Paper 12
`Trials@uspto.gov
`571-272-7822 Entered: June 19, 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`ZTE CORPORATION AND ZTE (USA) INC.
`Petitioner
`
`v.
`
`CONTENTGUARD HOLDINGS INC.
`Patent Owner
`____________
`
`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`____________
`
`
`
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`
`ZECHER, Administrative Patent Judge
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Petitioner Apple Inc. - Ex. 1034, p. 1
`
`
`Trials@uspto.gov
`571-272-7822 Entered: June 19, 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`ZTE CORPORATION AND ZTE (USA) INC.
`Petitioner
`
`v.
`
`CONTENTGUARD HOLDINGS INC.
`Patent Owner
`____________
`
`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`____________
`
`
`
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`
`ZECHER, Administrative Patent Judge
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Petitioner Apple Inc. - Ex. 1034, p. 1
`
`
`
`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`
`
`I. INTRODUCTION
`
`ZTE Corporation and ZTE (USA) Inc. (“ZTE”) filed a petition
`
`(“Pet.”) requesting inter partes review of claims 1-38 of U.S. Patent No.
`
`7,225,160 (“the ‟160 patent”). Paper 3. In response, Patent Owner,
`
`ContentGuard Holdings Inc. (“ContentGuard”), filed a preliminary response
`
`(“Prel. Resp.”). Paper 9. We have jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in
`
`35 U.S.C. § 314(a), which provides:
`
`THRESHOLD --The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`For the reasons set forth below, we conclude that the information
`
`presented in the petition demonstrates that there is a reasonable likelihood
`
`that ZTE will prevail in establishing claims 12-22 and 30-38 as
`
`unpatentable. However, we conclude that the information presented in the
`
`petition does not demonstrate that there is a reasonable likelihood that ZTE
`
`will prevail in establishing claims 1-11 and 23-29 as unpatentable. Pursuant
`
`to 35 U.S.C. § 314, we hereby authorize an inter partes review to be
`
`instituted only as to claims 12-22 and 30-38 of the ‟160 patent.
`
`A. Related Matters
`
`ZTE indicates that the ‟160 patent was asserted against it in
`
`ContentGuard Holdings Inc. v. ZTE Corporation et al., Civil Action No.
`
`2
`
`Petitioner Apple Inc. - Ex. 1034, p. 2
`
`
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`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`
`
`1:12-cv-0206-CMH-TCB, filed in the U.S. District Court for the Eastern
`
`District of Virginia on February 27, 2012. Pet. 1. According to ZTE, this
`
`patent infringement lawsuit was transferred to the U.S. District Court for the
`
`Southern District of California on May 21, 2012. Id. ContentGuard does
`
`not dispute that it asserted the ‟160 patent against ZTE.
`
`ZTE also filed five other petitions seeking inter partes review of the
`
`following patents: U.S. Patent No. 7,523,072 (IPR2013-00133); U.S.
`
`Patent No. 7,359,884 (IPR2013-00136); U.S. Patent No. 6,963,859
`
`(IPR2013-00137); U.S. Patent No. 7,139,736 (IPR2013-00138); and U.S.
`
`Patent No. 7,269,576 (IPR2013-00139). Pet. 1-2.
`
`B. The Invention of the ’160 Patent (Ex. 1001)
`
`The invention of the ‟160 patent generally relates to distributing and
`
`enforcing usage rights for digital works. Ex. 1001, 1:15-16. A digital work
`
`refers to any work that has been reduced to a digital representation,
`
`including any audio, video, text, or multimedia work, and any accompanying
`
`interpreter, e.g., software, which may be required to recreate or render the
`
`content of the digital work. Ex. 1001, 5:20-24. Usage rights refer to rights
`
`granted to a recipient of a digital work that define the manner in which a
`
`digital work may be used and distributed. Ex. 1001, 5:26-30. According to
`
`the ‟160 patent, the disclosed invention permits the owner of a digital work,
`
`or other authorized party, to specify a manner of use of the content
`
`associated therewith. Ex. 1001, 3:51-54.
