UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`OPENTV, INC.
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`Petitioner
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`v.
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`CISCO SYSTEMS, INC., CISCO TECHNOLOGY INC., SCIENTIFIC-
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`ATLANTA, LLC, SCIENTIFIC-ATLANTA, INC. AND NDS AMERICAS INC.
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`Patent Owner
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`CASE: Unassigned
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`Patent No. 6,744,892 B2
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,744,892 B2
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`TABLE OF CONTENTS
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`EXHIBIT LIST ....................................................................................................... iv
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`I.
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`INTRODUCTION .......................................................................................... 1
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ....................... 1
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`A.
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`B.
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`REAL PARTY IN INTEREST ............................................................ 1
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`RELATED MATTERS ........................................................................ 1
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`C. NOTICE OF COUNSEL AND SERVICE INFORMATION ............. 2
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`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 3
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`A. GROUND FOR STANDING............................................................... 3
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`B.
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`IDENTIFICATION OF CHALLENGE ............................................... 3
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`Claims Challenged ..................................................................... 3
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`The Prior Art .............................................................................. 3
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`Supporting Evidence Relied upon for the Challenge ................ 3
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`Statutory Ground(s) of Challenge and Legal Principles ............ 4
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`Claim Construction under 37 C.F.R. § 42.100(b) ...................... 4
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`How the Claims Are Unpatentable under the Statutory
`Ground Identified in Paragraph (b)(2) of 37 C.F.R. §
`42.104 ......................................................................................... 4
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`IV. OVERVIEW OF THE 892 PATENT ............................................................. 4
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`A.
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`B.
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`C.
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`D.
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`E.
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`PRIORITY DATE OF THE 892 PATENT ......................................... 4
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`PERSON OF ORDINARY SKILL AND SECONDARY
`CONSIDERATIONS ........................................................................... 5
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`BRIEF DESCRIPTION OF THE 892 PATENT ................................. 5
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`SUMMARY OF PROSECUTION FILE HISTORY........................... 6
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`PROPOSED CLAIM CONSTRUCTION............................................ 7
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`1.
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`2.
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`3.
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`4.
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`5.
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`“Service Instance” ...................................................................... 8
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`“Entitlement Information” ......................................................... 8
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`“Geographic Reception Information” ........................................ 8
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`“Geographic Location Indicator” ............................................... 9
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`“Entitlement Agent” ................................................................. 10
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`V.
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`TABLE OF CONTENTS
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`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE 892 PATENT IS UNPATENTABLE .................... 12
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`A.
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`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ....... 12
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`1. Wasilewski ‘92 ......................................................................... 12
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`2.
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`3.
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`Sheldrick .................................................................................. 18
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`Thibadeau ................................................................................. 22
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`B.
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`SUMMARY OF INVALIDITY POSITIONS ................................... 24
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`C. DIFFERENT INVALIDITY POSITIONS AGAINST EACH
`CLAIM ARE INDEPENDENT, DISTINCTIVE AND NOT
`REDUNDANT ................................................................................... 25
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`1.
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`2.
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`3.
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`Cited References Are Distinctive and Non-Cumulative .......... 25
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`Different Invalidity Positions Are Distinctive and Non-
`Redundant ................................................................................ 26
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`Just and Speedy Resolution of Unpatentability of Claims
`1-38 .......................................................................................... 27
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`VI. DETAILS OF GROUNDS FOR UNPATENTABILITY ............................ 28
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`A. ANTICIPATION UNDER 35 U.S.C. § 102(b) ................................. 28
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`1.
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`2.
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`Ground 1: Claims 1-4, 7-9, 11-14, 16-18, 20, 22-23, 26-
`27, 30-31, 35 and 38 Are Anticipated by Wasilewski ‘92....... 28
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`Ground 2: Claims 1-8, 12-31 and 35-38 Are Anticipated
`by Sheldrick ............................................................................. 39
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`B. OBVIOUSNESS UNDER 35 U.S.C. § 103(A) ................................. 49
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`1.
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`2.
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`3.
