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. 6,857,067
`
`Currently in Litigation Styled: Uniloc USA, Inc.
`and Uniloc Luxembourg S.A. v. Distinctive
`Developments, Inc., Case No. 6:12-cv-00462-LED
`
`Issued: February 15, 2005
`
`Filed: February 26, 2001
`
`Applicant: Martin S. Edelman
`
`Title: System and Method for Preventing
`Unauthorized Access to Electronic Data
`
`Mail Stop Inter Partes Review
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`DECLARATION OF DR. JUSTIN DOUGLAS TYGAR
`
`I, Justin Douglas Tygar, hereby declare the following:
`BACKGROUND AND EDUCATION
`I.
`1.
`I am a Professor of Computer Science and Electrical Engineering at the
`
`University of California (“UC”), Berkeley and a Professor in the School of Information at
`
`the UC Berkeley. Although I discuss my expert qualifications in more detail below, I
`
`also attach as [Exhibit 1009] a recent and complete curriculum vitae, which details my
`
`educational and professional background.
`
`2.
`
`I have been a professor since 1986. From 1986 to 1998, I was a professor
`
`(and received tenure) at Carnegie Mellon University in its Computer Science Department.
`
`In 1998, I moved to UC Berkeley, assuming my current tenured position.
`
`
`
`1
`
`PETITIONERS Ex. 1008 Page 1
`
`
`
`
`
`
`PETITION FOR INTER PARTES
`REVIEW PURSUANT TO 37
`C.F.R. § 42.100 ET SEQ.
`
`In re U.S. Patent No. 6,857,067
`
`Currently in Litigation Styled: Uniloc USA, Inc.
`and Uniloc Luxembourg S.A. v. Distinctive
`Developments, Inc., Case No. 6:12-cv-00462-LED
`
`Issued: February 15, 2005
`
`Filed: February 26, 2001
`
`Applicant: Martin S. Edelman
`
`Title: System and Method for Preventing
`Unauthorized Access to Electronic Data
`
`Mail Stop Inter Partes Review
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`DECLARATION OF DR. JUSTIN DOUGLAS TYGAR
`
`I, Justin Douglas Tygar, hereby declare the following:
`BACKGROUND AND EDUCATION
`I.
`1.
`I am a Professor of Computer Science and Electrical Engineering at the
`
`University of California (“UC”), Berkeley and a Professor in the School of Information at
`
`the UC Berkeley. Although I discuss my expert qualifications in more detail below, I
`
`also attach as [Exhibit 1009] a recent and complete curriculum vitae, which details my
`
`educational and professional background.
`
`2.
`
`I have been a professor since 1986. From 1986 to 1998, I was a professor
`
`(and received tenure) at Carnegie Mellon University in its Computer Science Department.
`
`In 1998, I moved to UC Berkeley, assuming my current tenured position.
`
`
`
`1
`
`PETITIONERS Ex. 1008 Page 1
`
`
`
`3.
`
`I perform research and teach classes in the fields of computer security,
`
`electronic commerce, and software engineering. Since my initial appointment as a
`
`professor in 1986 and continuing to the present day, I have taught courses to
`
`undergraduates, masters students, and Ph.D. students on a variety of topics related to
`
`computer security, electronic commerce, and software engineering. Starting in the 1990s
`
`and continuing to today, I regularly lecture on digital rights management systems.
`
`4.
`
`I received the Ph.D. Degree from Harvard University in Computer Science,
`
`and my A.B. Degree from UC Berkeley.
`
`5.
`
`I am an expert in the fields of computer security, computer networking, and
`
`electronic commerce, including without limitation digital rights. Although I discuss my
`
`expert qualifications in more detail below, I also attach as a recent and complete
`
`curriculum vitae, which details my educational and professional background.
`
`6.
`
`I have received research grants or contracts in the field of computer security
`
`from the U.S. National Security Agency, the U.S. National Science Foundation, the U.S.
`
`Department of Defense Advanced Research Projects Agency, the U.S. Naval Research
`
`Office, the U.S. Air Force Office of Sponsored Research, the Taiwan National Science
`
`Council, as well as from numerous private companies including IBM, Lockheed, and
`
`Microsoft. I have given several hundred presentations on computer security to
`
`government agencies, as keynote addresses at major conferences, and at leading research
`
`universities all over the world.
`
`7.
