Paper 17
`Trials@uspto.gov
`571-272-7822 Entered: 1 July 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`ZTE CORPORATION AND ZTE (USA) INC.
`Petitioners
`
`v.
`
`CONTENTGUARD HOLDINGS INC.
`Patent Owner
`____________
`
`Case IPR2013-00138
`U.S. Patent No. 7,139,736
`____________
`
`
`
`
`
`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. 1037, p. 1
`
`

`

`Case IPR2013-00138
`U.S. Patent No. 7,139,736
`
`
`I. INTRODUCTION
`
`ZTE Corporation and ZTE (USA) Inc. (“ZTE”) filed a corrected
`
`petition (“Pet.”) requesting inter partes review of claims 1-57 of U.S. Patent
`
`No. 7,139,736 (“the ’736 patent”). Paper 9. In response, Patent Owner,
`
`ContentGuard Holdings Inc. (“ContentGuard”), filed a preliminary response
`
`(“Prel. Resp.”). Paper 16. 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 1-18, 20-38, and 40-56 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 19, 39, and 57 as unpatentable. Pursuant
`
`to 35 U.S.C. § 314, we hereby authorize an inter partes review to be
`
`instituted only as to claims 1-18, 20-38, and 40-56 of the ’736 patent.
`
`A. Related Matters
`
`ZTE indicates that the ’736 patent was asserted against it in
`
`ContentGuard Holdings Inc. v. ZTE Corp. et al., Civil Action No. 1:12-cv-
`
`2
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`

`

`Case IPR2013-00138
`U.S. Patent No. 7,139,736
`
`
`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 ’736 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. 7,225,160 (IPR2013-00134); U.S. Patent No. 7,359,884 (IPR2013-
`
`00136); U.S. Patent No. 6,963,859 (IPR2013-00137); and U.S. Patent
`
`No. 7,269,576 (IPR2013-00139). Pet. 1.
`
`B. The Invention of the ’736 Patent (Ex. 1001)
`
`The invention of the ’736 patent generally relates to distributing and
`
`enforcing usage rights for digital works. Ex. 1001, 1:20-21. 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, 6:45-49. 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, 4:9-12; 6:51-55.
`
`According to the ’736 patent, the disclosed invention: (1) provides the
`
`owner of a digital work the flexibility to distribute the digital work as
`
`desired; and (2) includes a distribution system that transports a means for
`
`billing with the digital work. Ex. 1001, 3:14-16, 65-67.
`
`3
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`

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`Case IPR2013-00138
`U.S. Patent No. 7,139,736
`
`
`The ’736 patent discloses permanently attaching usage rights to the
`
`digital work. Ex. 1001, 6:59-60. Copies of the digital work also will have
`
`the usage rights attached thereto. Ex. 1001, 6:60-61. Therefore, any usage
`
`rights and associated fees assigned by the creator and subsequent distributor
`
`of the digital work always will remain with the digital work. Ex. 1001, 6:61-
`
`64. The ’736 patent discloses that repositories enforce the usage rights of
`
`digital works. Ex. 1001, 4:23-24; 6:65-66. In particular, repositories store
`
`digital works, control access to digital works, bill for access to digital works,
`
`and maintain the security and integrity of the digital works stored therein.
`
`Ex. 1001, 6:66-7:3.
`
`Figure 1 of the ’736 patent illustrates the basic operations of the
`
`disclosed invention. Ex. 1001, 4:48-50; 7:14-16. Figure 1 of the ’736 patent
`
`is reproduced below:
`
`4
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`Case IPR2013-00138
`U.S. Patent No. 7,139,736
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`
`
`Figure 1 illustrates the basic operations of repositories 1 and 2.