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`Ground 3: Claims 5-6, 10, 15, 19, 21, 24-25, 28-29, and
`36-37 Are Obvious over Wasilewski ’92 In View of
`Sheldrick .................................................................................. 49
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`Ground 4: Claims and 32-34 Are Being Obvious over
`Wasilewski ’92 In View of Thibadeau .................................... 54
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`Ground 5: Claims 9-11, and 32-34 Are Obvious over
`Sheldrick In View of Thibadeau .............................................. 56
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`VII. CONCLUSION ............................................................................................. 60
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`EXHIBIT LIST
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`Ex. 1001 U.S. Patent No. 6,744,892 B2 to Akins, III et al. (“the 892 Patent”)
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`Ex. 1002 Wasilewski, A. J., “ISO/IEC JTC1/SC20/WG11, Requirements and
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`Method for High-Level Multiplexing of MPEG and Other Digital
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`Service Bitstreams With Universal Transport Layer", Nov. 1992
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`(“Wasilewski ’92”)
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`Ex. 1003 U.S. Patent No. 5,506,904 to Sheldrick et al. (“Sheldrick”)
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`Ex. 1004 U.S. Patent No. 5,432,542 to Thibadeau et al. (“Thibadeau”)
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`Ex. 1005
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`Portions of the prosecution file history of related U.S. Patent
`No. 6,252,964 B1 (“the 964 Patent”)
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`Ex. 1006 Declaration of Alan Young (“Young Declaration”)
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`Ex. 1007 Claim charts identifying specific sections of prior art references that
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`support invalidity of claims 1, 12, 20 and 26 of the 892 Patent
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`Ex. 1008 U.S. Patent No. 5,870,474 to Wasilewski et al. (“the 474 Patent”)
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, OpenTV, Inc.
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`(“Petitioner”) petitions for inter partes review of claims 1-38 of U.S. Patent No.
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`6,744,892 B2 (“the 892 Patent,” Ex. 1001), assigned to Scientific-Atlanta, Inc.
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`Based on information and belief, Scientific-Atlanta, Inc., Scientific-Atlanta, LLC,
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`Cisco Systems, Inc., Cisco Technology Inc., and NDS Americas Inc. (collectively
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`“Cisco”) each may have, or are represented by Cisco to have, or have had,
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`ownership interest in the 964 Patent. Accordingly, these entities are collectively
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`referred to as “Patent Owner” in this Petition.
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`I.
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`INTRODUCTION
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`This Petition and accompanied evidence show that there is a reasonable
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`likelihood that Petitioner will prevail with respect to at least one of the claims 1-38
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`of the 892 Patent challenged in this Petition and that claims 1-38 are unpatentable
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`on multiple grounds over cited prior art under 35 U.S.C. §102 or §103. The Patent
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`Office is respectfully requested to institute a trial for inter partes review and to
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`reject and cancel claims 1-38.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
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`A. REAL PARTY IN INTEREST
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`Petitioner OpenTV, Inc. is the real party in interest and is wholly owned by
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`Kudelski, S.A., which is publicly traded on the SIX Swiss Exchange.
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`B. RELATED MATTERS
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`The 892 Patent and two other U.S. Patent Nos. 6,252,964 B1 and 7,505,592
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`B2 are being asserted against Petitioner in an on-going patent infringement lawsuit
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`brought by Patent Owner in CISCO SYSTEMS, INC., CISCO TECHNOLOGY,
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`INC., NDS AMERICAS INC. and SCIENTIFIC ATLANTA LLC v. OPENTV,
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`INC. AND NAGRA USA, INC., 5:13-cv-00282 filed in the Northern District of
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`California on January 18, 2013.
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`In the above litigation, Patent Owner is asserting the claims of the 892
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`Patent that, as shown in this Petition, were already disclosed by the prior art and
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`that are invalid. Rejection and cancelation of claims 1-38 of the 892 Patent will
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`prevent Patent Owner from claiming technologies in the public domain as its own
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`and from asserting invalid claims to exclude others.
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`In addition, Petitioner is concurrently filing petitions for inter partes review
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`of Patent Owner’s U.S. Patent Nos. 6,252,964 B1 and 7,505,592 B2.
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`C. NOTICE OF COUNSEL AND SERVICE INFORMATION
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`Pursuant to 37 C.F.R. § 42.8(b)(3) and 42.10(a), Petitioner appoints
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`Nicholas T. Bauz (Reg. No. 41,604) as its lead counsel, and Bing Ai (Reg. No.
