLAIM 1 UNDER 35 U.S.C. § 102(E) ................................................ 28  
`4.   ACKROYD ANTICIPATES CLAIM 4 UNDER 35 U.S.C. § 102(B) ......................................... 32  
`5.   MUNYAN IN VIEW OF SAIGH RENDERS CLAIM 1 OBVIOUS UNDER 35 U.S.C. § 103(A) .... 35  
`6.   SAIGH IN VIEW OF SACHS RENDERS CLAIM 1 OBVIOUS UNDER 35 U.S.C. § 103(A) ........ 41  
`7.   SACHS IN VIEW OF SAIGH RENDERS CLAIM 4 OBVIOUS UNDER 35 U.S.C. § 103(A) ........ 44  
`8.   SACHS IN VIEW OF ACKROYD RENDERS CLAIM 4 OBVIOUS UNDER 35 U.S.C. § 103(A) .. 48  
`V.   CONCLUSION .................................................................................................................... 52  
`
`
`
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,799,084
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
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`
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`As set forth below and pursuant to 37 C.F.R. § 42.8(a)(1), Petitioner provides the
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`following mandatory notices as part of this Petition.
`
`A.
`
`
`
`B.
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`
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`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
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`SCEA is the real party-in-interest for Petitioner.
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`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The ’084 Patent is presently the subject of a patent infringement lawsuit filed on
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`March 27, 2012 by the patentee and Applicant here, Mr. Grobler, against SCEA and captioned
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`Grobler v. Sony Computer Entertainment America LLC, U.S. District Court, Northern District of
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`California, Case No. 5:12-cv-01526-LHK. Petitioner also identifies the following judicial
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`proceeding that asserts infringement of the ‘084 Patent and may affect, or be affected by, a
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`decision in this IPR: Grobler v. Apple Inc., U.S. District Court, Northern District of California,
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`Case No. 5:12-cv-01534-LHK.
`
`C.
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`
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`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Petitioner provides the
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`following designation of counsel:
`
`Lead Counsel
`Eric A. Buresh (Reg. No. 50,394)
`eric.buresh@eriseip.com
`
`Postal and Hand-Delivery Address:
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
`
`
`Back-Up Counsel
`Abran J. Kean (Reg. No. 58,540)
`abran.kean@eriseip.com
`
`Postal and Hand-Delivery Address:
`ERISE IP, P.A.
`5300 DTC Parkway, Suite 210
`Greenwood Village, Colorado 80111
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
`
`1
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,799,084
`
`
`D.
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`
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`Service Information Under 37 C.F.R. § 42.8(b)(4)
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`Service information for lead and back-up counsel is provided in the above
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`designation of lead and back-up counsel. Service of any documents via hand-delivery may be
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`made at the postal mailing address of the respective lead or back-up counsel designated above.
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`E.
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`
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`Payment of Fees Under 37 C.F.R. § 42.103
`
`The undersigned authorizes the Office to charge $27,200.00 to Deposit Account
`
`No. 50-5940 for the fee set forth in 37 C.F.R. § 42.15(a) for this Petition for Inter Partes Review.
`
`Two claims are being reviewed, so no excess claim fees are required. The undersigned further
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`authorizes payment for any additional fees that might be due in connection with this Petition to
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`be charged to the above-referenced Deposit Account.
`
`II.
`
`REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§§ 42.104
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for IPR of the
`
`’084 Patent is satisfied.
`
`A.
`
`Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner hereby certifies that the ’084 Patent is available for IPR and that the Petitioner
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`is not barred or estopped from requesting IPR challenging the claims of the ’084 Patent on the
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`grounds identified herein. More particularly, Petitioner certifies that: (1) Petitioner is not the
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`owner of the ’084 Patent; (2) Petitioner has not filed a civil action challenging the validity of any
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`claim of the ’084 Patent; (3) this Petition is filed less than one year after the date on which the
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`Petitioner, the Petitioner’s real party-in-interest, or a privy of the Petitioner was served with a
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`complaint alleging infringement of the ’084 Patent; (4) the estoppel provisions of 35 U.S.C. §
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`315(e)(1) do not prohibit this IPR; and (5) this Petition is filed after the later of (a) the date that is
`
`
`
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,799,084
`
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`nine months after the date of the grant of the ’084 Patent or (b) the date of termination of any
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`post-grant review of the ’084 Patent.
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`B.