`
`3
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`Petitioner Apple Inc. - Ex. 1034, p. 3
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`
`
`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`
`
`The ‟160 patent discloses dividing a digital work into two files: (1) a
`
`contents file; and (2) a description tree file. Ex. 1001, 7:65-67. The
`
`contents file is a stream of addressable bytes, the format of which
`
`completely depends on the interpreter or rendering engine used to play,
`
`display, or print the digital work. Ex. 1001, 7:67-8:4. The description tree
`
`file makes it possible to examine the rights and fees associated with the
`
`digital work without reference to the content of the digital work. Ex. 1001,
`
`8:4-6.
`
`Figure 5 of the ‟160 patent illustrates a contents file layout for a
`
`digital work. Ex. 1001, 4:16-18, 8:10. Figure 5 of the ‟160 patent is
`
`reproduced below:
`
`
`
`Figure 5 illustrates the format
`of the contents file of a digital work.
`
`According to the contents file illustrated above, digital work 509
`
`
`
`includes story A 510, advertisement 511, story B 512, and story C 513. Ex.
`
`1001, 8:11-12. Assuming that digital work 509 is stored starting at a relative
`
`address of 0, the aforementioned portions of digital work 509 are stored so
`
`4
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`Petitioner Apple Inc. - Ex. 1034, p. 4
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`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`
`
`that story A 510 occupies the address of 0-30,000, advertisement 511
`
`occupies the address of 30,001-40,000, story B 512 occupies the address of
`
`40,0001-60,000, and story C 513 occupies the address of 60,0001-90,000.
`
`Ex. 1001, 8:12-18.
`
`
`
`Figure 8 of the ‟160 patent illustrates the description tree layout or
`
`structure of digital work 509. Ex. 1001, 4:26-27, 8:55-56. Figure 8 of the
`
`‟160 patent is reproduced below:
`
`
`
`Figure 8 illustrates the structure
`of the description tree portion of a digital work.
`
`According to the description tree illustrated above, the top descriptor
`
`
`
`block (“d-block”) 820 of the digital work refers to the various stories and
`
`advertisement contained therein. Ex. 1001, 8:56-58. The top d-block 820
`
`points to the following: (1) d-block 821, which represents story A 510; (2)
`
`d-block 822, which represents advertisement 511; (3) d-block 823, which
`
`represents story B 512; and (4) d-block 824, which represents story C 513.
`
`Ex. 1001, 8:58-61.
`
`
`
`Figure 9 of the ‟160 patent further illustrates a portion of the
`
`description tree associated with d-block 821, which represents story A 510.
`5
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`Petitioner Apple Inc. - Ex. 1034, p. 5
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`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`
`
`Ex. 1001, 4:28-29, 8:62-63. Figure 9 of the ‟160 patent is reproduced
`
`below:
`
`
`
`Figure 9 illustrates another level of the
`description tree associated with d-block 821.
`
`Figure 10 of the ‟160 patent illustrates the usage rights portions of an
`
`
`
`individual d-block. Ex. 1001, 4:30-32, 8:66-67. Figure 10 of the ‟160
`
`patent is reproduced below:
`
`Figure 10 illustrates the usage rights portion of a d-block.
`
`
`
`The usage right for each individual d-block has a right code field 1050
`
`and a status information field 1052. Ex. 1001, 9:2-3. The right code field
`
`1050 contains a unique code assigned to the usage right. Ex. 1001, 9:3-4.
`
`
`
`6
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`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`
`
`The status information field 1052 contains information relating to the state
`
`of the usage right and the corresponding digital work. Ex. 1001, 9:4-6.
`
`C. Illustrative Claims
`
`
`
`Claims 1, 12, 23, and 30 are independent claims. Independent claims
`
`1 and 12 are illustrative:
`
`A computer readable medium having embedded
`1.