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`43,312) and Amy E. Simpson (Reg. No. 54,688) as its back-up counsel, all at the
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`mailing address of Perkins Coie LLP, 11988 El Camino Real, Suite 200, San
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`Diego, CA 92130, contact numbers of 858-720-5700 (phone) and 858-720-5799
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`(fax), and the following email for service and all communications:
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`opentv-cisco-ipr@perkinscoie.com.
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney executed by OpenTV,
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`Inc. for appointing the above designated counsel is concurrently filed.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
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`This Petition meets and complies with all requirements under 37 C.F.R. §
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`42.104 for inter partes review of the 892 Patent.
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`A. GROUND FOR STANDING
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`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the 892
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`Patent is available for inter partes review and that the Petitioner is not barred or
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`estopped from requesting inter partes review challenging the claims of the 892
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`Patent on the grounds identified herein.
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`B.
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`IDENTIFICATION OF CHALLENGE
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`Pursuant to 37 C.F.R. § 42.104(b), the precise relief requested by Petitioner
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`is that the Patent Trial and Appeal Board invalidate the 892 Patent.
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`1.
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`Claims Challenged
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`Claims 1-38 of the 892 Patent are being challenged in this Petition.
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`2.
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`The Prior Art
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`Prior art references in this Petition are Wasilewski ’92, Sheldrick and
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`Thibadeau as listed in the Exhibit List.
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`3.
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`Supporting Evidence Relied upon for the Challenge
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`Declaration of Alan Young (Ex. 1006) supporting the grounds for claim
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`rejections and other supporting evidence in the Exhibit List are filed herewith.
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`4.
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`Statutory Ground(s) of Challenge and Legal Principles
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`The review of patentability of claims 1-38 of the 892 Patent requested in this
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`Petition is governed by statutory provisions under 35 U.S.C. §§102 and 103 that
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`were in effect before March 16, 2013. Statutory provisions 35 U.S.C. §§311 to 319
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`that took effect on September 16, 2012 govern this inter partes review.
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`5.
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`Claim Construction under 37 C.F.R. § 42.100(b)
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`A claim subject to inter partes review shall be given by the Patent Office
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`“its broadest reasonable construction in light of the specification of the patent in
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`which it appears” to one of ordinary skill in the art.
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`6. How the Claims are Unpatentable under the Statutory
`Ground Identified in Paragraph (b)(2) of 37 C.F.R. § 42.104
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`An explanation of how claims 1-38 of the 892 Patent are unpatentable,
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`including the identification of where each element of the claim is found in the prior
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`art patents or printed publications, is provided in Section VI below.
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`IV. OVERVIEW OF THE 892 PATENT
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`A.
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`PRIORITY DATE OF THE 892 PATENT
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`The 892 Patent asserts priorities of nine (9) prior patent filings. During the
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`20
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`prosecution, Patent Owner filed a rule 131 declaration alleging a conception date
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`of January 1, 1997. However, the earliest description in the 892 Patent and the
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`prior patent filings that may support claims 1-38 appears in Appl. No. 60/054,575
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`filed August 1, 1997. Therefore, the earliest priority date of claims 1-38 is no
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`earlier than August 1, 1997.
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`B.
`PERSON OF ORDINARY SKILL AND SECONDARY
`CONSIDERATIONS
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`The inquiry under 35 U.S.C. § 103 is from the perspective of ”a person
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`having ordinary skill in the art.” For the purpose of this Petition, such a person
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`having ordinary skill in the art would have had a bachelor’s degree in electrical
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`engineering, computer science, or a related field, and a few years of working
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`experience in the area of installing and supporting pay TV television content
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`distribution and/or broadcasting. This description is approximate and several years’
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`experience designing and/or developing and/or operating blackout switching
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`management systems could make up for less experience installing and supporting
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`pay TV television system, and a lower level of education (see also Ex. 1006,
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`Paragraphs 29-32).
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`Petitioner presently is not aware of any secondary considerations at issue
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`concerning the prior art presented here in connection with the 892 Patent.
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`Petitioner reserves the right to present evidence of or rebut arguments relating to
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`secondary considerations in this or other proceedings, as appropriate.