`
`At step 101, a creator creates a digital work. Ex. 1001, 7:16-17. At
`
`step 102, the creator determines the appropriate usage rights and fees,
`
`attaches them to the digital work, and stores the digital work with the
`
`associated usage rights and fees in repository 1. Ex. 1001, 7:17-19. At
`
`step 103, repository 1 receives a request to access the digital work from
`
`repository 2. Ex. 1001, 7:21-25. Such a request, or session initiation,
`
`includes steps that help ensure that repository 1 and repository 2 are
`
`trustworthy. Ex. 1001, 7:25-27. At step 104, repository 2 requests access to
`
`the digital work stored in repository 1 for a stated purpose, e.g., to print the
`
`5
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`Case IPR2013-00138
`U.S. Patent No. 7,139,736
`
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`digital work or obtain a copy of the digital work. Ex. 1001, 7:28-31. At
`
`step 105, repository 1 checks the usages rights associated with the digital
`
`work stored therein to determine if access to the digital work may be
`
`granted. Ex. 1001, 7:32-35. At step 106, if access is denied, repository 1
`
`terminates the session with repository 2 by transmitting an error message.
`
`Ex. 1001, 7:39-40. At step 107, if access is granted, repository 1 transmits
`
`the digital work to repository 2. Ex. 1001, 7:40-42. At step 108, both
`
`repository 1 and 2 generate billing information prior to transmitting the
`
`billing information to a credit server. Ex. 1001, 7:42-45. The use of both
`
`repositories 1 and 2 for billing prevents attempts to circumvent the billing
`
`process. Ex. 1001, 7:45-46.
`
`Figure 2 of the ’736 patent illustrates the various types of repositories
`
`and the transaction flow between them. Ex. 1001, 4:51-54; 7:47-48.
`
`Figure 2 of the ’736 patent is reproduced below:
`
`Figure 2 illustrates various types of repositories and
`their corresponding functions.
`
`6
`
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`Case IPR2013-00138
`U.S. Patent No. 7,139,736
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`
`
`Repository 201 represents the general instance of a repository having
`
`
`
`two modes of operation: (1) a server mode; and (2) a requester mode.
`
`Ex. 1001, 7:52-55. When repository 201 is in server mode, it receives and
`
`processes access requests for digital works. Ex. 1001, 7:55-57. When
`
`repository 201 is in requester mode, it initiates requests to access digital
`
`works. Ex. 1001, 7:57-58.
`
`
`
`During the course of operation, repository 201 may communicate with
`
`a plurality of other repositories, including rendering repository 203.
`
`Ex. 1001, 7:60-65. Communication with rendering repository 203 occurs in
`
`connection with rendering a digital work. Ex. 1001, 8:8-9. According to the
`
`’736 patent, rendering repository 203 is coupled to a rendering device, e.g., a
`
`printer device, to comprise a rendering system. Ex. 1001, 8:9-12.
`
`
`
`Figure 12 of the ’736 patent illustrates the hardware components of a
`
`repository. Ex. 1001, 5:13-15, 14:12-14. Figure 12 of the ’736 patent is
`
`reproduced below:
`
`Figure 12 illustrates the basic components of a repository.
`7
`
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`Case IPR2013-00138
`U.S. Patent No. 7,139,736
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`
`
`The repository illustrated above comprises a processing means 1200, a
`
`storage system 1207, a clock 1205, and an external interface 1206.
`
`Ex. 1001, 14:14-16. The processing means 1200 comprises a processor
`
`element 1201 and processing memory 1202. Ex. 1001, 14:16-18. The
`
`processor element 1201 serves as a controller that performs the following
`
`functions: (1) processes repository transactions; (2) processes usage rights
`
`transactions; (3) decrypts both digital works and transaction messages; and
`
`(4) decompresses both digital works and transaction messages. Ex. 1001,
`
`14:18-23. The processor memory 1202 typically comprises Read Only
`
`Memories and Random Access Memories that store software instructions
`
`used by the processor element 1201 to perform the aforementioned
`
`functions. Ex. 1001, 14:25-30.