`
`I helped design several systems for electronic commerce and several
`
`systems for electronic commerce and digital rights management. In the mid-1990s, I
`
`
`
`2
`
`PETITIONERS Ex. 1008 Page 2
`
`
`
`helped design Strongbox software and the Dyad secure coprocessor system which was
`
`ultimately used as a software platform by IBM for its IBM 4758 and 4764 devices which
`
`support secure electronic commerce and digital rights management.
`
`8.
`
`I helped design and build the NetBill system which was an early electronic
`
`payment system. My NetBill work was captured in U.S. patents relating to the secure
`
`purchase of digital goods over a network. The first, U.S. Patent No. 5,809,144 is entitled,
`
`“Method and Apparatus for purchasing and delivering digital goods over a network,”
`
`while my second patent is U.S. Patent No. 6,076,078 and is entitled “Anonymous
`
`Certified Delivery.” In cooperation with Visa International, Mellon Bank, and the
`
`Defense Advanced Research Projects Agency, I co-directed a research group that
`
`demonstrated and built NetBill. Ultimately NetBill was licensed and used by CyberCash
`
`(later acquired by Verisign).
`
`9.
`
`From 1994 through 2006, I received major research contracts from the U.S.
`
`Postal Service for research in advanced postal technologies. I developed a two-
`
`dimensional bar-coding standard for a full closed-loop solution to protect envelope
`
`images including postal indicia that represent payment for postal services. My two-
`
`dimensional bar-code provides a full-closed system that detects postage meter fraud,
`
`changes to envelope data, and errors in scanning. My work became the basis of the U.S.
`
`Postal Service’s standards for Information Based Indicia (to which I was a major
`
`intellectual contributor.) These standards have been adopted, in modified form, by many
`
`different countries in the United Nation’s agency Universal Postal Union. I served on the
`
`U.S. Postal Service Mail Technology Strategy Council.
`
`
`
`3
`
`PETITIONERS Ex. 1008 Page 3
`
`
`
`10. Almost all American adults who receive mail have been exposed to my
`
`two-dimensional closed-loop bar-code standard. The majority of US metered mail now
`
`uses my standard (although there are still some older grandfathered postage metering
`
`equipment that predates my standard and is grandfathered by the US Postal Service.)
`
`Every postage meter indicia vendor, whether it is an equipment maker (such as Pitney-
`
`Bowes) or an Internet vendor (such as Endicia) makes indicia that conform with the US
`
`Postal Service’s two-dimension bar code standard – a standard that is fully based on my
`
`research work.
`
`11.
`
`Throughout the 1990s and on to the 2000s, I was actively involved in
`
`initiatives in digital rights management. I participated (and presented research) in the
`
`first major conference on digital rights management; the Coalition for Network
`
`Information’s 1994 “Technological Strategies for Protecting Intellectual Property in the
`
`Networked Multimedia Environment,” co-sponsored by Kennedy School of Government
`
`at Harvard University and the Massachusetts Institute of Technology.
`
`12.
`
`I was one of three founders of the major scientific group in the field of
`
`electronic commerce, SIGECOM, the Association of Computing Machinery’s Special
`
`Interest Group in Electronic Commerce. I ran a number of conferences in electronic
`
`commerce, including the 1996 Second USENIX Workshop on Electronic Commerce.
`
`13.
`
`IBM retained me as a consultant in 1995-6 to help IBM review companies
`
`focusing on digital rights management that IBM was considering for purchase or
`
`investment. One company that I reviewed during that time period was Electronic
`
`Publishing Resources (later known as Intertrust).
`
`
`
`4
`
`PETITIONERS Ex. 1008 Page 4
`
`
`
`14.
`
`I am the current coordinator of UC Berkeley’s TRUST Center. TRUST,
`
`the Team for Research in Ubiquitous Security Technologies, is the National Science
`
`Foundation's major Science and Technology Center in computer security. UC Berkeley
`
`is the headquarters of this effort, which also includes Stanford University, Carnegie
`
`Mellon University, Cornell University, and Vanderbilt University.
`
`15.
`
`I served as chair of the Department of Defense’s Information Science and
`
`Technology Study Group in Security with Privacy. I have consulted widely in both
`
`industry and government, both inside and outside the United States in the fields of
`
`computer security. I have won numerous awards, including the National Science
`
`Foundation’s Presidential Young Investigator Award and the (Japanese) Okawa
`
`Foundation Fellowship Award.
`
`16.
`
`I have written three books in the field of computer security. I have also
`
`written widely in the fields of general computer security. A list of my publications is
`
`included as part of my CV attached to this declaration.
`
`17.