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`C. BRIEF DESCRIPTION OF THE 892 PATENT
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`The claims and associated description of the 892 Patent relate to limiting
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`access to television programs based on geographic location of the set-top (i.e.,
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`receiver) unit. The received program or a service instance is encrypted and can
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`only be decrypted and displayed if the set-top box has proper authorization (or
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`entitlements) (e.g., 2:19-45). According to the 892 Patent, the geographical
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`location of each receiver can be stored as, e.g., an X-Y coordinates (e.g., 36:51-61
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`and Figs. 26-27). The authorization information that accompanies a TV program
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`can include geographic information that indicates the geographical region within
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`which the program can be viewed (i.e., spotlight regions) or cannot be viewed (i.e.,
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`blacked out regions) (e.g., 26:19-27; 38:39-41). The receiver then compares the
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`received geographic information against the stored location information to
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`determine if it is authorized to view the program (e.g., 38:41-49).
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`D.
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`SUMMARY OF PROSECUTION FILE HISTORY
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`The 892 Patent was filed on March 3, 2003 as a continuation application of
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`Application No. 09/493,409, which issued as U.S. Patent No. 6,560,340 (“the 340
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`Patent”). On March 3, 2003, concurrently with the filing of the 892 Patent, Patent
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`Owner filed a preliminary amendment to amend claims l-4, 6-14, 16-20, 22-25 and
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`27-30, to add new claims 31-45, and to submit an affidavit under 37 C.F.R. § 1.131
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`alleging a conception date of January 1, 1997 to swear behind U.S. Patent No.
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`6,009,116, which was cited by the Patent Office against the 340 Patent, the parent
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`of the 892 Patent. In the first Office Action mailed September 25, 2003, claims 20-
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`26 were rejected under 35 U.S.C. § 101 based on statutory-type double patenting
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`and claims 1-19 and 27-45 based on obviousness-type double patenting over the
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`claims of the 340 Patent. Patent Owner, on December 1, 2003, canceled claims 20-
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`26, and filed a Terminal Disclaimer to overcome the obviousness-type double
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`patenting rejections. Notice of Allowability was mailed on February 24, 2004.
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`The specification and figures of the 892 Patent are identical to those in the
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`related and previously granted U.S. Patent No. 6,252,964 B1 within the same
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`family of patent filings. Patent Owner during the prosecution of the 964 Patent
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`made statements on the record regarding the term “entitlement agent” that also
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`appears in claims of the 892 Patent. These statements were made to overcome
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`claim rejections. Selected portions of the prosecution history of the 964 patent (Ex.
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`1005) are referenced in the Proposed Claim Construction section of this Petition.
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`E.
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`PROPOSED CLAIM CONSTRUCTION
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`Petitioner’s proposed constructions and supporting evidence for construed
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`claim terms are set forth below pursuant to the broadest reasonable interpretation
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`standard. Petitioner's proposed claim constructions are offered only to comply with
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`37 C.F.R. §§ 42.100(b) and 42.104(b)(3) and for the sole purpose of this Petition,
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`and thus do not necessarily reflect appropriate claim constructions to be used in
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`litigation and other proceedings where a different claim construction standard
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`applies. The proposed claim constructions are not binding upon Petitioner beyond
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`this inter partes review.
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`1.
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`“Service Instance”
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`The proposed claim construction for this term is “a program or a service.”
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`The Abstract of the 892 Patent defines a service instance as a television program
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`that is received by a receiver in a cable television system: “The cable television
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`system includes a headend from which service "instances", or programs, are
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`broadcast and a plurality of set top units for receiving the instances and selectively
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`decrypting the instances for display to system subscribers.”
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`2.
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`“Entitlement Information”
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`The proposed claim construction for this term is “information that is used to
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`assess a receiver’s authorization for accessing a program or a service.” The basis in
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`the 992 Patent for the proposed construction includes, e.g., 10:19-23; 24:48-57;
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`29:55-67 and 37:6-14. The 892 Patent further describes that: “[i]n interpreting
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`EMMs, DHCTSE 627 acquires and stores keys and entitlement information; in
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`interpreting ECMs, DHCTSE 627 uses the entitlement information to determine
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`whether DHCT 333 receiving the ECM has an entitlement for the instance of the
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`service which the ECM accompanies” (16:13-18).