`
`thereon a digital work adapted to be distributed within in a
`system for controlling the use of digital works, said digital work
`comprising:
`
`a digital content portion that is renderable by a rendering
`
`device;
`
`a usage rights portion associated with said digital content
`
`portion and comprising one or more computer readable
`instructions configured to permit or prohibit said rendering
`device to render said digital content portion, said usage rights
`portion being expressed as statements from a usage rights
`language having a grammar defining a valid sequence of
`symbols, and specifying a manner of use relating to one or
`more purposes for which the digital work can be used by an
`authorized party; and
`
`
`a description structure comprising a plurality of
`description blocks, each of said description blocks comprising
`address information for a least one part of said digital work,
`and a usage rights part for associating one or more usage
`rights portions.
`
`Ex. 1001, Claims—48:32-51 (emphasis added).
`
`
`
`
`
`7
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`12. A method for creating a digital work to be used in a
`system for use of the digital work, said method comprising:
`
`obtaining a digital content portion that is renderable by a
`
`rendering device;
`
`associating a usage rights portion with the digital content
`
`portion, the usage rights portion comprising one or more
`computer readable instructions configured to permit or prohibit
`said rendering device to render said digital content portion, said
`usage rights portion being expressed as statements from a usage
`rights language having a grammar defining a valid sequence of
`symbols, and specifying a manner of use relating to one or
`more purposes for which the digital work can be used by an
`authorized party;
`
`
`describing said digital work by a description structure
`comprising a plurality of description blocks, each of said
`description blocks comprising addressing information for a
`least one part of said digital work, and a usage rights part for
`associating one or more usage rights portions; and
`
`combining the digital content portion and the usage rights
`
`portion to create the digital work.
`
`Ex. 1001, Claims—49:16-37 (emphasis added).
`
`D. Prior Art Relied Upon
`
`ZTE relies upon the following prior art references:
`
`US 5,260,999
`Wyman
`US 5,263,160
`Porter, Jr.
`(hereinafter “Porter”)
`
`EP 0464306 A2
`Hartrick
`(hereinafter “EP ‟306”)
`
`Nov. 9, 1993
`Nov. 16, 1993
`
`Ex. 1013
`Ex. 1014
`
`Jan. 8, 1992
`
`Ex. 1010
`
`8
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`Petitioner Apple Inc. - Ex. 1034, p. 8
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`
`
`EP 0567800 A1 Nov. 3, 1993
`Hartrick
`(hereinafter “EP ‟800”)
`
`
`Ex. 1011
`
`Henry H. Perritt, Jr., “Knowbots, Permissions Headers and Contract
`Law,” Paper for the Conference on Technological Strategies for
`Protecting Intellectual Property in the Networked Multimedia
`Environment (Apr. 30, 1993) (retrieved from
`http://archive.ifla.org/documents/infopol/copyright/perh2.txt on Jan. 4,
`2013) (Ex. 1006) (hereinafter “Perritt”).
`
`Admitted Prior Art—During the original prosecution, the Examiner
`rejected dependent claim 8 (now dependent claim 5) because “„mark-up
`prices‟ are old and well known to those of ordinary skill in retail.” Ex.
`1002-001347 (Non-Final Rejection dated July 27, 2004, p. 4). Patent
`Owner did not traverse the Examiner‟s position that “mark-up prices” are
`common knowledge in the retail art. As such, the Examiner‟s statement
`regarding “mark-up prices” is taken to be admitted prior art.
`
`
`E. Alleged Grounds of Unpatentability
`
`ZTE seeks to cancel claims 1-38 of the ‟160 patent based on the
`
`following alleged grounds of unpatentability:
`
`1.
`
`Claims 1, 2, 9, 12, 13, 23, 30, and 31 as anticipated under
`
`35 U.S.C. § 102(b) by EP ‟306. Pet. 12-22.
`
`2.
`
`Claims 1-3, 8, 9, 12, 13, 15, 16, 20, 23, 30, and 31 as
`
`anticipated under 35 U.S.C. § 102(b) by EP ‟800. Id. at 22-33.
`
`3.
