IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of:
`
`Trial Number: To Be Assigned
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`
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`U.S. Patent No. 6,314,409
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`Filed: October 26, 1998
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`Issued: November 6, 2001
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`Inventor(s): Paul B. Schneck, Marshall D.
`Abrams
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`Assignee: Intellectual Ventures II LLC
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`Title: System for controlling access and
`distribution of digital property
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`Panel: To Be Assigned
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`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`
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`DECLARATION OF MR. WILLIAM ROSENBLATT UNDER 37 C.F.R.
`§ 1.68 IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,314,409
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`1
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`

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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`
`
`CONTENTS
`
`I.
`
`Introduction .................................................................................................... 5
`
`II.
`
`Background and Qualifications .................................................................... 8
`
`III. Understanding of Patent Law .....................................................................11
`
`IV. Background ..................................................................................................13
`
`A.
`
`Background of the Field Relevant to the ’409 Patent .........................13
`
`B.
`
`C.
`
`Summary of the ’409 Patent ................................................................13
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`Summary of the Prosecution History ..................................................14
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`V.
`
`Level of Ordinary Skill in the Pertinent Art .............................................16
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`VI. Broadest Reasonable Interpretation ..........................................................18
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`VII. Detailed Invalidity Analysis ........................................................................20
`
`A.
`
`Background on Prior Art References ..................................................21
`
`(i)
`
`Background on Digibox ............................................................21
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`(ii) Background on Cooper .............................................................23
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`(iii) Background on Stefik ...............................................................24
`
`B.
`
`The Challenged Claims are Invalid in View of Digibox and/or
`Stefik....................................................................................................26
`
`(i)
`
`Combining Digibox and Stefik .................................................27
`
`(ii)
`
`Independent Claim 23 of the ’409 Patent is Obvious in
`View of the Combination of Digibox and Stefik ......................32
`
`(iii)
`
`Independent Claim 24 of the ’409 Patent is Anticipated
`by Digibox .................................................................................46
`
`(iv)
`
`Independent Claim 25 of the ’409 Patent is Anticipated
`by Digibox .................................................................................50
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`(v) Dependent Claim 26 of the ’409 Patent is Obvious in
`View of the Combination of Digibox and Stefik ......................58
`
`(vi) Dependent Claim 27 of the ’409 Patent is Obvious in
`View of the Combination of Digibox and Stefik ......................61
`
`(vii) Dependent Claim 29 of the ’409 Patent is Obvious in
`View of the Combination of Digibox and Stefik ......................63
`
`(viii) Independent Claim 30 of the ’409 Patent is Anticipated
`by Digibox .................................................................................64
`
`(ix)
`
`Independent Claim 32 of the ’409 Patent is Anticipated
`by Digibox .................................................................................72
`
`(x)
`
`Independent Claim 33 of the ’409 Patent is Anticipated
`by Digibox .................................................................................80
`
`(xi)
`
`Independent Claim 36 of the ’409 Patent is Anticipated
`by Digibox .................................................................................90
`
`(xii) Dependent Claim 37 of the ’409 Patent is Obvious in
`View of the Combination of Digibox and Stefik ......................94
`
`(xiii) Independent Claim 38 of the ’409 Patent is Anticipated
`by Digibox .................................................................................98
`
`(xiv) Dependent Claim 39 of the ’409 Patent is Obvious in
`View of the Combination of Digibox and Stefik ....................105
`
`(xv) Dependent Claim 40 of the ’409 Patent is Anticipated by
`Digibox. ...................................................................................108
`
`C.