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`3.
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`“Geographic Reception Information”
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`The proposed claim construction for this term is “information received at a
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`receiver related to the receiver’s authorization for accessing a program or a service
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`within a geographic location or area.” The 892 Patent recites this term in claims
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`only and does not explicitly recite this term in the description or drawings.
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`Regarding messages received at the receiver including blackout/spotlight
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`information related to geographic reception information, the 892 Patent provides
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`the following description (38:37-49):
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`Where further restrictions apply to an entitlement, DHCTSE 627
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`searches for that information as well in entitlement agent information
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`1333. For example, if blackout/spotlight field 2223 of the ECM
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`indicates that a blackout applies to the service, DHCTSE 627 uses
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`blackout/spotlight information 2236 to determine whether the location
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`specified by x coordinate 1521 and y coordinate 1523 is within the
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`square specified by blackout/spotlight information 2236; if so,
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`DHCTSE 627 does not decrypt control word 2235. When a spotlight
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`applies, the procedure is of course the opposite: DHCTSE 627
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`decrypts the control word only if x coordinate field 1521 and y
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`coordinate field 1523 specify a location within the square.
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`4.
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`“Geographic Location Indicator”
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`The proposed claim construction for this term is “information conveying
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`location of a receiver.” The 892 Patent recites this term in claims only and does not
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`describe it in the description or drawings. In relation to determining a receiver’s
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`location using an X-Y coordinate system, the 892 Patent describes: “X coordinate
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`1521 and Y coordinate 1523 define a location of DHCT 333 in a coordinate system
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`established by the entitlement agent. The coordinate system may be geographic
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`and may, for example, be used to determine whether the DHCT 333 is in an area
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`which is to be blacked out in a broadcast” (38:37-49).
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`5.
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`“Entitlement Agent”
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`5
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`The proposed claim construction for this term is “any one, or a combination
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`of, a program or service provider, an entity or function that is located outside of the
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`receiver and acts on behalf of a program or service provider, or an entity or
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`function that is located outside of the receiver that has the right to provide the
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`receiver access authorization to one or more programs or services.”
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`On the “a program or service provider” aspect of the above proposed
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`construction, in the original examination of the related 964 Patent, which claims
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`priority to the same provisional Application No. 60/054,575 as the 892 Patent and
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`includes the identical 29 figures and detailed description as the 892 Patent, Patent
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`Owner represented to the Office that “Entitlement agents provide different
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`instances of service to the conditional access system, and specific instances of
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`service for each entitlement agent are provided to customers of the conditional
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`access systems” (Ex. 1005, p. 17, 2nd full paragraph). Patent Owner also stated
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`that “As a matter of law, Applicants are allowed to be their own lexicographer, and
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`in the specification at page 3, lines 4-11, instances of services include programs
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`provided by program sources (Entitlement Agents)” (Ex. 1005, p. 53, 2nd
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`paragraph) and further declared that “entitlement agents, as claimed by the
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`Applicants, include entities that provide the claimed instances of service provided
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`to the service distribution organization, and consequently, the secure chip of
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`Arnold cannot be the Applicants claimed entitlement agent” (Ex. 1005, p. 54, 1st
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`5
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`paragraph).
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`The 892 Patent also relates an “entitlement agent” (EA) to an entity or
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`function that resides outside of a receiver and gives or authorizes access rights or
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`entitlements to a program or service through remote message, and in some
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`instances, on behalf of a program or service provider. See, e.g., 8:23-26 and Figs.
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`10
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`20 and 24 illustrating an EA as part of the conditional access system and Figs. 3, 4,
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`20 and 24 showing an EA outside a receiver or DHCT. “In the case of an RSA
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`digital signature, the private key which is used to make the signature belongs to the
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`entitlement agent within service distribution organization 103 responsible for
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`authorizing the associated service” (emphasis added; 7:6-10). “In the case of pay-
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`per-view events, the customer orders the event from the entitlement agent, and the
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`agent responds by sending an EMM that contains the necessary entitlement
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`information” (emphasis added; 31:1-4). Fig. 3 illustrates a key “SP Kr” as the
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`private key of the entitlement agent (8:23-26) where “SP” stands for a “Service
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`Provider which provides the video, audio, interactive games and the like” per
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`Patent Owner’s definition in an earlier U.S. Patent No. 5,870,474 from which the
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`892 Patent claims a CIP relationship in its chain of priority claims (the 474 Patent
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`in Ex. 1008, 1:46-47).