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`Identification of Challenge Under 37 C.F.R. § 42.104(b) and
`Relief Requested
`
`In view of the prior art, evidence, and claims chart set forth below, the precise relief
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`requested by Petitioner is that claims 1 and 4 of the ’084 Patent are unpatentable and should be
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`cancelled.
`
`1.
`
`Claims for Which Inter Partes Review Is Requested Under
`37 C.F.R. § 42.104(b)(1)
`
`Petitioner requests IPR of claims 1 and 4 of U.S. Patent No. 6,799,084.
`
`2.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge Is Based Under 37 C.F.R. § 42.104(b)(2)
`
`IPR of the ’084 Patent is requested in view of the following prior art references:
`
`EXHIBIT 1002.
`U.S. Patent No. 5,734,823 to Saigh et al., entitled
`“Systems and Apparatus for Electronic Communication and
`Storage of Information,” filed July 25, 1996, and issued March 31,
`1998, citable under at least 35 U.S.C. §§ 102(e) and 103(a)
`(“Saigh”).
`
`EXHIBIT 1003.
`U.S. Patent No. 5,956,034 to Sachs et al., entitled “Method
`and Apparatus for Viewing Electronic Reading Materials,” filed
`August 13, 1996, and issued September 21, 1999, citable under at
`least 35 U.S.C. §§ 102(e) and 103(a) (“Sachs”).
`
`EXHIBIT 1004.
`U.S. Patent No. 5,926,624 to Katz et al., entitled “Digital
`Information Library and Delivery System with Logic for
`Generating Files Targeted
`to
`the Playback Device,” filed
`September 12, 1996, and issued July 20, 1999, citable under at
`least 35 U.S.C. §§ 102(e) and 103(a) (“Katz”).
`
`EXHIBIT 1005.
`U.S. Patent No. 5,761,485 to Munyan, entitled “Personal
`Electronic Book System,” filed December 1, 1995, and issued June
`2, 1998, citable under at least 35 U.S.C. §§ 102(e) and 103(a)
`(“Munyan”).
`
`EXHIBIT 1006.
`UK Patent Application No. GB 2,305,339 to Ackroyd et
`al., entitled “Providing Temporary Access to Data,” published
`
`
`
`
`3
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,799,084
`
`
`April 2, 1997, citable under at least 35 U.S.C. §§ 102(b) and
`103(a) (“Ackroyd”).
`
`Claim
`Nos.
`1, 4
`1
`1
`4
`1
`1
`4
`4
`
`Proposed Statutory Rejections
`for the ‘084 Patent
`Claims 1 and 4 are anticipated under § 102(e) by Saigh
`Claim 1 is anticipated under § 102(e) by Sachs
`Claim 1 is anticipated under § 102(e) by Katz
`Claim 4 is anticipated under § 102(b) by Ackroyd
`Claim 1 is obvious under § 103(a) over Munyan in view of Saigh
`Claim 1 is obvious under § 103(a) over Saigh in view of Sachs
`Claim 4 is obvious under § 103(a) over Sachs in view of Saigh
`Claim 4 is obvious under § 103(a) over Sachs in view of Ackroyd
`
`3.
`
`How the Challenged Claims Are to be Construed Under 37
`C.F.R. § 42.104(b)(3)
`
`A claim subject to IPR receives the “broadest reasonable construction in light of the
`
`
`
`specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). The Patent Owner of the
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`‘084 Patent suggests a broad view of the meaning of the claims based upon the allegations set
`
`forth in its infringement contentions against the alleged products of the Petitioner. See, Exhibit
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`1007, Exhibit A to Plaintiff Benjamin Grobler’s Disclosure of Asserted Claims and Infringement
`
`Contentions Under Patent L.R. 3-1. Unless otherwise noted, Petitioner proposes, for purposes of
`
`IPR only, that the claim terms of the ‘084 Patent are presumed to take on their ordinary and
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`customary meaning that the term would have to one of ordinary skill in the art in view of the
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`Specification of the ‘084 Patent as informed by an understanding of the scope applied in view of
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`Patent Owner’s Infringement Contentions. See id.1
`
`
`1 It should be noted that, while Petitioner believes the interpretation reflected below is accurate
`for purposes of IPR, Petitioner is applying the “broadest reasonable construction” of the
`claims for purposes of IPR only, and the analysis is not, and should not be viewed as, a
`concession by Petitioner as to the proper scope of any claim term in any litigation.