`
`The Challenged Claims are Invalid in View of Cooper and/or
`Stefik..................................................................................................111
`
`(i)
`
`Combining Cooper and Stefik ................................................111
`
`(ii)
`
`Independent Claim 23 of the ’409 Patent is is Obvious in
`View of the Combination of Cooper and Stefik .....................117
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`
`
`(iii)
`
`Independent Claim 24 of the ’409 Patent is Anticipated
`by Cooper ................................................................................138
`
`(iv)
`
`Independent Claim 25 of the ’409 Patent is Anticipated
`by Cooper ................................................................................151
`
`(v) Dependent Claim 26 of the ’409 Patent is Obvious in
`View of the Combination of Cooper and Stefik .....................169
`
`(vi) Dependent Claim 27 of the ’409 Patent is Obvious in
`View of the Combination of Cooper and Stefik .....................172
`
`(vii) Dependent Claim 29 of the ’409 Patent is Obvious in
`View of the Combination of Cooper and Stefik .....................176
`
`(viii) Independent Claim 30 of the ’409 Patent is Anticipated
`by Cooper ................................................................................178
`
`(ix)
`
`Independent Claim 32 of the ’409 Patent is Anticipated
`by Cooper ................................................................................192
`
`(x)
`
`Independent Claim 33 of the ’409 Patent is Anticipated
`by Cooper ................................................................................211
`
`(xi)
`
`Independent Claim 36 of the ’409 Patent is Anticipated
`by Cooper ................................................................................225
`
`(xii) Dependent Claim 37 of the ’409 Patent is Obvious in
`View of the Combination of Cooper and Stefik .....................239
`
`(xiii) Independent Claim 38 of the ’409 Patent is Anticipated
`by Cooper ................................................................................243
`
`(xiv) Dependent Claim 39 of the ’409 Patent is Obvious in
`View of the Combination of Cooper and Stefik .....................258
`
`(xv) Dependent Claim 40 of the ’409 Patent is Anticipated by
`Cooper. ....................................................................................261
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`D.
`
`Secondary Considerations of Non-Obviousness ...............................267
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`VIII. Conclusion ..................................................................................................269
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`I, William R. Rosenblatt, do hereby declare as follows:
`
`I.
`
`Introduction
`
`1.
`
`I have been retained as an expert witness on behalf of International
`
`Business Machines Corporation (“IBM”) with respect to the above-
`
`captioned Petition for Inter Partes Review (“IPR”) of U.S. Patent No.
`
`6,314,409 (“the ’409 Patent”). I am being compensated for my time in
`
`connection with this IPR at my standard consulting rate of $520 per hour.
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`My compensation is not affected by the outcome of this matter.
`
`2.
`
`I have been asked to provide my opinions regarding whether claims 1-11,
`
`13-21, 23-27 and 29-30, 32-33, and 36-40 (“the Challenged Claims”) of the
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`’409 Patent are invalid because they are anticipated or would have been
`
`obvious to a person having ordinary skill in the art at the time of the alleged
`
`invention.
`
`3.
`
`The ’409 Patent issued on November 6, 2001, from U.S. Patent Appl. No.
`
`09/178,606 (“the ’606 Application”) filed on October 26, 1998, which is a
`
`division of application No. 08/968,887 filed on November 5, 1997, which is
`
`a continuation of application No. 08/584,493 filed on January 11, 1996.
`
`(Ex. 1006.) I have been asked to assume that the priority date of the alleged
`
`invention recited in the ’409 Patent is January 11, 1996.
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`4.
`
`The face of the ’409 Patent names Paul B. Schneck and Marshal D. Abrams
`
`as the purported inventors and identifies Veridian Information Solutions as
`
`the purported assignee of the ’409 Patent. (Ex. 1006.) I have reviewed the
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`Patent Office “Assignments on the Web” record for the ’409 Patent. This
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`record indicates that the inventor originally assigned his interest in the ’606
`
`Application to The Mitre Corporation on or around January 10, 1996, which
`
`assigned its interest to MRJ, Inc. on or around December 15, 1997. MRJ,
`
`Inc. recorded a merger/change of name to Veridian Information Solutions,
`
`Inc. on April 6, 2000. Veridian Information Solutions granted a security
`
`interest in the ’409 Patent to Wachovia Bank on or June 10, 2002 and
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`August 11, 2003. Veridian Systems Division, Inc. then recorded a merger
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`with General Dynamics Advanced Information Systems, Inc. on or around
`
`January 1, 2005. General Dynamics Advanced Information Systems, Inc.
`
`assigned its interest to the ‘409 Patent to Beechtree Verifides Management
`
`LLC on or around August 22, 2006. Beechtree Verifides Management LLC
`
`granted a security interest in the ‘409 Patent to General Dynamics
`
`Advanced Information Systems, Inc. on or around August 31, 2006.
`
`Beechtree Verifides Management LLC recorded a merger with Verifides
`
`Technology Corp. on or around October 30, 2006. Verifides Technology
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`Corp. assigned its interest to the ‘409 Patent to Zofillip Pro Group LLC on
`
`or around September 16, 2009, which merged with Intellectual Ventures II
`
`LLC on or around May 23, 2013. (Ex. 1016.)
`
`5.
