Trials@uspto.gov
`571-272-7822
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` Paper 15
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` Entered: July 9, 2013
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`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 IPR2013-00139
`Patent 7,269,576
`
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`Petitioner Apple Inc. - Ex. 1038, p. 1
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`

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`Case IPR2013-00139
`Patent 7,269,576
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`
`I.
`
`INTRODUCTION
`
`ZTE Corporation and ZTE (USA) Inc. (“ZTE”) filed a petition requesting an
`inter partes review of claims 1-36 of U.S. Patent No. 7,269,576 (Ex. 1001, “the
`’576 patent”). (Paper 2.) ZTE also filed a corrected petition. (Paper 9, “Pet.”)
`The patent owner, ContentGuard Holdings, Inc. (“ContentGuard”) filed a
`preliminary response. (Paper 14, “Prel. Resp.”) 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 as follows:
`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.
`
`Upon consideration of the corrected petition and ContentGuard’s
`preliminary response, we determine that the information presented by ZTE
`establishes that there is a reasonable likelihood that ZTE would prevail in showing
`the unpatentability of claims 18-21, 25-28, and 31-36 of the’576 patent.
`Accordingly, we grant the petition and only institute an inter partes review of
`claims 18-21, 25-28, and 31-36 of the ’576 patent.
`A. Related Proceedings
`
`ZTE indicates that the ’576 patent is involved in co-pending litigation
`captioned ContentGuard Holdings Inc. v. ZTE Corp. et al., Case No. 3:12-cv-
`01226 (S.D. Cal.). (Pet. 1.)
`
`2
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`Petitioner Apple Inc. - Ex. 1038, p. 2
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`Case IPR2013-00139
`Patent 7,269,576
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`
`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. 7,139,736 (IPR2013-
`00138). (Pet. 1.)
`
`B. The ’576 Patent
`
`The subject matter of the ’576 patent relates to the distribution of digitally
`encoded works and the enforcement of usage rights. (Ex. 1001, 1:5-6.) According
`to the ’576 patent, an issue facing the publishing and information industries is how
`to prevent the unauthorized and unaccounted distribution or usage of electronically
`published materials. (Ex. 1001, 1:10-13.) In particular, a major concern,
`according to the ’576 patent, is the ease with which electronically published works
`can be “perfectly” reproduced and distributed. (Ex. 1001, 1:24-25.) According to
`the ’576 patent, one way to curb unaccounted distribution is to prevent
`unauthorized copying and transmission. (Ex. 1001, 1:44-46.) Another way,
`according to the ’576 patent, is to distribute software which requires a “key” to
`enable its use. (Ex. 1001, 1:60-61.) The ’576 patent discloses that while such
`distribution and protection schemes prevent unauthorized distributions, they do so
`by sacrificing the potential for subsequent revenue bearing uses. (Ex. 1001, 2:56-
`60.) For example, the ’576 patent discloses that it may be desirable to allow the
`lending of a purchased work to permit exposure of the work to potential buyers,
`permit the creation of a derivative work for a fee, or permit copying the work for a
`fee. (Ex. 1001, 2:60-65.) The ’576 patent discloses that it solves these problems
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`3
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`by both permanently attaching usage rights to digital works, and by placing
`elements in repositories, which store and control the digital works and enforce the
`usage rights associated therewith. (Ex. 1001, 3:53-4:15.)
`Figure 1 of the ’576 patent illustrates the basic operations of the disclosed
`invention. (Ex. 1001, 4:31-34, 6:66-7:1). Figure 1 of the ’736 patent is reproduced
`below:
`
`Figure 1 illustrates the basic operations of repositories 1 and 2.
`
`According to the embodiment of Figure 1, at step 101, a creator creates a
`digital work. (Ex. 1001, 7:1-2.) At step 102, the creator determines the
`
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`4
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`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,
`7:2-7.) At step 103, repository 1 receives a request to access the digital work from
`repository 2. (Ex. 1001, 7:7-9.) Such a request, or session initiation, includes
`steps that help ensure that repository 1 and repository 2 are trustworthy. (Ex. 1001,
`7:7-12.) At step 104, repository 2 requests access to the digital work stored in
`repository 1 for a stated purpose, e.g., to print the digital work or obtain a copy of
`the digital work. (Ex. 1001, 7:13-17.) 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, 7:17-24.) At step 106, if access is denied,
`repository 1 terminates the session with repository 2 by transmitting an error
`message. (Ex. 1001, 7:24-25.) At step 107, if access is granted, repository 1
`transmits the digital work to repository 2. (Ex. 1001, 7:25-27.) At step 108, both
`repository 1 and 2 generate billing information prior to transmitting the billing
`information to a credit server. (Ex. 1001, 7:27-30.) The use of both repositories 1
`and 2 for billing prevents attempts to circumvent the billing process. (Ex. 1001,
`7:30-31.)