`
`In sum, I have over thirty years of experience in the computer science
`
`industry as a professor, consultant and an inventor. During this time, I have worked
`
`extensively with computer security protocols, software programming and networking of
`
`computers, digital rights management and have witnessed first-hand the evolution of
`
`computer security, including specifically digital rights management.
`
`18.
`
`I am submitting this declaration to offer my independent expert opinion
`
`concerning certain issues raised in the petition for inter partes review (“Petition”). My
`
`compensation is not based on the substance of the opinions rendered here. As part of my
`
`
`
`5
`
`PETITIONERS Ex. 1008 Page 5
`
`
`
`work in connection with this matter, I have studied U.S. Patent No. 6,857,067 (the “‘067
`
`patent”), including the respective written descriptions, figures, and claims. I have also
`
`reviewed the Petition for Inter Partes Review of the ‘067 patent. I have also carefully
`
`considered the following references:
`
`• U.S. Patent No. 7,036,011 to Grimes, et al., filed June 29, 2001 and
`claiming priority to a provisional application filed on June 29, 2000, and
`issued April 25, 2006 (“Grimes”). [Exhibit 1005]
`
`• U.S. Patent No. 7,032,440 to Cronce, et al., filed February 14, 2000, and
`issued April 18, 2006 (“Cronce”). [Exhibit 1002].
`
`• Bill Rosenblatt, Bill Trippe, and Stephen Mooney, Digital Rights
`Management Business
`and Technology, M&T Books
`(2002)
`(“Rosenblatt”). [Exhibit 1010]
`
`• Mark Stefik, “Letting Loose the Light: Igniting Commerce in Electronic
`Publication” published in Internet Dreams: Archetypes, Myths, and
`Metaphors, MIT Press (1996) (“Stefik”). [Exhibit 1011]
`
`OPINION
`A.
`Level of a Person Having Ordinary Skill in the Art
`19.
`In my view a person of ordinary skill in the field of digital rights
`
`
`
`
`
`II.
`
`management in 2001 would have a B.S. in computer science or related engineering
`
`discipline and at least two years in the software development industry or equivalent
`
`experience or education. The person would also have some knowledge of data
`
`encryption/decryption techniques, networking of computers, databases, programming of
`
`microprocessors/microcontrollers, and digital rights management systems and their
`
`implementation.
`
`B.
`
`Background of Digital Rights Management Systems
`
`
`
`6
`
`PETITIONERS Ex. 1008 Page 6
`
`
`
`20.
`
`It is my understanding that the patent owner claims the priority date of the
`
`‘067 Patent is February 26, 2001. Digital rights management (“DRM”) systems that
`
`incorporated the concepts described and claimed in the ‘067 Patent were well-known in
`
`the art before the priority date of the ‘067 Patent. Starting in the late 1970s, DRM
`
`systems were available to protect electronic content on an electronic device. See e.g. ,
`
`Rosenblatt at pp. x-xi. At this time, hardware keys, such as dongles, were being used to
`
`prevent unauthorized copying of software distributed on floppy disks. Id. With the rise
`
`of the Internet in the mid-1990s, the piracy of software became a real threat to the
`
`software industry, and companies actively developed new methods to protect their
`
`electronic content. Id at pp. xi-xiii. Consequently, the DRM solution market experienced
`
`rapid growth in the late 1990s and early 2000s. Id. at p. 261.
`
`21.
`
`In 1996, Dr. Mark Stefik defined a networked DRM paradigm enabling
`
`users to store protected content on their portable “repository.” According to Stefik,
`
`“repositories could be portable entertainment devices, laptop readers, personal computers,
`
`credit-card-sized devices, [etc.] . . . . [used to] store digital works, together with their
`
`usage rights.” Stefik at p. 40. Stefik also contemplated using an “authorization server” to
`
`validate license data stored on the user’s repository prior to allowing access to a protected
`
`work. Id. at p. 21. By the late 1990s there were several commercially available systems
`
`implementing similar DRM architectures, including, for example, Musicrypt, Inc., which
`
`sold a system using a server to remotely monitor and update license data stored on users’
`
`personal computers and portable devices. See e.g., Rosenblatt at pp. 231-232.
`
`
`
`7
`
`PETITIONERS Ex. 1008 Page 7
`
`
`
`22.
`
`The prior art identified in the Petition illustrates the concepts described
`
`above that were claimed in the ‘067 Patent. For instance, Grimes and Cronce both
`
`describes a digital rights management system that controls access to protected content on
`
`a user machine by communicating with a server. Grimes at Abstract; Cronce at Abstract.