`
`Claims 2-4, 6, 7, 15-18, 21, 25, 26, 34, and 35 as unpatentable
`
`under 35 U.S.C. § 103(a) over the combination of EP ‟306 and Perritt. Id. at
`
`34-38.
`
`9
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`Petitioner Apple Inc. - Ex. 1034, p. 9
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`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`
`
`4.
`
`Claims 2-4, 6, 7, 15-18, 21, 25, 26, 34, and 35 as unpatentable
`
`under 35 U.S.C. § 103(a) over the combination of EP ‟800 and Perritt. Id. at
`
`38-39.
`
`5.
`
`Claims 2, 10, 14, 24-28, and 32-37 as unpatentable under
`
`U.S.C. § 103(a) over the combination of EP ‟306 and Wyman. Id. at 39-44.
`
`6.
`
`Claims 2, 10, 14, 24-28, and 32-37 as unpatentable under
`
`U.S.C. § 103(a) over the combination of EP ‟800 and Wyman. Id. at 44-46.
`
`7.
`
`Claims 5 and 19 as unpatentable under 35 U.S.C. § 103(a) over
`
`the combination of EP ‟306, Perritt, and Admitted Prior Art. Id. at 47.
`
`8.
`
`Claims 5 and 19 as unpatentable under U.S.C. § 103(a) over the
`
`combination of EP ‟800, Perritt, and Admitted Prior Art. Id. at 48.
`
`9.
`
`Claims 11, 22, 29, and 38 as unpatentable under U.S.C.
`
`§ 103(a) over the combination of EP ‟306 and Porter. Id. at 48-51.
`
`10. Claims 11, 22, 29, and 38 as unpatentable under U.S.C.
`
`§ 103(a) over the combination of EP ‟800 and Porter. Id. at 51-53.
`
`
`
`
`
`II. FINDINGS OF FACT
`
`The following findings of facts are supported by a preponderance of
`
`the evidence.
`
`EP ’800 (Ex. 1011)
`
`
`
`The invention disclosed in EP ‟800 relates to a data processor that
`
`ensures the copying and printing operations for a softcopy book, e.g.,
`
`electronic book, comply with the royalty payment requirements for making
`
`copies of the softcopy book. Ex. 1011, 1:3-8. According to EP ‟800, the
`
`10
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`Petitioner Apple Inc. - Ex. 1034, p. 10
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`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`
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`disclosed invention ensures compliance with the royalty requirements of a
`
`softcopy book by providing the following improved methods: (1) managing
`
`the softcopy text of a structured document in a data processing system; (2)
`
`managing the printing of pages of a structured document; (3) managing the
`
`writing of a structured document into a bulk storage medium; and (4)
`
`managing the telecommunication of softcopies of a structured document.
`
`Ex. 1011, 5:19-38.
`
`
`
`Figure 3A of EP ‟800 illustrates the element tags and associated text
`
`of a structured document, such as a softcopy book. Ex. 1011, 7:53-54; see,
`
`e.g., 2:21-28 and 3:9-11. Figure 3A is reproduced below:
`
`
`
`Figure 3A of EP ‟800 illustrates the organization of document
`
`elements 38-42 in a formatted text stream 25 having an ordered sequence.
`
`Ex. 1011, 9:35-41. Each element is a structured document element having a
`
`begin tag and an end tag. Ex. 1011, 9:43-47. The begin tag and end tag
`
`serve to identify the element type. Ex. 1011, 9:47-49. For instance,
`
`
`
`11
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`Petitioner Apple Inc. - Ex. 1034, p. 11
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`paragraph 28 is shown in the structured document notation between begin
`
`tag [p] and end tag [/p]. Ex. 1011, 9:41-43.