`One embodiment described in the ’576 patent relates to enforcing usage
`rights in rendering systems. (Ex. 1001, 8:16-67.) Rendering systems are systems
`that can render a digital work into its desired form, such as by printing a file on a
`printer or executing a software program in a processor. (Ex. 1001, 8:19-22, 8:37-
`38, 8:53-55.) Other examples of rendering systems include display, video, or
`audio systems. (Ex. 1001, 51:65-67.) Rendering systems include repositories that
`store digital works and maintain the security features of the ’576 patent. (Ex.
`
`5
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`Case IPPR2013-00139
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`Patent 77,269,576
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`:25-34.) RRepositoriees in renderring systemms can requuest to
`:22-23, 12
`1001, 8
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`performm various uusage transaactions, suuch as play or print trransactionss, that obta
`in a
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`ing hed renderio an attachprovide it todigital wwork from a remote rrepository and then p
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`device tto be rendeered. (Ex. 1001, 30:223-35, 36:118-37:26.)
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`FFigure 4a o
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`patent is reeproduced d below:
`f the ’576
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`example oFiggure 4a illuustrates an of a renderiing systemm
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`AAccording tto the embbodiment of Figure 4aa, a printerr system (4401), includding
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`a print ddevice (4033) and a prrinter repossitory (4022), is attachhed to an eexternal
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`repositoory (404) thhat containns digital wworks. (Exx. 1001, 8:226-29, 48-551.) The
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`printer rrepository can obtainn a copy off the digitall work to bbe providedd to the
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`renderinng device. (Ex. 10011, 8:36-38.)) That is aaccomplishhed by invooking a
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`specificc type of ussage transaaction calleed a print trransactionn. (Ex. 10001, 36:55-
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`37:26.) A print transaction bbegins withh a requesttor repositoory sendinng a messagge
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`requestiing permission to obttain and prrint a speciified digitaal work thaat is stored
`in a
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`server rrepository. (Ex. 10011, 36:55-377:26.) Certtain renderring transaactions requuire
`6
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`Case IPR2013-00139
`Patent 7,269,576
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`the presence of a digital ticket or an authorization object in a repository requesting
`a digital work before the digital work can be provided. (Ex. 1001, 36:45-46,
`37:18-19, 31:6-9.) Repositories acquire digital tickets through authorization
`transactions that request authorization objects from a remote authorization
`repository. (Ex. 1001, 41:31-42:16.) If the repository requesting the digital work
`is in possession of an authorization object, the server repository determines
`whether the requestor is permitted to perform the transaction based on usage rights
`related to the digital work. (Ex. 1001, 36:45-46, 37:18-19, 30:59-31:49.) Once the
`transaction is determined as being permitted, the digital work is transmitted to the
`repository requesting the digital work, and then the digital work is rendered. (Ex.
`1001, 36:47-50, 37:20-22.)
`
`C. Exemplary Claims
`
`Claims 1 and 18 are independent claims and are directed, respectively, to an
`apparatus and a method. Claims 2-17 directly or indirectly depend from claim 1,
`and claims 19-36 directly or indirectly depend from claim 18. Claims 1 and 18 are
`reproduced below, with a key term bolded for emphasis:
`1. An apparatus for rendering digital content in accordance
`with rights that are enforced by the apparatus, said apparatus
`comprising:
`
` a
`
` a
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` rendering engine configured to render digital content;
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` storage for storing the digital content;
`
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`means for requesting use of the digital content stored in the
`storage; and
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`
`7
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`
`a repository coupled to the rendering engine,
`
`wherein the repository includes:
`
`means for processing a request from the means for requesting,
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`means for checking whether the request is for a permitted
`rendering of the digital content in accordance with rights specified in
`the apparatus,
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`means for processing the request to make the digital content
`available to the rendering engine for rendering when the request is for
`a permitted rendering of the digital; and
`
`means for authorizing the repository for making the digital
`content available for rendering, wherein the digital content can be
`made available for rendering only by an authorized repository, the
`repository comprising:
`
`means for making a reauest [sic] for an authorization object
`required to be included within the repository for the apparatus to
`render the digital content; and
`
`means for receiving the authorization object when it is
`determined that the request should be granted.