`
`
`
`The storage system 1207 comprises a descriptor storage 1203 and
`
`content storage 1204. Ex. 1001, 14:31-32. The descriptor storage 1203
`
`stores the description tree corresponding to the digital work, and the content
`
`storage 1204 stores the associated content. Ex. 1001, 14:32-35. The
`
`clock 1205 provides time stamps for various time based conditions for usage
`
`rights, or for metering usage fees, which may be associated with the digital
`
`work. Ex. 1001, 14:42-44. The clock 1205 contains an uninterruptable
`
`power supply, e.g., a battery, in order to maintain the integrity of the time
`
`stamps. Ex. 1001, 14:44-46. The external interface means 1206 provides a
`
`signal connection to other repositories and to a credit server. Ex. 1001,
`
`14:46-48. The external interface means 1206 may also provide network
`
`connectivity. Ex. 1001, 14:52-53.
`
`8
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`Case IPR2013-00138
`U.S. Patent No. 7,139,736
`
`
`C. Illustrative Claim
`
`
`
`Claims 1, 20, and 40 are independent claims. Independent claim 1,
`
`which is illustrative, is reproduced below:
`
`A rendering system adapted for use in a distributed
`1.
`
`system for managing use of content, the rendering system being
`operative to rendering content in accordance with usage rights
`associated with the content, the rendering system comprising:
`
`a rendering device configured to render the content; and
`
`a distributed repository coupled to the rendering device
`and including a first mode of operation and a second mode of
`operation;
`
`wherein the first mode of operation is operative to
`receive content from another distributed repository and enforce
`usage rights associated with the content and permit the
`rendering device to render the content in accordance with the
`manner of use specified by the usage rights, and
`
`the second mode of operation is operative to request the
`rendering by the rendering device of the content received from
`said another distributed repository; and
`
`the distributed repository is operative to permit the
`content to be rendered only if a manner of use specified in the
`request corresponds to a manner of use specified in the usage
`rights.
`
`Ex. 1001, Claims—52:59-53:12 (emphasis added).
`
`D. Prior Art Relied Upon
`
`ZTE relies upon the following prior art references:
`
`
`Walker
`Wyman
`Leroux
`
`
`
`
`Hendricks
`
`US 4,868,736
`US 5,260,999
`US 5,588,146
`
`
`
`US 5,986,690
`
`Ex. 1014
`Sept. 19, 1989
`Ex. 1015
`Nov. 9, 1993
`Ex. 1011
`Dec. 24, 1996
`(filed Oct. 21, 1993)
`
`Nov. 16, 1999
`Ex. 1013
`
`9
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`

`

`Case IPR2013-00138
`U.S. Patent No. 7,139,736
`
`
`
`
`
`
`
`
`
`
`
`
`EP 0268139 A2 May 25, 1988
`Comerford
`(hereinafter “EP ’139”)
`Hartrick
`EP 0464306 A2
`(hereinafter “EP ’306”)
`
`
`
`
`(filed Nov. 7, 1994)
`
`Jan. 8, 1992
`
`Ex. 1012
`
`Ex. 1010
`
`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”).
`
`
`E. Alleged Grounds of Unpatentability
`
`ZTE seeks to cancel claims 1-57 of the ’736 patent based on the
`
`following alleged grounds of unpatentability:
`
`1.
`
`Claims 1-18, 20-38, and 40-56 as anticipated under 35 U.S.C.
`
`§ 102(e) by Leroux.1 Pet. 15-24.
`
`2.
`
`Claims 1-5, 8-18, 20-24, 27-38, 40-44, and 47-56 as anticipated
`
`under 35 U.S.C. § 102(e) by Hendricks.2 Id. at 24-32.
`
`
`
`1 The ’736 patent claims priority to application No. 08/344,760, filed
`Nov. 23, 1994. Leroux was published on December 24, 1996, and was filed
`on Oct. 21, 1993. Accordingly, even though the Petition identifies Leroux
`as prior art to the ’736 patent under 35 U.S.C. § 102(b) (Pet. 16), Leroux is
`actually only prior art to the ’736 patent under 35 U.S.C. § 102(e). Accord
`Pet. 15 (confirming that Leroux only qualifies as prior art to the ’736 patent
`under 35 U.S.C. § 102(e)).