`
`
`
`The invention of the EP ‟800 embeds special strings, such as royalty
`
`message 306, within document elements having special structured document
`
`tags in the structured document. Ex. 1011, 10:1-5. In particular, Figure 3A
`
`of the EP ‟800 illustrates that royalty message 306 is embedded between a
`
`begin tag [royalty] and end tag [/royalty]. Ex. 1011, 10:5-7. When the
`
`processor 20 (illustrated in Figure 1) detects the presence of a special tag,
`
`such as a royalty begin tag, it makes a note of its presence within memory 22
`
`(illustrated in Figure 1) so when specific functions are requested by various
`
`components of the data processing system, copying of the structured
`
`document is inhibited and a royalty payment process is invoked. Ex. 1011,
`
`10:7-14. For instance, if a royalty message 306 is identified in the formatted
`
`text stream 25, the data processing system inhibits the printer function so
`
`that a prospective user cannot print the structured document containing the
`
`royalty element. Ex. 1011, 10:14-18.
`
`
`
`Figure 3B of EP ‟800 illustrates the memory organization of element
`
`tags and associated text in Figure 3A. Ex. 1011, 7:55-57. Figure 3B is
`
`reproduced below:
`
`12
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`Figure 3B of EP ‟800 illustrates storing the structured document and
`
`its corresponding tags in memory 22 in a linear sequential order, i.e., the
`
`formatted text stream 25. Ex. 1011, 10:24-27. A special copyright notice
`
`element is represented by begin tag 40a and end tag 40b, which surrounds
`
`copyright notice string 40c. Ex. 1011, 10:38-40. Similarly, the special
`
`royalty message element is represented by begin tag 306a and end tag 306b,
`
`which surrounds the “Book Reproduction Fee” string 306c. Ex. 1011,
`
`10:41-44.
`
`
`
`When the royalty payment program 45 (illustrated in Figure 1) is
`
`loaded into the memory 22 of the data processing system, a default
`
`parameter table 56 is loaded into memory 22 as well. Ex. 1011, 10:55-11:1.
`
`13
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`The default parameter table 56 includes a set of default values. Ex. 1011,
`
`11:2-4. Alternatively, a prospective user can enter a profile of values for the
`
`parameter table. Ex. 1011, 11:4-6. The parameter table 56 loaded during
`
`the initial program loading stage includes characters representing each
`
`special tag, such as the royalty tag “[royalty]”. Ex. 1011, 11:6-9. The
`
`default parameter table 56 also includes values indicating how the data
`
`processing system should respond when particular tagged strings are
`
`identified in the document text loaded into memory 22. Ex. 1011, 11:10-14.
`
`For instance, if a royalty tag “[royalty]” is detected in the structured
`
`document, the default parameter table 56 indicates that if the document is
`
`displayed on display 26 (illustrated in Figure 1), then the page displayed
`
`should include the royalty message. Ex. 1011, 11:14-19.
`
`
`
`Figure 7 of EP ‟800 illustrates the default parameter table 56 after it
`
`has been loaded with information pertaining to the document elements
`
`associated with each special tag. Ex. 1011, Ex. 8:13-15. Figure 7 is
`
`reproduced below:
`
`14
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`
`
`Figure 7 illustrates default table 56 populated with
`document elements and special tags.
`
`Figure 7 of EP ‟800 illustrates that default table 56 includes column
`
`
`
`364, which indicates what strings should be displayed on the display 26. Ex.
`
`1011, 11:49-51. For instance, column 364 indicates that royalty message
`
`306, which is represented by the special royalty message string “Book
`
`Reproduction Fee” surrounded by being tag [royalty] and end tag [/royalty],
`
`should be displayed on display 26. Ex. 1011, 11:46-49.
`
`
`
`When the royalty message 306 occurs first in the structured document,
`
`and does not occur within a chapter heading, e.g., [h1], it is considered a
`
`global element that affects the entire softcopy book. Ex. 1011, 11:51-56. As
`
`a consequence, royalty message 306 is flagged in the book royalty flag
`
`15
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`column 366 of default parameter table 56. Ex. 1011, 11:56-57. Because
`
`royalty message 306 is the first occurring royalty element in the structured
`
`document, it represents the royalty message for copying the entire softcopy
`
`book. Ex. 1011, 11:57-12:3. In addition, the corresponding royalty
`
`information in the special tags that occur immediately following royalty
`
`message 306 are considered global elements that apply when the entire book
`
`is copied. Ex. 1011, 12:3-7. The special tags associated with royalty
`
`message 306 include the following: (1) “[amount] $20.00 [/amount]” 308;
`
`(2) “[phone] 1-800-123-1234 [/phone]” 310; (3) “[public key] 13A723F9 . . .