`
`18. A method for controlling rendering of digital content on
`an apparatus having a rendering engine configured to render digital
`content and a storage for storing the digital content, said method
`comprising:
`
`specifying rights within said apparatus for digital content stored
`in said storage, said rights specifying how digital content can be
`rendered;
`
`storing digital content in said storage;
`8
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`Case IPR2013-00139
`Patent 7,269,576
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`
`
`receiving a request for rendering of said digital content stored in
`the storage;
`
`checking whether said request is for a permitted rendering of
`said digital content in accordance with said rights specified within
`said apparatus;
`
`processing the request to make said digital content available to
`the rendering engine for rendering when said request is for a permitted
`rendering of said digital content;
`
`authorizing a repository for making the digital content
`available for rendering, wherein the digital content can be made
`available for rendering only by an authorized repository, the
`repository performing the steps of:
`
`making a request for an authorization object reguired [sic] to be
`included within the repository for rendering of the digital content; and
`
`receiving the authorization object when it is determined that the
`request should be granted.
`
`
`D. Prior Art Relied Upon
`
`ZTE relies upon the following prior art references:
`
`Eur. Pat. Publ’n 0 268 139 (“EP ’139”) May 25, 1988
`Eur. Pat. Publ’n 0 464 306 (“EP ’306”)
`Jan. 8, 1992
`Hendricks
`
`U.S. Patent 5,986,690 Nov. 16, 1999
`Walker
`
`U.S. Patent 4,868,736
`Sept. 19, 1989
`Wyman
`
`U.S. Patent 5,260,999 Nov. 9, 1993
`
`(Ex. 1012)
`(Ex. 1010)
`(Ex. 1013)
`(Ex. 1011)
`(Ex. 1014)
`
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`9
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`Petitioner Apple Inc. - Ex. 1038, p. 9
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`

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`Case IPR2013-00139
`Patent 7,269,576
`
`
`E.
`
`The Alleged Grounds of Unpatentability
`
`ZTE contends that the challenged claims are unpatentable based on the
`following grounds:
`1. Claims 1-4, 8-11, 14-21, 25-28, and 31-36 are unpatentable under
`35 U.S.C. § 102(b) as anticipated by EP ’139;
`2. Claims 1, 2, 4-9, 12-15, 17-19, 21-26, 29-32, and 34-36 are unpatentable
`under 35 U.S.C. § 102(b) as anticipated by Walker;
`3. Claims 1-4, 7-15, 17-21, 24-32, and 34-36 are unpatentable under
`35 U.S.C. § 102(e) as anticipated by Hendricks;
`4. Claims 1, 2, 4-6, 8-12, 15, 16, 18, 19, 21-23, 25-29, 32, 33, 35, and 36 are
`unpatentable under 35 U.S.C. § 102(b) as anticipated by EP ’306; and
`5. Claims 5, 6, 22, and 23 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Hendricks in view of Wyman.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are interpreted
`according to their broadest reasonable construction in light of the specification of
`the patent in which they appear. 37 C.F.R. § 42.100(b). Also, claim terms are
`given their ordinary and customary meaning as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. Phillips v. AWH
`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). An inventor may rebut that
`presumption by providing a definition of the term in the specification with
`
`10
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`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475,
`1480 (Fed. Cir. 1994).
`ContentGuard submits a proposed construction for the claim term
`“repository.” (Prel. Resp. 20-23.) We also note that in independent claim 1 there
`are numerous elements recited in means-plus-function format under 35 U.S.C.
`§ 112, sixth paragraph, within the repository. We will construe each of these claim
`limitations in turn.
`1. “Repository” (Independent Claims 1 and 18)
`
`ContentGuard contends that the term “repository” should be interpreted as
`“a trusted system for supporting usage rights.” (Prel. Resp. 21.) ContentGuard
`cites several portions of the specification which support that construction. (Prel.