`
`In preparing this Declaration, I have reviewed the ’409 Patent, the file
`
`history of the ’409 Patent, and numerous technical references from the time
`
`of the alleged invention.
`
`6.
`
`I understand that claims in an IPR are given their broadest reasonable
`
`interpretation in view of the patent specification and the understandings of
`
`one having ordinary skill in the relevant art.
`
`7.
`
`In forming the opinions expressed in this Declaration, I relied upon my
`
`education and experience in the relevant field of the art, and have
`
`considered the viewpoint of a person having ordinary skill in the relevant
`
`art as of January 11, 1996. My opinions are based, at least in part, on the
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`following references, none of which were considered during prosecution of
`
`the ‘409 patent:
`
`Reference
`
`Date of Public Availability
`
`The conference took place July 11-
`12, 1995, and the proceedings were
`made available to attendees.
`
`Olin Sibert, David Bernstein, and
`David Van Wie, DigiBox: A Self-
`Protecting Container for
`Information Commerce. In
`Proceedings of the First USENIX
`Workshop on Electronic Commerce,
`New York, NY, July 11-12, 1995
`
`7
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`(“Digibox”).
`
`
`
`Mark Stefik, Letting Loose the
`Light: Igniting Commerce in
`Electronic Publication. Xerox
`PARC technical paper, February 8,
`1995.
`
`Distributed publicly no later than
`March 1995.
`
`U.S. Patent No. 5,689,560 to
`Cooper, et al. (“Cooper”)
`
`Cooper was filed on April 25, 1994
`and issued on November 18, 1997.
`
`II. Background and Qualifications
`
`8.
`
`I am an expert in the field of digital rights management, and have been an
`
`expert in that field since at least 2001. In formulating my opinions, I have
`
`relied upon my training, knowledge, and experience in the relevant art. A
`
`copy of my curriculum vitae is provided as Appendix A to this Declaration
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`(Ex. 1002) and provides a comprehensive description of my relevant
`
`experience, including academic and employment history.
`
`9.
`
`I am currently employed as president of GiantSteps Media Technology
`
`Strategies, a consulting firm that I founded in June 2000.
`
`10.
`
`I received a B.S.E degree cum laude in Electrical Engineering and
`
`Computer Science from Princeton University in 1983. I subsequently
`
`received a M.S. degree in Computer and Information Science from the
`
`University of Massachusetts in 1990, and I completed coursework and
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`examinations toward a Ph.D. in that field at the same university.
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`11. Before founding GiantSteps in June 2000, I held IT management positions
`
`in two large publishing and media companies: Times Mirror Co. (Director
`
`of Publishing Systems, 1994-1996) and McGraw-Hill Cos. (VP of
`
`Technology and New Media, 1999). In between those two positions, I
`
`worked at Sun Microsystems in a series of positions related to the media
`
`and publishing market as a pre-sales consultant and market strategist. I
`
`began my professional career as a software engineer at Motorola, where I
`
`developed software for data communications equipment. Immediately
`
`before founding GiantSteps, I was Chief Technology Officer of
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`Fathom.com, an e-learning startup company founded by Columbia
`
`University.
`
`12. A large portion of my consulting practice at GiantSteps concerns “rights
`
`technologies,” i.e., technologies for addressing copyright infringement
`
`(“piracy”) and content licensing such as digital rights management (DRM),
`
`software anti-piracy, and digital watermarking. I am the author of the book
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`Digital Rights Management: Business and Technology (Wiley, 2001), the
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`chapter “Digital Rights and Digital Television” in Television Goes Digital
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`(Springer, 2010), and several articles and white papers on technologies for
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`managing rights to digital content. (see Ex. 1003.)
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`13.
`
`I am currently the editor of the industry blog Copyright and Technology
`
`(copyrightandtechnology.com) and program chair of the Copyright and
`
`Technology conferences. I have spoken at other conferences on five
`
`continents (including the World Economic Forum in Davos, Switzerland)
`
`and guest lectured at several universities and law schools on related subject
`
`matter.
`
`14.
`
`I have consulted for several technology vendors (including vendors of
`
`rights technologies as described above), content owners (including film
`
`studios, record labels, and publishers), and service providers on issues
`
`related to rights technologies and related subject matter, and I have
`
`contributed to the designs of digital rights management systems for digital
`
`music and e-books. I am familiar with dozens of rights technologies that
`
`have been on the market since the late 1990s. I have consulted for or
`
`testified before public policy bodies in the United States and Europe on this
`
`subject matter, including the U.S. Copyright Office, Federal Trade
`
`Commission, National Academies, Business Software Alliance, and
`
`European Commission.