`
`6 [/public key]” 312; and (4) “[validation] The Book Repo Fee Is Paid
`
`[/validation]” 314. Ex. 1011, 12:7-12.
`
`
`
`III. CLAIM CONSTRUCTION
`
`Consistent with the statute and legislative history of the Leahy-Smith
`
`America Invents Act, Pub. L. 112-29, 125 Stat. 284, 329 (2011) (“AIA”), we
`
`construe claims by applying the broadest reasonable interpretation in light of
`
`the specification. 37 C.F.R. § 42.100(b); see also Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). There is a
`
`“heavy presumption” that a claim term carries its ordinary and customary
`
`meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`
`Cir. 2002). However, a “claim term will not receive its ordinary meaning if
`
`the patentee acted as his own lexicographer and clearly set forth a definition
`
`of the disputed claim term in either the specification or prosecution history.”
`
`Id. “Although an inventor is indeed free to define the specific terms used to
`
`16
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`describe his or her invention, this must be done with reasonable clarity,
`
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994). Also, we must be careful not to read a particular embodiment
`
`appearing in the specification into the claim if the claim language is broader
`
`than that embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`
`1993).
`
`A. Preambles (Claims 1, 12, 23, and 30)
`
`
`
`ContentGuard contends that the preambles of independent claims 1,
`
`12, 23, and 30 are limiting and, therefore, are entitled to patentable weight.
`
`Prel. Resp. 18-22. ContentGuard correctly notes that the claim terms “the
`
`digital work” and “said digital work” recited in the bodies of independent
`
`claims 1 and 23 refer back to the recitation of “a digital work” in the claims‟
`
`preambles for antecedent basis. Id. at 19-20. ContentGuard also correctly
`
`notes that the bodies of independent claims 1 and 23 are directed to
`
`describing the necessary components of the claimed “digital work.” Id. at
`
`20. But then ContentGuard asserts that the recitation in the preamble of “a
`
`digital work adapted to be distributed within a system for controlling the use
`
`of digital works” is a necessary and defining aspect of the claimed invention
`
`and, as a consequence, should be treated as a limitation of independent
`
`claims 1 and 23. Id. at 20-21. As to this assertion, we do not agree with
`
`ContentGuard.
`
`
`
`In general, a preamble is construed as a limitation “if it recites
`
`essential structure or steps, or if it is „necessary to give life, meaning, and
`
`vitality‟ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
`
`17
`
`Petitioner Apple Inc. - Ex. 1034, p. 17
`
`
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`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`
`
`289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-
`
`Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). However, a preamble
`
`is not limiting “„where a patentee defines a structurally complete invention
`
`in the claim body and uses the preamble only to state a purpose or intended
`
`use for the invention.”‟ Catalina Mktg., 289 F.3d at 808 (quoting Rowe v.
`
`Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)); see also Symantec Corp. v.
`
`Computer Assocs. Int’l Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008).
`
`
`
`In this case, the recitations in the preambles of independent claims 1
`
`and 23 immediately following “a digital work”—namely “adapted to be
`
`distributed within a system for controlling use of digital works”—are mere
`
`statements of intended use for an invention that is already structurally
`
`complete as defined in the body of each claim. Accordingly, the
`
`aforementioned recitations in the preambles of independent claims 1 and 23
`
`provide no patentable significance to the claimed subject matter.
`
`
`
`ContentGuard relies upon essentially the same argument presented for
`
`independent claims 1 and 23 to assert that all portions of the preambles of
`
`independent claims 12 and 30 are limiting and, therefore, are entitled to
`
`patentable weight. Pet. 21-22. Once again, we do not agree with
`
`ContentGuard.