`
`In addition, Cronce provides an informative example of the state of the art in software
`
`protection during the relevant timeframe. See generally Cronce. More specifically,
`
`Grimes discloses a removable storage device that contains digital certificates for
`
`permitting access to protected content on a user machine, which can itself be portable,
`
`such as a palmtop computer. Grimes, at 4:36-41, 5:12-18, 10:30-32, 12:13-25. Grimes
`
`also describes communicating with a DRM server to verify the digital certificate on a
`
`user’s machine. Grimes, at 9:38-60, 10:53-11:19. Cronce also teaches verifying license
`
`data and, further teaches, updating the license data on a removable memory based on
`
`communications with an external licensing server. Cronce, at 5:35-37, 6:10-16. Upon
`
`reading the teachings of Cronce, a person of ordinary skill would have realized that the
`
`DRM server of Grimes could also be used to update the digital certificate information on
`
`the secondary storage device.
`
`23. At the time of the ‘067 Patent, persons having ordinary skill in the art were
`
`motivated to embrace technological advances, and combining various features from prior
`
`art DRM systems, like those discussed above, would have been obvious to such skilled
`
`persons. In addition, the computer industry, as with most industries, was interested in
`
`providing the most functionalities to their products at the lowest cost. Thus, combining
`
`functionalities from various known systems would not only be obvious, but desirable.
`
`
`
`8
`
`PETITIONERS Ex. 1008 Page 8
`
`
`
`Most important, the providers of electronic content were constantly looking for ways to
`
`protect their investment from losses associated with copyright infringement. Such
`
`combinations would have yielded predictable results using known methods in the art.
`
`Thus, a software vendor would have been led to modify the teachings of Grimes in order
`
`to provide a more efficient and cost effective way to provide updated software license
`
`data to its users as taught by Cronce.
`
`C. Grimes and Cronce
`
`24. While claims 1, 67, 107 and 108 are worded a little differently and directed
`
`to a system, a method, computer code and a computer program, respectively, it is my
`
`opinion that they disclose the same basic concepts that are obvious in view of the prior
`
`art. Specifically, claims 1, 67, 107 and 108 all describe the following four concepts: (1)
`
`storing license data on a portable licensing medium; (2) allowing access to electronic
`
`content on an electronic device based on the license data; (3) verifying the license data by
`
`communicating with an external authority that has license verification data; and, (4)
`
`providing updated license data received from the external authority to the portable
`
`licensing medium.
`
`25.
`
`It is my opinion that it would have been obvious to a person having
`
`ordinary skill in the art to combine the system described in Grimes to provide the
`
`functionality of providing updated license data to the licensing medium taught by Cronce.
`
`For instance, as discussed above, both references describe systems for preventing
`
`unauthorized access to electronic content on an electronic device through a licensing
`
`medium. Grimes at Abstract, 3:4-13; Cronce at Abstract, 4:48-5:16. Further, both
`
`
`
`9
`
`PETITIONERS Ex. 1008 Page 9
`
`
`
`references describe communicating with a server to determine access to electronic
`
`content based on the license data. Grimes at 9:38-60, 12:15-25, 12:62-13:3; Cronce at
`
`8:3-7, 8:22-24, 3:56-59, Fig. 2. The systems of Grimes and Cronce also describe
`
`verifying the license data by communicating with a server. See Grimes at 9:38-60, 10:53-
`
`11:19; Cronce at 15:39-58, Figs. 9 and 10. Specifically, as to all of the challenged claims,
`
`Cronce teaches the functionality of providing updated license data to the license medium.
`
`Cronce at 5:35-43, 5:53-65. The update occurs based on license information received
`
`from the license server, such as information demonstrating an expired or modified
`
`license. See id. As I discussed above, skilled artisans in the software protection industry
`
`were motivated by the marketplace to embrace technological sophistication and
`
`advances. And addition of the desirable functionality of providing updated digital
`
`certificate data based on information received from a DRM server as taught by Cronce to
`
`the system of Grimes would have yielded predictable results, and the combination of
`
`these familiar elements could have been accomplished using known methods in the art.
`
`III. CONCLUSION
`26.
`I declare under penalty of perjury that the above statements are true and
`correct.
`
`Date:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`____________________________
`By:
`Justin Douglas Tygar
`
`10
`
`
`
`
`
`
`PETITIONERS Ex. 1008 Page 10
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