`Resp. 21-23, citing Ex. 1001, 4:6-7, 6:50-54, 12:25-34, , 13:25-33, 13:51-56, 52:1-
`6.) ZTE does not provide an explicit construction for “repository.”
`The specification provides a glossary which recites the following meaning
`for “repository”:
`Conceptually a set of functional specifications defining core
`functionality in the support of usage rights. A repository is a trusted
`system
`in that
`it maintains physical, communications and
`behavioral integrity.
`
`(Ex. 1001, 52:1-6, emphasis added.) By setting forth the term in a glossary and
`using the verb “is” following “repository” in the second sentence, the specification
`sets forth an explicit definition of “repository” as “a trusted system in that it
`maintains physical, communications and behavioral integrity.” The first sentence
`is also relevant to the definition of “repository” because it elaborates that the
`
`11
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`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.” Those terms are described in a section of the specification
`labeled “[r]epositories.” For “physical integrity,” the specification describes:
`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 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 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.
`
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`12
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`(Ex. 1001, 12:35-61; emphasis added.) Much of the above description makes use
`of permissive terms such as “may” and “can” and, thus, do not reflect or indicate a
`required limitation for physical integrity. 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 describes the following:
`Communications
`integrity
`refers
`to
`the
`integrity of
`the
`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 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, 12:62-13:7; emphasis added.) We construe “communications integrity”
`as “only communicates with other devices that are able to present proof that they
`are trusted systems, for example, by using security measures such as encryption,
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`13
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`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 describes:
`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.
`
`(Ex. 1001, 13:8-33; 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 in contrary to our interpretation. That is
`not unusual. 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.
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`The specification in Table 2 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, 15:30-41.) 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 in the glossary. We make our determination based on
`the totality of the evidence.
`As noted above, the disclosed invention is about distribution of and usage
`rights enforcement of digital works. The problems described in the background
`portion of the specification concerns unauthorized and unaccounted distribution or
`usage of electronically published materials. (Ex. 1001, 1:24-43.) The ’576 patent
`states that it solves preexisting problems by both permanently attaching usage
`rights to digital works and placing elements in repositories which enforce those
`usage rights. (Ex. 1001, 3:53-4:15.)
`
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`Here, the definition set forth in the glossary for “repository” is fully
`consistent with the description of the acknowledged prior art and the objective or
`goal to be achieved by the invention. The specification also contains detailed
`preferred embodiments utilizing repositories which are trusted systems to provide
`usage control for digital works. (Ex. 1001, 12:25-34, 26:20-44, 43:36-50:26.)
`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.
`
`(Ex. 1001, 6:50-54, 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.
`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, 14:45-51, 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, 13:42-44, 14:56-57.)
`
`16
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`Petitioner Apple Inc. - Ex. 1038, p. 16
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`Case IPR2013-00139
`Patent 7,269,576
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`Indeed, by using words such as “require” and “required,” such examples amply
`support the definition provided in the glossary that a repository is a trusted system.
`
`In summary, the weight of the evidence supports the definition provided in
`the glossary, even applying the rule of broadest reasonable construction consistent
`with the specification. We regard as significant that the definition states in no
`equivocal manner that a repository “is a trusted system.”
`2. Repository “means for …” (Claim 1)
`
`Independent claim 1 recites a repository including six different means-plus-
`function claim elements. The meaning of a means-plus-function limitation is
`governed by 35 U.S.C. § 112, sixth paragraph, which provides:1
`An element in a claim for a combination may be expressed as a means
`or step for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be
`construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
`
`The above-quoted requirement applies regardless of the context in which the
`
`meaning of a means-plus-function claim element arises, i.e., whether in a
`proceeding before the Patent and Trademark Office, or in validity or infringement
`litigation before the courts. In re Donaldson, 16 F.3d 1189, 1193 (Fed. Cir.
`1994)(en banc). More importantly, the established law regarding 35 U.S.C. § 112,
`
`
`1 Section 4(c) of the America Invents Act (“AIA”) re-designated 35 U.S.C. § 112,
`¶ 6, as 35 U.S.C. § 112(f). Because the ’576 patent has a filing date prior to
`September 16, 2012, the effective date of AIA, we refer to the pre-AIA version of
`35 U.S.C. § 112.