`
`
`
`Similar to our analysis above, the recitations in the preambles of
`
`independent claims 12 and 30 immediately following “a digital work”—
`
`namely “to be used in a system for use of the digital work”— are mere
`
`statements of intended use. The preambles of independent claims 12 and 30
`
`do not recite any essential method steps. Moreover, the claimed method
`
`18
`
`Petitioner Apple Inc. - Ex. 1034, p. 18
`
`
`
`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`
`
`steps of “obtaining,” “associating,” “describing,” and “combining” are
`
`already complete and do not require more from the preamble for meaning.
`
`As a result, the aforementioned recitations in the preambles of independent
`
`claims 12 and 30 provide no patentable significance to the claimed subject
`
`matter.
`
`B. Description Structure (Claims 1, 12, 23, and 30)
`
`
`
`ZTE contends that upon reviewing the specification of the ‟160
`
`patent, the broadest reasonable interpretation of the claim term “description
`
`structure” includes at least a description tree, which is “a structure which
`
`describes the location of content and the usage rights and usage fees for a
`
`digital work.” Pet. 6 (citing to Ex. 1001, 47:31-37). In response,
`
`ContentGuard contends that ZTE‟s claim construction for the claim term
`
`“description structure” is based on a partial quotation of the “description
`
`tree” as disclosed in the glossary of the ‟160 patent. Prel. Resp. 17.
`
`ContentGuard argues that, at best, the claim term “description structure”
`
`could include a “description tree,” but the specification of the ‟160 patent
`
`does not support that a “description structure” must necessarily include a
`
`“description tree.” Id. Instead, ContentGuard argues that independent
`
`claims 1, 12, 23, and 30 explicitly recite the necessary elements that make
`
`up the claimed “description structure.” Id. at 18. For instance,
`
`ContentGuard alleges that the “description structure” recited in independent
`
`claim 1 must be part of the claimed “digital work” and include “a plurality
`
`of description blocks,” “address information for at least one part of said
`
`19
`
`Petitioner Apple Inc. - Ex. 1034, p. 19
`
`
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`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`
`
`digital work,” and “a usage rights part for associating one or more usage
`
`rights portions.” Id.
`
`
`
`ContentGuard‟s argument is misplaced. While a claim may recite
`
`other claim features which further limit a “description structure,” the pivotal
`
`issue is the meaning of the claim term “description structure.” The
`
`additional claim features recited in independent claim 1, 13, 23, and 30
`
`narrow the scope of each claim, but do not convey a definition for the claim
`
`term “description structure.” At issue is the meaning of claim term
`
`“description structure,” not what type of description structure is within the
`
`scope of the claim.
`
`
`
`ZTE correctly indicates that the glossary of the ‟160 patent explicitly
`
`sets forth a special definition for a “description tree.” For convenience, the
`
`entire glossary definition for a “description tree” is reproduced below:
`
`Description Tree—A structure which describes the location of
`content and usage rights and usage fees for a digital work. A
`description tree is comprised of description blocks. Each
`description block corresponds to a digital work or to an interest
`(typically a revenue bearing interest) in a digital work.
`
`Ex. 1001, 47:31-36.
`
`
`
`We agree with ContentGuard that there is not an express indication in
`
`the specification of the ‟160 patent that the claim term “description
`
`structure” necessarily encompasses a “description tree.” However, upon
`
`reviewing the specification of the ‟160 patent in its entirety, as well as the
`
`prosecution history of the ‟160 patent, we determine that it is unreasonable
`
`to accord a meaning to the claim term “description structure” that is different
`
`20
`
`Petitioner Apple Inc. - Ex. 1034, p. 20
`
`
`
`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`
`
`from the meaning of a “description tree.” In the context of the specification
`
`as filed and the prosecution history, ContentGuard uses the two terms
`
`“description structure” and “description tree” synonymously, i.e., without
`
`distinction.