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`
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`III.
`
`Understanding of Patent Law
`
`15.
`
`I understand that prior art to the ’409 Patent includes patents and printed
`
`publications in the relevant art that predate the January 11, 1996, filing date
`
`of the ’409 Patent.
`
`16.
`
`I understand that a claim is invalid if it is anticipated or obvious.
`
`Anticipation of a claim requires that every element of a claim be disclosed
`
`expressly or inherently in a single prior art reference, in combination, as
`
`claimed. Obviousness of a claim requires that the claim be obvious from
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`the perspective of a person having ordinary skill in the relevant art at the
`
`time the alleged invention was made. I understand that a claim may be
`
`obvious from a combination of two or more prior art references.
`
`17.
`
`I understand that an obviousness analysis requires an understanding of the
`
`scope and content of the prior art, any differences between the alleged
`
`invention and the prior art, at the level of ordinary skill in the pertinent art.
`
`18.
`
`I further understand that certain factors may support or rebut the
`
`obviousness of a claim. I understand that such secondary considerations
`
`include, among other things, commercial success of the patented invention,
`
`skepticism of those having ordinary skill in the art at the time of invention,
`
`unexpected results of the invention, any long-felt but unsolved need in the
`
`art that was satisfied by the alleged invention, the failure of others to make
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`the alleged invention, praise of the alleged invention by those having
`
`ordinary skill in the art, and copying of the alleged invention by others in
`
`the field. I understand that there must be a nexus—a connection—between
`
`any such secondary considerations and the alleged invention. I also
`
`understand that contemporaneous and independent invention by others is a
`
`secondary consideration tending to show obviousness.
`
`19.
`
`I further understand that a claim is obvious if it unites old elements with no
`
`change to their respective functions, or alters prior art by mere substitution
`
`of one element for another known in the field and that combination yields
`
`predictable results. While it may be helpful to identify a reason for this
`
`combination, common sense should guide and no rigid requirement of
`
`finding a teaching, suggestion or motivation to combine is required. When
`
`a product is available, design incentives and other market forces can prompt
`
`variations of it, either in the same field or different one. If a person having
`
`ordinary skill in the relevant art can implement a predictable variation,
`
`obviousness likely bars its patentability. For the same reason, if a technique
`
`has been used to improve one device and a person having ordinary skill in
`
`the art would recognize that it would improve similar devices in the same
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`way, using the technique is obvious. I understand that a claim may be
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`obvious if common sense directs one to combine multiple prior art
`
`references or add missing features to reproduce the alleged invention
`
`recited in the claims.
`
`IV. Background
`
`A. Background of the Field Relevant to the ’409 Patent
`
`20.
`
`In the early 1990s, increasing numbers of copyrighted works, including
`
`software as well as documents, books, music, video, etc., were being
`
`distributed in digital form, including physical digital storage media (e.g.,
`
`CD-ROMs) as well as digital data sent over communications networks.
`
`These were subject to large-scale unauthorized copying at very low cost and
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`with no loss of fidelity, thus impairing the revenues of and potentially
`
`infringing the copyrights of the works’ owners. This has become known as
`
`the “digital piracy” problem. The ‘409 patent and all of the prior art
`
`references discussed herein are directed to addressing the digital piracy
`
`problem.
`
`B.
`
`Summary of the ’409 Patent
`
`21. The ‘409 patent purports to solve the digital piracy problem via a system for
`
`secure distribution of digital data, which could be software or “content”
`
`(documents, music, video, etc.). It teaches protecting data through
`
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`mechanisms such as encryption while also distributing it “openly,” e.g.,
`
`over unprotected communications or transportation networks.
`
`22. The ‘409 patent further discloses rules governing access to the data and an
`
`access mechanism that ensures that a recipient can only access it in
`
`accordance with the rules. Rules can govern access to data for purposes
`
`such as display, printing, copying, execution (of software), or the like.
`
`Rules are also distributed in encrypted form, to help prevent users from
`
`altering or eliminating them.
`
`C.
`
`Summary of the Prosecution History
`
`23. Application No. 08/968,887 was filed on October 26, 1998 with claims 1-
`
`80. A preliminary amendment was filed, which canceled claims 1-30,
`
`amended claim 30 and added claims 81-93. (Ex. 1007 at 060.)