`2 The ’736 patent claims priority to application No. 08/344,760, filed
`Nov. 23, 1994. Hendricks was published on Nov. 16, 1999, and was filed on
`Nov. 7, 1994. Accordingly, even though the Petition identifies Hendricks as
`10
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`Case IPR2013-00138
`U.S. Patent No. 7,139,736
`
`
`3.
`
`Claims 1-18, 20-38, and 40-56 as anticipated under 35 U.S.C.
`
`§ 102(b) by EP ’139. Id. at 32-40.
`
`4.
`
`Claims 1-10, 12, 13, 15-18, 20-29, 31, 32, 34-38, 40-49, 51, 52,
`
`and 54-56 as anticipated under 35 U.S.C. § 102(b) by Walker. Id. at 40-48.
`
`5.
`
`Claims 1-6, 8-10, 12-17, 19-25, 27-29, 31-37, 39-45, 47-49, 51-
`
`55, and 57 as anticipated under 35 U.S.C. § 102(b) by EP ’306. Id. at 49-56.
`
`6.
`
`Claims 1-3, 5, 7, 9, 12, 14-17, 19-22, 24, 26, 28, 31, 33-37, 39-
`
`42, 44, 46, 48, 51, 53-55, and 57 as unpatentable under 35 U.S.C. § 103(a)
`
`over the combination of Perritt and Wyman. Id. at 57-60.
`
`
`
`II. 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
`
`
`
`prior art to the ’736 patent under 35 U.S.C. § 102(b) (Pet. 24), Hendricks is
`actually only prior art to the ’736 patent under 35 U.S.C. § 102(e). Accord
`Pet. 15, 24 (confirming that Hendricks only qualifies as prior art to the ’736
`patent under 35 U.S.C. § 102(e)).
`
`11
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`U.S. Patent No. 7,139,736
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`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
`
`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).
`
`A. “Repository” (Claims 1, 20, and 40)
`
`
`
`ZTE contends that the specification of the ’736 patent never mentions
`
`nor explains the claim term “repository” and, therefore, does not provide an
`
`explicit claim construction for that claim term. Pet. 19, FN 7. In response,
`
`ContentGuard contends that the claim term “repository” should be construed
`
`as a “trusted system for supporting usage rights.” Prel. Resp. 17.
`
`ContentGuard then cites to several portions of the specification of the ’736
`
`patent that allegedly support its proposed claim construction. Id. at 17-20
`
`(citing to Ex. 1001, 4:23-24, 6:65-7:2, 12:45-54, 13:51-53, 14:4-9, and
`
`52:18-23).
`
`
`
`The specification of the ’736 patent provides a glossary that explicitly
`
`sets forth a definition for the claim term “repository.” For convenience, that
`
`glossary definition is reproduced below:
`
`Conceptually a set of functional specifications defining core
`functionality in support of usage rights. A repository is a
`trusted system in that it maintains physical, communications
`and behavioral integrity.
`
`Ex. 1001, 52:20-23. By setting forth the term in a glossary and using the
`
`verb “is” following “repository” in the second sentence, we find that the
`
`specification explicitly sets forth a definition of “repository” as “a trusted
`
`12
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`system in that it maintains physical, communications and behavioral
`
`integrity.” However, the first sentence is also relevant to the definition of
`
`“repository” because it elaborates that the repository supports usage rights.
`
`Accordingly, we construe “repository” as “a trusted system, which maintains
`
`physical, communications and behavioral integrity, and supports usage
`
`rights.”