`Further, Petitioner believes that several claim terms in the ‘084 Patent are deficient based
`on various provisions in 35 U.S.C. § 112. Because Petitioner cannot formally present a
`challenge based on these provisions in the context of an IPR, Petitioner respectfully
`assumes for the sake of the Petition only that the claims of the ‘084 Patent satisfy these
`provisions. Where claim terms of the ‘084 Patent are indefinite, Petitioner also assumes a
`meaning for purposes of evaluating prior art for the sake of the IPR only. These
`4
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`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,799,084
`
`
`In addition to the general claim construction proposals outlined above and illustrated in
`
`more detail in the claim charts below, there is one specific limitation—the “key means” in claim
`
`1 of the ‘084 Patent —that requires construction based upon 35 U.S.C. § 112 ¶ 6. The ‘084
`
`Patent includes the following disclosure regarding the “key means” limitation:
`
`The data carrier 30 includes a key means 32, for example, a
`hardware or software key linked to a microprocessor. The data
`carrier 30 is thus activated and deactivated for receiving data by
`means of the key means 32. Typically this functionality will be
`performed with the use of PIN (Personal Identification Numbers)
`or passwords, or the like, cell-phone fashion.
`
`‘084 Patent at Col. 4:58-64; see also, id. at Col. 3:3-15. Though Petitioner cannot challenge
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`claims on the basis of 35 U.S.C. § 112 in an IPR setting, Petitioner respectfully notes that the
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`written description contains no adequate disclosure for this means-plus-function limitation. As
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`noted above, however, Petitioner assumes for purposes of applying the “broadest reasonable
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`construction” in this IPR context only that the claim is adequately supported. For purposes of
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`IPR, and applying the “broadest reasonable construction” standard, Petitioner proposes the
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`following function and structure for the “key means” limitation:
`
`Function
`Term
`“key means” Performing at
`the
`least one of
`functions selected from: activating
`the data carrier for receiving data,
`deactivating
`the data carrier for
`receiving data, activating the data
`carrier
`for
`releasing data, and
`deactivating
`the data carrier for
`releasing data
`
`Structure
`a microprocessor linked to a hardware
`or software key configured with a
`software algorithm for performing the
`functions2
`
`
`As demonstrated by Patent Owner’s Infringement Contentions,
`
`this proposed
`
`construction is consistent with the interpretation applied by the Patent Owner in the
`
`assumptions are not a waiver of any argument in any litigation that claim terms in the
`‘084 Patent are indefinite or otherwise invalid under 35 U.S.C. § 112.
`2 Petitioner respectfully reiterates that no such algorithm is described in the Specification of the
`‘084 Patent.
`
`
`
`
`5
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,799,084
`
`
`corresponding litigation. See, Plaintiff’s Infringement Contentions at 7. If the Panel disagrees
`
`with Petitioner that 35 U.S.C. § 112 ¶ 6 should apply to this limitation, then Petitioner
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`respectfully submits that the “key means” term should be interpreted to mean “a microprocessor
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`linked to a hardware or software key configured to perform at least one of the functions selected
`
`from: activating the data carrier for receiving data, deactivating the data carrier for receiving
`
`data, activating the data carrier for releasing data, and deactivating the data carrier for releasing
`
`data.”
`
`4.
`
`How the Construed Claim(s) Are Unpatentable Under 37
`C.F.R. § 42.104(b)(4)
`
`An explanation of how construed claims 1 and 4 of the ’084 Patent are unpatentable
`
`under the statutory grounds identified above, including the identification of where each element
`
`of the claim is found in the prior art patents or printed publications, is provided in Section IV,
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`below, in the form of claim charts.
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`5.
`
`Supporting Evidence Under 37 C.F.R. § 42.104(b)(5)
`
`The exhibit numbers of the supporting evidence relied upon to support the challenges and
`
`the relevance of the evidence to the challenges raised, including identifying specific portions of
`
`the evidence that support the challenges, are provided in Section IV below, in the form of claim
`
`charts. Exhibits 1-9 are also attached.
`
`III.
`
`SUMMARY OF THE ‘084 PATENT
`
`A.