`
`24. On April 4, 1999, the examiner issued a non-final rejection as to all pending
`
`claims (claims 30 and 81-93) under 35 U.S.C. §101 primarily because the
`
`claims were directed to non-statutory subject matter “storage device” and
`
`“rules.” (Ex. 1007 at 215.) On July 7, 1999, Applicant amended claims 30
`
`and 88 and then added claims 94-119. (Ex. 1007 at 218.)
`
`25. On July 15, 1999, the examiner issued an informal office action seeking
`
`more explanation as to the issues pending under 35 U.S.C. §101, primarily
`
`the non-statutory subject matter “rules.” (Ex. 1007 at 231.) In August 1999,
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`the applicant canceled claims 30 and 88 and replaced with new claims 120-
`
`121. (Ex. 1007 at 233.)
`
`26. On September 16, 1999, the patent office mailed a Final Rejection as to all
`
`pending claims under 35 U.S.C. §§101 and 112. On December 16, 1999,
`
`the applicants filed an amendment after final, canceling and amending
`
`claims. (Ex. 1007 at 240.)
`
`27.
`
` On December 29, 1999, the Patent Office issued a communication stating
`
`that it would not enter the amendment. On December 30, 1999, the
`
`applicants held an interview with the examiner and resolved to seek
`
`reconsideration after final amendment. On January 4, 2000 the applicant
`
`requested reconsideration of the December 16, 1999 amendment. (Ex. 1007
`
`at 263.)
`
`28. On February 16, 2000 the patent office allowed all pending claims.
`
`29. On April 14, 2000, the examiner withdrew allowance of all claims and
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`rejected all claims under 35 U.S.C. §§101, 102, 103 and 112. On July 14,
`
`2000, the applicant amended the claims and responded to the rejections.
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`(Ex. 1007 at 282.)
`
`30. On July 26, 2000 the applicant and examiner held an interview and resolved
`
`that the applicants would submit supplemental arguments relating to the
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`
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`prior art and then the claims would be allowed. The Applicants submitted
`
`remarks on July 27, 2000. (Ex. 1007 at 316.)
`
`31. The claims were allowed in a September 29, 2000 Notice of Allowance
`
`and, after a terminal disclaimer was filed, in an August 2, 2001 Notice of
`
`Allowance. An examiner’s amendment was also filed on August 2, 2001.
`
`(Ex. 1007.)
`
`32. The ‘409 patent issued on November 6, 2001. (Ex. 1006 at 001.)
`
`V.
`
`Level of Ordinary Skill in the Pertinent Art
`
`33.
`
`I have been advised that there are multiple factors relevant to determining
`
`the level of ordinary skill in the pertinent art, including the educational level
`
`of active workers in the field at the time of the alleged invention, the
`
`sophistication of the technology, the type of problems encountered in the
`
`art, and the prior art solutions to those problems.
`
`34. As mentioned above, the ‘409 patent is generally directed to the issue of
`
`digital piracy. This involves cryptography as a basic technique of
`
`protecting content from unauthorized use; it also can involve the technology
`
`of digital media, such as file formats and methods of digital media
`
`distribution.
`
`35. Someone working in the field of digital media who had a need to address
`
`the digital piracy problem would need a background that includes a
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`bachelor’s degree in computer science, computer engineering, or a similar
`
`field, and/or equivalent work experience. He would also need at least five
`
`years of practical experience in software or computer systems engineering.
`
`36. As part of his education and training, he would be familiar with well-known
`
`cryptographic techniques at a high level, so that, for example, he would be
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`capable of selecting cryptographic algorithms appropriate to his purpose,
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`and of writing software that calls operating system library routines that
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`implement them without necessarily understanding how such routines work.
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`37. Specifically, he would be familiar with two predominant types of
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`cryptography: symmetric-key and public-key (a/k/a asymmetric-key)
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`cryptography. In symmetric-key cryptography, the same key is used to
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`encrypt and decrypt data. In public-key cryptography, the sender and
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`recipient of a secret message both have two keys: a public key and a private
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`key. The two keys are mathematically related, but it is extremely difficult
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`to derive one key from the other. The use of symmetric-key cryptography
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`for digital data on computers became widespread in the late 1970s when the
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`Data Encryption Standard (DES), developed at IBM Corp., was adopted as
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`a U.S. government standard. Public-key cryptography was invented around
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`the same time and first became popular via the RSA algorithm, published in
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`1977 and named for the initials of the last names of its inventors (Ronald
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`Rivest, Adi Shamir, and Leonard Adleman, all at MIT). By the mid-1990s,
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`both algorithms were in wide use and would have been readily available to
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`software developers as library routines, meaning that developers could use
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`them as “black boxes” without necessarily understanding their inner
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`workings. Further, he would be generally familiar with digital certificates,
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`which are documents containing encrypted data that attest to (certify) a fact,
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`such as the identity of the entity that created an item of data or that the data
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`has not been altered since it was created.