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`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE 892 PATENT IS UNPATENTABLE
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`A.
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`IDENTIFICATION OF THE REFERENCES AS PRIOR ART
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`Prior art references in this Petition disclose, inter alia, systems and methods
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`for providing access to program or information that is broadcast to one or more
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`receivers based on geographical location of the receiver.
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`1. Wasilewski ‘92
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`Wasilewski ‘92 (Ex. 1002) was published in November 1992, more than one
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`year before the earliest effective priority date of August 1, 1997 for the claims of
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`the 892 Patent. Therefore, Wasilewski ‘92 qualifies as prior art under 35 U.S.C. §
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`102(b) with respect to the 892 Patent. Wasilewski ’92 was submitted in an
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`information disclosure statement during the prosecution of the 892 Patent, but was
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`not otherwise discussed on the record, and was not relied upon by the Examiner.
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`Wasilewski ‘92 describes a broadcast system, such as a cable television
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`system, capable of multiplexing various programs and associated data using a
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`standardized MPEG stream. A multiplex MPEG stream can carry multiple
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`channelized services, security, conditional access and system data that are provided
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`to the set-top box receivers (Sec. 3.1, par. 4). The “blackout” information can be
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`transmitted to, and received by, set-top boxes to selectively prevent viewing of
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`programs (such as sporting events) by a subset of such set-top boxes (Sec. 6.7).
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`Therefore, Wasilewski ‘92 is within the same specific technical field, and relates to
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`the claimed subject matter, of the 892 Patent.
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`
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`Generation of an encrypted service instance: Wasilewski ‘92 describes a
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`5
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`Digital Compression Services Delivery System (DCSDS) that constructs a
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`superframed multiplex that can include a plurality of encrypted service instances.
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`An overview of this process is shown in Fig. 2.
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`First, individual program (Fig. 2, Programs 1-N) components (video, audio,
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`data) are compressed and encrypted (Fig. 2; blocks labeled “E”). The encrypted
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`components are combined by a channelization element into a self-synchronized
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`bitstream (Sec. 4, par. 4). The output of several channelizers are combined, and
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`control and sync information are incorporated by the subframe multiplexer (Id.).
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`Multiple subframes are then merged by a superframe constructor (Id.).
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`
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`Entitlement information associated with encrypted service instances:
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`Wasilewski ‘92 describes each subframe in DCSDS has its own transport layer that
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`carries system encryption and frame control information (Sec. 5, par. 1). All
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`information needed for routing, demultiplexing, service selection/tuning,
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`5
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`decryption, packet error correction, and conditional access of an individual
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`subframe is handled by the transport layer (Id.). The DCSDS supports service- and
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`programmer-specific encryption and multiple non-interfering conditional access
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`data streams (Sec. 3.19). Signals received and decoded at the subscriber may have
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`originated from dozens or more service providers and each provider can have total
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`end-to-end security and conditional access control of its service bitstreams which
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`are being transmitted over a common physical network or networks (Id.).
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`
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`Wasilewski ‘92 describes that a large number of receive sites are broadcast
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`to in a multi-drop fashion from a smaller number of transmit sites (Sec. 3.20, par.
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`1). The receive sites each have a unique address by which they may be given
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`entitlement, tuning and other information (Id.).
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`In the system encryption structure in FIG. 11, Addressable Data Packets
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`(ADPs) carry information bound for specific decoders (Sec. 5.5, titled
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`“Addressable Data Packets”), are encrypted by the ADP Encrypt block and include
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`various keys and information (e.g., multi-session keys, broadcast keys, serial
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`numbers).