`
`Description of the Alleged Invention of the ‘084 Patent
`
`The ‘084 Patent describes an electronic data vending system that allows users of
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`electronic data to purchase or rent only the data that they want. The described system allows
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`users to pay royalties for use of copyrighted data “such as music, videos, computer programs,
`
`and the like.” ‘084 Patent at Col. 1:14-18. The ‘084 Patent discloses a data vending system that
`
`
`
`
`6
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,799,084
`
`
`disperses copyrighted information from a main computer (i.e., data depot) to various data carriers
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`through a data dispensing device. See id. at Abstract. The data depot maintains owner and/or
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`possessor records for each data carrier as well as a record of all of the information recorded onto
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`the data carrier, payment records, etc. See id. at Col. 4:11-23. The data dispensing devices are
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`located remotely from the data depot at one or more vendors, and include the capability to
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`download data from the data depot to the data dispensing device and then transfer the data from
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`the data dispensing device to a data carrier. See id. at Col. 4:24-57. The ‘084 Specification
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`briefly describes a key means that is used to activate and deactivate the data carrier. See id. at
`
`Col. 4:58-67. But, beyond comparing the functionality of the key means to the use of a PIN or
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`passwords, the ‘084 Specification does not explain how the key means should work. See id.
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`Similarly, the ’084 Specification mentions a “verification mechanism” for use with the key, but
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`there is no disclosure of how this functionality operates. See id. The ‘084 Specification also
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`briefly describes a “renting of data” concept, where data stored on a data carrier may be read for
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`a predetermined period of time and then marked as stale and later deleted, deleted immediately,
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`or scrambled to prevent further access. See id. at Col. 5:23-54.
`
`B.
`
`Summary of the Prosecution History of the ‘084 Patent
`
`The ‘084 Patent was filed on January 31, 2001, and as-filed, the application included 20
`
`initial claims. See Exhibit 1008, ‘084 File History at As-Filed Application. The as-filed
`
`application included a preliminary amendment that claimed priority as a continuation-in-part to
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`Application No. PCT/ZA99/00056, which was filed on July 29, 1999, and also claimed priority
`
`to South African Application No. ZA 98/6868 filed on July 31, 1998.3 See id. at Preliminary
`
`Amendment.
`
`
`3 For purposes of this Petition only, Petitioner is not challenging the priority claim in the ‘084
`Patent and, thus, Petitioner proposes assuming a priority date of July 31, 1998. This
`7
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`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,799,084
`
`
`On October 2, 2002, the USPTO mailed a Non-Final Office Action rejecting all as-filed
`
`claims 1-20. The Office Action included several prior art rejections: (1) claims 1, 4-10, 12-13
`
`anticipated by Tsevdos (EP Pub. No. 0 649 121); (2) claims 18-19 anticipated by Fischetti (U.S.
`
`Pat. No. 4,789,907); (3) claims 1 and 4-17 obvious over Tsevdos in view of Cooper (U.S.
`
`5,757,908); (4) claim 1, 4-9, 18 and 20 obvious over Tsevdos in view of Chu (6,086,380); (5)
`
`claims 1-9 and 15-29 obvious over Tsevdos in view of Fischetti; (6) claims 1-10 and 12-13
`
`obvious over Tsevdos in view of Barritz (EP 852,349). See id. at Oct. 2, 2002 Office Action. In
`
`response, the Applicant amended the claims to add, among other things, the concept of the
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`database maintaining owner and possessor records for each data carrier. See id. at Feb. 13, 2003
`
`Amendment. The Applicant attempted to distinguish this feature from the cited prior art, noting
`
`that:
`
`[A]mended claim 1 relates to the tracking of a data carrier on a
`system rather than the storing of data about a user of a data carrier.
`Notably, therefore, a data carrier exists as an independent entity on
`which data is stored and which can be identified on the system
`regardless of who the user or owner is.
`
`See id. Claim 18 was also amended to include the newly added features of claim 1, and the
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`Applicant suggested that the dependent claims would be allowable because of this purportedly
`
`patentable feature added to the independent claims. See id.
`
`After an exchange to fix a typographical error in the Amendment, the USPTO issued a
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`Final Office Action on July 30, 2003. See id. at July 30, 2003 Office Action. The examiner
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`rejected Applicant’s argument that the concept of tracking a data carrier was novel, citing the
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`teaching of this concept in Tsevdos and Barritz, and thus the examiner rejected claims 1, 3-10,
`
`
`assumption is not, and should not be construed as, a concession as to priority, and
`Petitioner reserves the right to challenge the priority claim later in litigation or this IPR
`proceeding if more information becomes available through discovery or if Applicant
`claims an earlier priority date during the course of this IPR proceeding.