`
`Our analysis does not end here. In order to understand “a trusted
`
`system,” it is necessary to construe “physical integrity,” “communications
`
`integrity,” and “behavioral integrity.” These terms are described in a section
`
`of the specification labeled “Repositories.” Ex. 1001, 12:44-15:22. For
`
`“physical integrity,” the specification discloses the following:
`
`Physical integrity refers to the integrity of the physical devices
`themselves. Physical integrity applies both to the repositories
`and to the protected digital works. Thus, the higher security
`classes of repositories themselves may have sensors that detect
`when tampering is attempted on their secure cases. In addition
`to [the] protection of the repository itself, the repository design
`protects access to the content of digital works. In contrast with
`the design of conventional magnetic and optical devices-such as
`floppy disks, CD-ROMs, and videotapes-repositories never
`allow non-trusted systems to access the works directly. A
`maker of generic computer systems cannot guarantee that their
`platform will not be used to make unauthorized copies. The
`manufacturer provides generic capabilities for reading and
`writing information, and the general nature of the functionality
`of the general computing device depends on it. Thus, a copy
`program can copy arbitrary data. This copying issue is not
`limited to general purpose computers. It also arises for the
`unauthorized duplication of entertainment “software” such as
`video and audio recordings by magnetic recorders. Again, the
`
`13
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`functionality of the recorders depends on their ability to copy
`and they have no means to check whether a copy is authorized.
`In contrast, repositories prevent access to the raw data by
`general devices and can test explicit rights and conditions
`before copying or otherwise granting access. Information is
`only accessed by protocol between trusted repositories.
`
`Ex. 1001, 12:55-13:14 (emphasis added). Many of the above aspects that
`
`are associated with “physical integrity” are described using permissive terms
`
`such as “may” and “can” and, thus, are inappropriate to include in this
`
`broadest reasonable interpretation as necessary limitations. The
`
`specification also appears to use the terms or phrases in each of the
`
`following three groups interchangeably:
`
`(1)
`
`data, content, digital work, information;
`
`(2)
`
`non-trusted system, general device; and
`
`(3)
`
`“never allow access” and “prevent access.”
`
`When referring to the relationship between the repository and data, the
`
`specification uses absolute terms such as “never” and “only.” In light of the
`
`foregoing, we construe “physical integrity” as “preventing access to
`
`information by a non-trusted system.”
`
`For “communications integrity,” the specification discloses the
`
`following:
`
`the
`integrity of
`the
`to
`integrity refers
`Communications
`communications channels between repositories.
` Roughly
`speaking, communications integrity means that repositories
`cannot be easily fooled by “telling them lies.” Integrity in this
`case refers
`to
`the property
`that repositories will only
`communicate with other devices that are able to present proof
`
`14
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`that they are certified repositories, and furthermore, that the
`repositories monitor the communications to detect “impostors”
`and malicious or accidental interference. Thus the security
`measures
`involving
`encryption,
`exchange of digital
`certificates, and nonces described below are all security
`measures aimed at reliable communication in a world known
`to contain active adversaries.
`
`Ex. 1001, 13:15-27 (emphasis added). We construe “communications
`
`integrity” as “only communicates with other devices that are able to present
`
`proof that they are trusted systems, e.g., by using security measures such as
`
`encryption, exchange of digital certificates, and nonces.” The Encyclopedia
`
`of Cryptography defines “nonce” as “[a] number used in a cryptographic
`
`protocol to indicate the unique character of a message.” Newton, David E.,
`
`Encyclopedia of Cryptography 197 (1997).
`
`For “behavioral integrity,” the specification discloses the following:
`
`Behavioral integrity refers to the integrity in what repositories
`do. What repositories do is determined by the software that
`they execute. The integrity of the software is generally assured
`only by knowledge of its source. Restated, a user will trust
`software purchased at a reputable computer store but not trust
`software obtained off a random (insecure) server on a network.
`Behavioral integrity is maintained by requiring that repository
`software be certified and be distributed with proof of such
`certification, i.e. a digital certificate. The purpose of the
`certificate is to authenticate that the software has been tested by
`an authorized organization, which attests that the software does
`what it is supposed to do and that it does not compromise the
`behavioral integrity of a repository. If the digital certificate
`cannot be found in the digital work or the master repository
`which generated the certificate is not known to the repository
`receiving the software, then the software cannot be installed.