`
`
`
`This is evident by the fact that the term “description structure” is not
`
`used in the specification as filed. Nor does the term appear in any of the
`
`original claims of the application. The term “description structure” was
`
`added during prosecution in a claim amendment. Ex. 1002-00335 (Claim
`
`Amendment date Feb. 14, 2006). In contrast, the term “description tree” is
`
`used throughout the specification as filed. It is simply unclear what is
`
`covered by a “description structure,” but not covered by a “description tree,”
`
`and vice-versa. ContentGuard does not identify any written description
`
`support for the claim term “description structure” beyond that which also
`
`supports a “description tree” and, on this record, we find none.
`
`
`
`In addition, the term “description structure,” as a claim term, is no less
`
`important than a “description tree.” Yet, the term “description structure”
`
`cannot be found in the glossary, but the glossary does contain a special
`
`definition for a “description tree.” Moreover, the special definition in the
`
`glossary for a “description tree” begins with “a structure.” Emphasis added.
`
`All of the foregoing reasons support the conclusion that the claim term
`
`“description structure” has the same meaning as a “description tree.”
`
`Consequently, we look to the discussion of a “description tree” in the
`
`specification of the ‟160 patent to construe the meaning of the claim term
`
`“description structure.”
`
`21
`
`Petitioner Apple Inc. - Ex. 1034, p. 21
`
`
`
`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`
`
`
`
`Indeed, the specification of the ‟160 patent actually provides two
`
`meanings for a “description tree.” As discussed above, the glossary of the
`
`‟160 patent explicitly sets forth a special definition for a “description tree.”
`
`In addition, the specification of the ‟160 patent states that “the term
`
`description tree as used herein refers to any type of acyclic structure used to
`
`represent the relationship between the various components of a digital
`
`work.” Ex. 1001, 8:6-9. Therefore, the specification sets forth two
`
`meanings for a “description tree,” one broad and one narrow. The two
`
`meanings are not contradictory. Rather, they reflect a difference in scope, as
`
`one encompasses the other. In view of the foregoing, noting that the second
`
`definition is the broader one and, thereafter, applying the broadest
`
`reasonable interpretation standard, we conclude that a “description tree”—
`
`otherwise known as a “description structure”—is any acyclic structure that
`
`represents the relationship between the components of a digital work.
`
`
`
`While we agree with ContentGuard that independent claims 1, 12, 23,
`
`and 30 provide additional claim features that serve to further limit the
`
`claimed “description structure,” the claim features recited in each
`
`independent claim do not provide a basis for construing the claim term
`
`“description structure” as innately or inherently possessing such features. In
`
`other words, the claim term “description structure” does not itself require the
`
`additional claim features recited in independent claims 1, 12, 23, and 30.
`
`
`
`Accordingly, we construe the claim term “description structure”
`
`recited in independent claims 1, 12, 23, and 30 as any acyclic structure that
`
`represents the relationship between the components of a digital work.
`
`22
`
`Petitioner Apple Inc. - Ex. 1034, p. 22
`
`
`
`Case IPR2013-00134
`U.S. Patent No. 7,225,160
`
`
`C. Remaining Claim Terms
`
`
`
`All remaining claim terms recited in claims 1-38 are given their
`
`ordinary and customary meaning as would be understood by one with
`
`ordinary skill in the art, and need not be further construed at this time.
`
`
`
`
`
`IV. ANALYSIS
`
`A. 35 U.S.C. § 102(b) Ground of Unpatentability—EP ’800
`
`ZTE contends that claims 1-3, 8, 9, 12, 13, 15, 16, 20, 23, 30, and 31
`
`are anticipated under 35 U.S.C. § 102(b) by EP ‟800. Pet. 22-33. In
`
`particular, ZTE relies upon claim charts to explain how EP ‟800 allegedly
`
`describes the subject matter recited in these claims, and the Declaration of
`
`Dr. Vijay K. Madisetti (Ex. 1015) to support its positions. Id. In response,
`
`ContentGuard presents arguments predicated on two claim groupings—(1)
`
`for independent claims 1 and 23, EP ‟800 does not disclose “[a] computer
`
`readable medium having embedded thereon a digital work . . . said digital
`
`work comprising . . . a description structure”; and (2) for independent claims
`
`12
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