`8
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,799,084
`
`
`12, and 13 as obvious over these references. See id. The examiner also allowed claims 18-20,
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`and indicated that claims 11 and 14-17 would be allowable if re-written in independent form. In
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`response, the Applicant amended the claims to capture the allowable subject matter (i.e., the “key
`
`means” and “verification mechanism” limitations of claims 10 and 11, respectively, were
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`incorporated into as-issued claim 1; claims 14-16 were re-written in independent form and
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`became as-issued claims 2-4; claims 17-20 became as-issued claims 5-8). On January 29, 2004,
`
`the USPTO issued a Notice of Allowance, and the ‘084 Patent issued on September 28, 2004
`
`with eight claims.
`
`Although not abundantly clear, the file history of the ‘084 Patent suggests that the point
`
`of novelty for issued claim 1 involved the “key means” and “verification mechanism” that was
`
`embodied by amended claim 11. In the Final Office Action, the examiner indicated that claim 11
`
`was allowable, and the Applicant incorporated the concepts of claims 10 and 11 into claim 1
`
`prior to issuance. For issued claim 4, it appears the point of novelty was the “data renting and
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`removing” feature embodied by amended claim 16.4 Like claim 11, the examiner indicated in
`
`the Final Office Action that claim 16 included allowable subject matter. The Applicant re-wrote
`
`claim 16 into independent form to capture the concepts from rejected claim 1, and the resulting
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`claim issued as claim 4. As shown below, these purportedly novel concepts are described in
`
`multiple prior art references.
`
`
`4 As included in amended claim 16 and in as-issued claim 4, this limitation required: “a
`recordable data carrier [that] is configurable to permit reading of the data stored thereon
`for a predetermined period of time only, whereafter the data is processed in at least one
`way selected from marked as stale and later deleted, deleted immediately, and
`scrambled.” See ‘084 Patent at Claim 4; see also ‘084 File History at Feb. 13, 2003
`Amendment. Herein, the concept embodied by this limitation is sometimes referred to as
`the “data renting and removing” feature of claim 4. Of course, the broadest reasonable
`interpretation of this limitation does not always require “removing” data and, for
`purposes of this IPR proceeding, it is sufficient to satisfy this limitation that data be
`marked as stale after a predetermined period, and Petitioner respectfully uses this
`phraseology for simplicity only.
`
`
`
`
`9
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`Petition for Inter Partes Review of U.S. Patent No. 6,799,084
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`C.
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`Level of a Person Having Ordinary Skill in the Art.
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`A person having ordinary skill in the art at the time of the ‘084 Patent would have several
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`years of experience working in the design or manufacturing side of the data vending industry.
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`Such a person would typically have a B.S. in computer science or related engineering discipline
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`or equivalent experience.
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` The person would also have some knowledge of data
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`encryption/decryption techniques, networking of computers, databases, programming of
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`microprocessors/microcontrollers, and data vending systems and their implementation. U.S.
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`Patent No. 5,910,987 to Ginter et al. (“Ginter”) was filed on December 4, 1996 and provides
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`exemplary disclosure documenting the state of the art at the time of the ‘084 Patent. See
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`generally, Exhibit 1009, Ginter.
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`IV.
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`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`OF THE CHALLENGED CLAIMS OF THE ‘084 PATENT IS
`UNPATENTABLE UNDER 37 C.F.R. § 42.104(B)(4)
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`Data vending systems were prevalent well before the earliest possible priority date of the
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`‘084 Patent (i.e., July 31, 1998). This petition cites several prior art patent references that
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`describe in detail data vending systems that disclose each and every limitation of independent
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`claims 1 and 4 of the ‘084 Patent. To the extent the key features that resulted in allowance of
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`claims 1 and 4 of ‘084 Patent involved a key means and verification mechanism (claim 1) or data
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`renting and removing functionality (claim 4), those concepts are described in numerous prior art
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`data vending system patents discussed below.
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`A.
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`Statement Pointing Out Each Showing of a Reasonable
`Likelihood that the Petitioner will Prevail with Respect to at
`Least One of the Challenged Claims
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`The following prior art references disclose each and every limitation of claim 1 or claim
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`4 (or both) of the ‘084 Patent, including the purportedly novel concepts discussed above.
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`Petition for Inter Partes Review of U.S. Patent No. 6,799,084
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`Therefore, there is a Reasonable Likelihood that the Petitioner will Prevail (“RLP”) with respect
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`to at least one of the claims challenged in this Petition.
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`RLP 1.