`
`15
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`Ex. 1001, 13:28-44 (emphasis added). We construe “behavioral integrity” in
`
`the context of a repository as “requiring software to include a digital
`
`certificate in order to be installed in the repository.”
`
`The record is not without evidence contrary to our interpretation. The
`
`nature of interpretation is to come to the appropriate conclusion in light of
`
`all of the evidence. All of the evidence does not have to point uniformly in a
`
`single direction.
`
`Table 2 in the specification of the ’736 patent (Ex. 1001, 15:51-16:32)
`
`indicates ten different levels of security for repositories, and the lowest level,
`
`i.e., level “0,” is described as follows:
`
`Open system. Document transmission is unencrypted. No
`digital certificate is required for identification. The security of
`the system depends mostly on user honesty, since only modest
`knowledge may be needed to circumvent the security measures.
`The repository has no provisions for preventing unauthorized
`programs from running and accessing or copying files. The
`system does not prevent the use of removable storage and does
`not encrypt stored files.
`
`Ex. 1001, 15:54-60. Thus, according to Table 2, repositories are not all
`
`trusted systems. Level “0” security means having an open system lacking in
`
`physical, communications, and behavioral integrity, and without support for
`
`managing usage rights. That is directly contrary to the meaning of
`
`“repository” as defined in the glossary. For reasons discussed below, we
`
`adhere to the definition provided in the glossary. The contrary evidence
`
`based on level “0”security shown in Table 2 is insufficient to outweigh the
`
`rest of the evidence including, in particular, the explicit definition provided
`
`16
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`U.S. Patent No. 7,139,736
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`in the glossary. We make our determination based on the totality of the
`
`evidence.
`
`As noted above, the disclosed invention is directed to distributing and
`
`enforcing usage rights for digital works. The problems described in the
`
`background portion of the specification concern unauthorized and
`
`unaccounted distribution or usage of electronically published materials. See
`
`generally Ex. 1001, 1:25-3:3. The ’736 patent states that it solves
`
`preexisting problems by both permanently attaching usage rights to digital
`
`works and placing elements in repositories that enforce those usage rights.
`
`Ex. 1001, 6:59-7:2.
`
`Here, the definition set forth in the glossary for “repository” is
`
`consistent with the description of the acknowledged prior art and the
`
`objective or goal to be achieved by the invention of the ’736 patent. The
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`specification also contains detailed preferred embodiments utilizing
`
`repositories that are trusted systems to provide usage control for digital
`
`works. Ex. 1001, 7:48-8:18; 8:36-37; 13:62-14:3; 14:10-12;14:64-15:9;
`
`18:29-31; 27:2-29:62; 41:60-42:61.
`
`The bulk of the disclosure consistently is directed to repositories,
`
`which are trusted systems for providing usage control for digital works. For
`
`example, the specification states:
`
`The enforcement elements of the present invention are
`embodied in repositories. Among other things, repositories are
`used to store digital works, control access to digital works, bill
`for access to digital works and maintain the security and
`integrity of the system.
`
`
`17
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`U.S. Patent No. 7,139,736
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`Ex. 1001, 6:65-7:2 (emphasis added). Other references to “repository” in
`
`the specification that recite necessary features of repositories also support
`
`the definition in the glossary that a repository is a trusted system. For
`
`example, the specification states:
`
`The core repository services 1302 comprise a set of functions
`required by each and every repository. The core repository
`services 1302 include the session initiation transactions which
`are defined in greater detail below. This set of services also
`includes a generic ticket agent which is used to “punch” a
`digital ticket and a generic authorization server for processing
`authorization specifications.
`
`Ex. 1001, 14:64-15:3 (emphasis added). In another example, the
`
`specification discloses that “[a]s a prerequisite to operation, a repository will
`
`require possession of an identification certificate” and that “identification
`
`certificates 1306 are required to enable the use of the repository.” Ex. 1001,
`
`13:62-63, 15:9-10 (emphasis added). In yet another example, the
`
`specification states “[p]rovisions for security and privacy are part of the
`
`requirements for specifying and implementing repositories and thus form
`
`the need for various transactions.” Ex. 1001, 26:65-67 (emphasis added).