`
`17
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`Petitioner Apple Inc. - Ex. 1038, p. 17
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`Case IPR2013-00139
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`sixth paragraph, as applied to computer-implemented means-plus-function
`elements, is articulated in Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323,
`1340 (Fed. Cir. 2008):
`For computer-implemented means-plus-function claims where the
`disclosed structure is a computer programmed to implement an
`algorithm, “the disclosed structure is not the general purpose
`computer, but rather the special purpose computer programmed to
`perform the disclosed algorithm.” WMS Gaming, Inc. v. Int’l Game
`Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). Thus the patent must
`disclose, at least to the satisfaction of one of ordinary skill in the art,
`enough of an algorithm to provide the necessary structure under 35
`U.S.C. § 112, ¶ 6. This court permits a patentee to express that
`algorithm in any understandable terms including as a mathematical
`formula, in prose, see In re Freeman, 573 F.2d 1237, 1245-46 (CCPA
`1978), or as a flow chart, or in any other manner that provides
`sufficient structure.
`
`The above-quoted law of 35 U.S.C. § 112, sixth paragraph, is well
`
`established. In Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d
`1328, 1333 (Fed. Cir. 2008), the Court of Appeals for the Federal Circuit stated:
`
`In cases involving a computer-implemented invention in which the
`inventor has invoked means-plus-function claiming, this court has
`consistently required
`that
`the structure disclosed
`in
`the
`specification be more than simply a general purpose computer or
`microprocessor. The point of the requirement that the patentee
`disclose particular structure in the specification and that the scope of
`the patent claims be limited to that structure and its equivalents is to
`avoid pure functional claiming.
`
`(Emphasis added.)
`
`
`
`
`18
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`Petitioner Apple Inc. - Ex. 1038, p. 18
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`More recently, the Federal Circuit also indicated that generally disclosing
`
`software without providing detail is not enough disclosure of structure. Function
`Media, L.L.C. v. Google Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013). In that regard,
`the Federal Circuit stated that when dealing with a special purpose computer-
`implemented means-plus-function limitation, the specification must disclose the
`algorithm for performing the function and that the specification can express the
`algorithm in any understandable terms, such as mathematical formula, prose, or
`flow chart. Id.
`
`Claim 1 is directed towards a system including a repository comprising,
`within it, six means-plus-function claim elements. Each of these claim elements is
`recited in the form of a means for performing a function without recital of any
`structure. As such, they are presumed to have invoked 35 U.S.C. § 112, sixth
`paragraph. Personalized Media Communications LLC v. Int’l Trade Comm’n, 161
`F.3d 696, 703-04 (Fed. Cir. 1998); Sage Prods. v. Devon Indus., Inc., 126 F.3d
`1420, 1427-28 (Fed. Cir. 1997).
`For each of the six means-plus-function elements, ZTE points to processing
`means 1200 as the corresponding structure disclosed in the specification, with the
`sixth means also including external interface 1206. (Pet. 9.) Processing means
`1200 as disclosed in the specification of the ’576 patent is comprised of processor
`element 1201, which may be a microprocessor or other suitable computing
`component, and processor memory 1202 which contains software used by the
`processor. (Ex. 1001, 13:59 to 14:10.) As presented by ZTE, the corresponding
`computing structure for each of the computer-implemented means is no more than
`
`19
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`Petitioner Apple Inc. - Ex. 1038, p. 19
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`Case IPR2013-00139
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`a general purpose computer with generally referenced software. That, however, is
`incorrect.
`
`A general purpose computer executing generally referenced software is
`insufficient to constitute corresponding structure of a claim element expressed in
`means-plus-function form under 35 U.S.C. § 112, sixth paragraph. Finisar,
`523 F.3d at 1340; Aristocrat, 521 F.3d at 1333; see also Function Media, 708 F.3d
`at 1318. Instead, the structure of a computer-implemented means must be a
`“special purpose computer programmed to perform [a] disclosed algorithm.”
`Finisar, 523 F.3d at 1340. In that regard, the specification must disclose the
`computer executed algorithm for performing the recited function, and the
`specification can express the algorithm in any understandable terms, such as
`mathematical formula, prose, or flow chart. Function Media, 708 F.3d at 1318.
`Hereinbelow, we consider each of the six means-plus-function claim
`elements and find algorithms sufficiently expressed in prose, which, in
`combination with the disclosed processor, form their corresponding structures.
`a. means for processing a request from the means for
`requesting;
`
`Claim 1 recites that the repository includes “means for processing a
`request from the means for requesting.” In the context of