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`Saigh: Saigh was not cited or previously considered in the original
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`prosecution of the ‘084 Patent. As shown below, Saigh discloses each and every limitation of
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`claims 1 and 4. Saigh also provides new, noncumulative disclosures regarding the allegedly
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`novel “key means” and “verification mechanism” limitations of claim 1. Specifically Saigh
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`discloses that each user has a portable storage device (i.e., “data carrier”) used for recording data
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`from a point-of-sale terminal. See Saigh at Cols. 3:31-32, 8:35-38, 9:7-27; Fig. 7. Each portable
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`storage medium has a unique serial number linked to the portable storage device’s processor that
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`is used as a software key in addition to a user’s PIN to decrypt downloaded files for use (i.e.,
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`“release”). See id at Col. 15:31-58; Fig. 7. Further, the point-of-sale terminals are configured to
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`receive the user’s PIN and a password to activate the portable storage medium to receive data
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`(i.e., “verification mechanism”). See id. at Col. 10:40 – 11:17.
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`Regarding claim 4, Saigh provides new, noncumulative disclosure regarding the allegedly
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`novel “data renting and removing” feature. Specifically, Saigh discloses that the portable storage
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`device is configured to permit reading of rented information within a rental time period. See id
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`at Col. 11:43 – 12:9. After the rental period expires, the information is either deleted
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`immediately or made inaccessible to the user and later deleted after a predetermined period of
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`time when the user has the option of extending the rental period. See id.
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`Thus, Saigh provides new, noncumulative technological disclosure with regard to the
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`subject matter considered as a basis for allowability of claims 1 and 4 of the ‘084 Patent. For at
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`least this reason, this Petition provides a reasonable likelihood that the Petitioner will prevail
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`with respect to at least one of the claims challenged in the Petition. Accordingly, claims 1 and 4
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`Petition for Inter Partes Review of U.S. Patent No. 6,799,084
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`of the ‘084 Patent should be reviewed, rejected under § 102(e) as being anticipated by Saigh, and
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`cancelled pursuant to this Petition.
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`RLP 2.
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`Sachs: Sachs was not cited or previously considered in the original
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`prosecution of the ‘084 Patent. As shown below, Sachs discloses each and every limitation of
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`claim 1 of the ‘084 Patent. Sachs also provides new, noncumulative disclosures regarding the
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`allegedly novel “key means” and “verification mechanism” limitations of claim 1. Specifically,
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`Sachs discloses a portable electronic book (i.e., “data carrier”) with a unique serial number
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`configured for recording data from the host computer (i.e., “data dispensing device”). See Sachs
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`at Abstract; Col. 3:6-8; 3:23-30; 3:36-42. The portable electronic book also includes a
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`public/private key pair used for enabling the portable electronic book to receive data from the
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`host computer (i.e., “activating the data carrier for receiving data”) and for decrypting the
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`information received from the host computer (i.e., “activating the data carrier for releasing
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`data”). See id. at Abstract; Col. 3:36-67; 4:27-34. The public key is the unique serial number of
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`the portable electronic book and is therefore linked to the portable electronic book’s hardware
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`(including the microprocessor). See id. The host computer includes a database of valid portable
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`display unit unique serial numbers that is used to validate the authenticity of each portable
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`device’s unique serial number (i.e., “verification mechanism”). See id.
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`Thus, Sachs provides new, noncumulative technological disclosure with regard to the
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`subject matter considered as a basis for allowability of claim 1 of the ‘084 Patent. For at least
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`this reason, this Petition provides a reasonable likelihood that the Petitioner will prevail with
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`respect to at least one of the claims challenged in the Petition. Accordingly, claim 1 of the ‘084
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`Patent should be reviewed, rejected under § 102(e) as being anticipated by Sachs, and cancelled
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`pursuant to this Petition.
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`Petition for Inter Partes Review of U.S. Patent No. 6,799,084
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`RLP 3. Katz: Katz was not cited or previously considered in the original
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`prosecution of the ‘084 Patent. As shown below, Katz discloses each and every limitation of
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`claim 1 of the ‘084 Patent. Katz also provides new, noncumulative disclosures regarding the
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`allegedly novel “key means” and “verification mechanism” limitations of claim 1. Specifically,
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`Katz discloses a removable mobile playback device (i.e., “data carrier”) with a unique player ID
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`used to identify the specific mobile playback device so that it may be configured for recording
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`data from the client computer system (“data dispensing device”). See Katz at Col. 2:23-29; 3:33-
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`36; 5:21-32; 9:55-62; 10:18-22; 10:59-64; 11:40-48; 12:29-38; 16-42-45. The mobile playback
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`device includes a microprocessor linked to a “pre-defined set of bit streams or data structures”
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`(“software key”) configured to perform