`
`Indeed, by using words such as “require” and “requirements,” these
`
`disclosures amply support the definition provided in the glossary that a
`
`repository is a trusted system.
`
`
`
`In summary, even applying the broadest reasonable interpretation
`
`consistent with the specification, the weight of the evidence supports the
`
`definition provided in the glossary. We regard as significant that the
`
`definition states in no equivocal manner that a repository “is a trusted
`
`18
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`system.”
`
`B. Means-Plus-Function Limitations
`
`When construing a means-plus-function limitation under 35 U.S.C.
`
`§ 112, ¶ 6,3 we first must identify the claimed function, and then we look to
`
`the specification to identify the corresponding structure that performs the
`
`claimed function. Medical Instrumentation & Diagnostics Corp. v. Elekta
`
`AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St.
`
`Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002).
`
`ZTE identifies multiple claim limitations recited in dependent claims
`
`2, 3, 10, and 11 as means-plus-function limitations invoking 35 U.S.C.
`
`§ 112, ¶ 6, and identifies their corresponding structures for performing the
`
`claimed functions. Pet. 10. In the instance of each claim term identified
`
`below, we conclude that it is a means-plus-function limitation for the
`
`reasons set forth.
`
`1. “Means for storing the content” (Claims 2 and 3)
`
`The claimed function for this means-plus-function limitation recited in
`
`both dependent claims 2 and 3 is “means for storing the content.” ZTE
`
`contends that the corresponding structure is content storage 1204. Pet. 10.
`
`ZTE relies upon the description in the specification of the ’736 patent that
`
`“the content storage [1204] will store the associated content.” Ex. 1001,
`
`
`
`3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C.
`§ 112(f). Because the ’736 patent has a filing date before
`September 16, 2012 (effective date), we will refer to the pre-AIA version of
`35 U.S.C. § 112.
`
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`14:34-35, Fig. 12. ZTE also indicates that the specification of the
`
`’736 patent describes the content storage as any one of the following: (1) an
`
`optical disk (Ex. 1001, 14:40-41); (2) a magneto-optical storage system or
`
`magnetic tape (Ex. 1001, 38:17-29); and (3) a solid state storage (Ex. 1001,
`
`13:41-47). Ex. 1016, ¶ 92. We agree with ZTE.
`
`
`
`For purposes of this decision, we identify the corresponding structure
`
`for performing the recited function—namely “means for storing the
`
`content”—to be content storage 1204, such as an optical disk, a magneto-
`
`optical storage system, a magnetic tape, and a solid state storage.
`
`2. “Means for communicating with an authorization repository
`for authorizing a condition” (Claim 10) and “means for
`communicating with a master repository for obtaining an
`identification certificate” (Claim 11)
`
`The claimed function for the means-plus-function limitation recited in
`
`dependent claim 10 is “means for communicating with an authorization
`
`repository for authorizing a condition.” The claimed function for the means-
`
`plus-function limitation recited in dependent claim 11 is “means for
`
`communicating with a master repository for obtaining an identification
`
`certificate.” ZTE contends that the corresponding structure for both means-
`
`plus-function limitations is external interface 1206. Pet. 10. ZTE relies
`
`upon the description in the specification of the ’736 patent that “the external
`
`interface means 1206 provides for the signal connection to other
`
`repositories.” Ex. 1001, 14:46-54; see also Ex. 1016, ¶ 93. We agree with
`
`ZTE.
`
`20
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`For purposes of this decision, we identify the corresponding structure
`
`for performing the recited functions—namely “means for communicating
`
`with an authorization repository for authorizing a condition” and “means for
`
`communicating with a master repository for obtaining an identification
`
`certificate”—to be the external interface 1206, which provides a signal
`
`connection with another device.
`
`C. Remaining Claim Terms
`
`
`
`All remaining claim terms recited in claims 1-57 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 t