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`Entitlement information includes geographic reception information:
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`Wasilewski ‘92 describes that its conditional access system utilizes blackout
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`information to restrict access to certain subscribers that are usually located in a
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`common geographic area (Sec. 6.7, pars. 1-2). To enable blackout control, a
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`control computer assigns group codes to decoders (i.e., receivers or set-top boxes)
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`and transmits the group code the decoders using addressable data packets (ADPs)
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`(Sec. 6.7, par. 2). When a receiver receives the broadcast bitstream, which also
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`includes a blackout code, the receiver compares the received code with its own,
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`and will not authorize the service if there is a match (Id.).
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`Wasilewski ‘92 also describes a geographic-coordinate-based method of
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`blackout control in which the control computer makes the blackout assignments
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`and assigns both a group blackout code and a geographic (x,y) coordinate blackout
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`code to each decoder (Sec. 6.7, par. 3). The system data packet carries the group
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`code and/or a geographic centroid (x,y) and radius (r) for the blackout zone (Id.).
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`Each decoder uses an internally-stored location coordinate to calculate whether it is
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`within the blackout zone and will not authorize if it is (Id.).
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`Delivering encrypted service instance and associated entitlements:
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`5
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`Wasilewski ’92 describes that each set-top box is assigned a unique secret serial
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`number (SSN) at manufacture time, stored in a protected non-volatile memory
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`(NVM) within the die of a secure microprocessor. A control computer (Encoder
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`Management Computer) maintains an SSN database , and the encoder multiplexing
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`unit encrypts all addressed packets (ADPs) bound for a specific decoder. For
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`example, the Multi-session keys (MSKs) used to encrypt the session (service)
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`seeds are delivered in this fashion, as are the entitlements (Sec. 5.9.2, par. 1-2).
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`
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`Decryption of encrypted service instance and activation of display:
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`Wasilewski ‘92 describes a standard decoder (set-top box) with a video processor
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`that receives output from service decryptors (D). A block diagram of a "standard"
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`superframe decoder is shown in Fig. 13. The decoder obtains programming by
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`adjusting its tuner to a user specified channel (or frequency). After data sync is
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`obtained, the superframe multiplex map is interpreted. This allows the decoder to
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`select the correct subframe for demultiplexing (Sec. 5.1, par. 2).
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`.ECKHA!ߝ 5J=@=H@,A?@AH@A
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`
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`Once the subframe is acquired, the multiplex map is interpreted and the
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`appropriate channelized program bitstream is extracted by interpreting the virtual
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`channel map. The encrypted service seeds are likewise obtained from the transport
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`5
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`layer and are decrypted in the secure microprocessor using the proper pre-stored
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`broadcast key and/or MSK. The service decryptors (D) are initialized with their
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`seeds and produce the clear bitstreams to the video processor (Sec. 6.1, par. 3).
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`Use of entitlements to determine if a receiver is entitled to a program:
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`Wasilewski ‘92 describes entitlements that include geographical restriction
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`10
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`information to selectively deny/allow access to the received programming. When a
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`programming that includes geographic restriction information is received, each
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`decoder uses an internally-stored location coordinate to calculate whether it is
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`within the blackout zone and will not authorize if it is (Sec. 6.7, pars. 2-3).
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`Petition for Inter Partes Review of U.S. Pat. No. 6,744,892 B2
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`2.
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`Sheldrick
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`Sheldrick (Ex. 1003) was issued as U.S. Patent No. 5,506,904 to Patent
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`Owner on April 9, 1996, more than one year before the earliest effective priority
`
`date of August 1, 1997 for the claims of the 892 Patent. Therefore, Sheldrick
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`5
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`qualifies as prior art under 35 U.S.C. § 102(b) with respect to the 892 Patent.
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`Sheldrick was submitted as part of an information disclosure statement during the
`
`prosecution of the 892 Patent, but otherwise was not discussed, and was not relied
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`upon, by the Examiner.
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`Sheldrick describes a broadcast system (e.g., a cable or satellite system) for
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`10
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`providing programming to converters (e.g., receivers in a subscription service).
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`Sheldrick’s broadcast system includes blackout/spotlight information to allow only
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`a subset of receivers to decode broadcast programs based on their geographic
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`locations.
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`
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`Transmission of authorization codes: Sheldrick discloses that a converter
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`15
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`receives authorization codes (e.g., blackout and or spotlight codes) before the
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`converter is authorized to convert (i.e., decrypt) encrypted entitled content (e.g., a
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`television prog