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`38. He would also be familiar with the ways in which “media products” (e.g.,
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`documents, music tracks, video clips) were encoded and stored in digital
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`form; the ways in which they were distributed to users, whether physically
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`or over communications networks; and the ways in which digital media can
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`be rendered (reproduced) for human consumption on computers and other
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`digital devices. Finally, he would understand how to apply well-known
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`cryptographic techniques (see immediately above) to data that represents
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`media content.
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`VI. Broadest Reasonable Interpretation
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`39.
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`I understand that IBM has proposed the following constructions for terms
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`used in the Challenged Claims in the Petition for IPR. I consider these
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`constructions to be reasonable to one of ordinary skill in the art at the time
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`of the invention:
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`40. Openly distributed: “sent over an openly accessible channel.”
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`41.
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`Internal rule: “built-in rule which limits the functionality of the device
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`regarding data access.”
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`42. Means for generating: This is a means plus function term where the
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`function is “generating the output signal from the accessed data” and the
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`structure is “one or more devices inputting signals into the I/O controller
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`and the I/O controller.”
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`43. Means for storing/storage means: This is a means plus function term where
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`the function is “storing the rules” and the structure is “computer storage.”
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`44. Means for displaying: This is a means plus function term where the
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`function is “displaying the images represented by the accessed data” and the
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`structure is “a display monitor.”
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`45. Means for outputting: This is a means plus function term where the function
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`is “outputting the images represented by the accessed data” or in some
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`claims “outputting the output signal represented by the accessed data” and
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`the structure is “I/O controller and associated display monitor or printer.”
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`46. Virtual machine: “a computing environment that maintains various levels of
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`operation, in which operations at one level can access the level(s) below it.”
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`47.
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`I apply IBM’s constructions as the broadest reasonable interpretations in
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`view of the specification for purposes of my Declaration in support of this
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`IPR. To the extent these terms are construed more broadly than IBM’s
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`proposed constructions, the Challenged Claims are even more easily
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`invalidated.
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`VII.
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`Detailed Invalidity Analysis
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`48.
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`I have been asked to provide an opinion as to whether the Challenged
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`Claims of the ’409 Patent are invalid in view of the prior art. The
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`discussion below provides a detailed invalidity analysis of how the prior art
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`references identified in Section I invalidate the Challenged Claims of the
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`’409 Patent.
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`49. As part of my obviousness analysis, I have considered the scope and
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`content of the prior art, and whether any differences between the alleged
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`invention and the prior art are such that the subject matter, as a whole,
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`would have been obvious to a person having ordinary skill in the art at the
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`time of the alleged invention. I took the time of the alleged invention to be
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`the priority date of the application that issued as the ’409 Patent—January
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,409
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`11, 1996. I have also considered the level of ordinary skill in the pertinent
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`art.
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`50.
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`I describe in detail below the scope and content of the prior art, as well as
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`any differences between the alleged invention and the prior art, on an
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`element-by-element basis for each Challenged Claim of the ’409 Patent. At
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`most, there are only minor differences between the identified prior art
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`references and the alleged invention recited in the Challenged Claims of the
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`’409 patent.
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`A. Background on Prior Art References
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`51. Before providing a detailed analysis of how the prior art invalidates the
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`Challenged Claims, I provide a brief summary of the prior art references.
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`(i)
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`Background on Digibox
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`52. Digibox is a paper that was published in the proceedings of the First
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`USENIX Workshop on Electronic Commerce, which was held in New York
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`City in July 1995. The proceedings were published and made available to
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`attendees at the conference.
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`53. Of the authors of Digibox, I have known Olin Sibert for several years and
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`have worked with him on occasional projects. The authors’ company,
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`Electronic Publishing Resources, changed
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`its name
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`to
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`InterTrust
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`Technologies (after the name of the technology described in the paper)
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`Declaration of Mr. William Rosenblatt Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,314,4