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` Paper 11
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` Entered: July 16, 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 IPR2013-00136
`Patent 7,359,884
`
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`
`KIM, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`Petitioner Apple Inc. - Ex. 1039, p. 1
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`
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`Case IPR2013-00136
`Patent 7,359,884
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`I.
`
`INTRODUCTION
`
`ZTE Corporation and ZTE (USA), Inc. (“ZTE”) filed a petition requesting
`
`an inter partes review of claims 1-11, 13-22, 27-37, 39-48, and 53-70 of
`
`U.S. Patent No. 7,359,884 (Ex. 1001, “the ’884 patent”). (Paper 4, “Pet.”) The
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`patent owner, ContentGuard Holdings, Inc. (“ContentGuard”) filed a preliminary
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`response. (Paper 9, “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 petition and patent owner preliminary response,
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`we determine that the information presented in the petition establishes that there is
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`a reasonable likelihood that ZTE would prevail with respect to claims 1-8, 14-22,
`
`and 55-62 of the ’884 patent. Accordingly, we grant the petition and institute an
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`inter partes review of these claims.
`
`A. Related Proceedings
`
`ZTE indicates that the ’884 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.)
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`2
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`Petitioner Apple Inc. - Ex. 1039, p. 2
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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. 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.)
`
`B. The ’884 Patent
`
`The subject matter of the ’884 patent relates to controlling use of content
`
`through usage rights associated with the content. (Ex. 1001, 1:19-23.) According
`
`to the ’884 patent, an issue concerning the widespread distribution of digital
`
`content is providing the ability to enforce the intellectual property rights during the
`
`distribution and use of the digital content. (Ex. 1001, 1:25-31.) This issue arises
`
`due to the nature of digital content, which easily is copied, modified, and
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`redistributed unprotected with high quality. (Ex. 1001, 1:43-47.) According to the
`
`’884 patent, technologies for resolving these problems are referred to as Digital
`
`Rights Management (“DRM”). (Ex. 1001, 1:31-32.) Issues to be considered in
`
`effecting DRM include authentication, authorization, accounting, payment and
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`financial clearing rights, rights specification, rights verification, rights
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`enforcement, and document protection issues, to name a few. (Ex. 1001, 1:33-37.)
`
`One such DRM system, includes repositories, where a predetermined set of usage
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`transaction steps define a protocol used by the repositories for enforcing usage
`
`rights associated with the content. (Ex. 1001, 1:49-55.) The usage rights persist
`
`with the content, and can permit various manners of use of the content, such as a
`
`right to view, print or display the content, a right to use the content only once, a
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`3
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`Petitioner Apple Inc. - Ex. 1039, p. 3
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`right to distribute or redistribute the content. (Ex. 1001, 1:55-60.) Such usage
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`rights can be made contingent on payment or other conditions. (Ex. 1001, 1:60-
`
`61.) According to the ’884 patent, the disclosed invention expresses usage rights
`
`for content based on modulated or varied signals or graphical representations of the
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`usage rights. (Ex. 1001, 1:65-2:2.)
`
`C. Exemplary Claims
`
`Of the challenged claims, claims 1 and 27 are independent claims.
`
`Independent claim 1 is directed to a computer implemented method, while
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`independent claim 27 is directed to a system. Claims 2-11, 13-22, and 55-62
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`directly or indirectly depend from claim 1, and claims 28-37, 39-48, 53-54, and 63-
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`70 directly or indirectly depend from claim 27. Claims 1 and 27 are exemplary of
`
`the claimed subject matter of the ’884 patent, and are reproduced as follows, with
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`limitations key to our analysis bolded for emphasis:
`
`A computer implemented method for processing a rights
`1.
`expression for association with an item for use in a digital rights
`management system for controlling the use of the item in accordance
`with the rights expression, said method comprising:
`specifying in a license a rights expression in an original format;
`
`and
`
`generating an intermediate format for said rights expression
`based on at least one of syntax information and semantics
`information associated with said original format,
`wherein said rights expression specifies a manner of use of said
`item for enforcement on a device, and
`said rights expression is encoded with a grammar-based
`expression language, and
`said intermediate format is for controlling the use of said item
`in accordance with the manner of use specified in said rights
`
`4
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`Petitioner Apple Inc. - Ex. 1039, p. 4
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`expression.
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`27. A system for processing a rights expression for association
`with an item for use in a digital rights management system for
`controlling the use of the item in accordance with the rights
`expression, said system comprising:
`a license specifying a rights expression in an original format;
`
`and
`
`means for generating an intermediate format for said rights
`expression based on at least one of syntax information and
`semantics
`information associated with said original format,
`grammar-based language
`wherein said rights expression specifies a manner of use of said
`item for enforcement on a device, and
`said rights expression is encoded with a grammar-based
`expression language, and
`said intermediate format is for controlling the use of said item
`in accordance with the manner of use specified in said rights
`expression.
`
`D. Prior Art Relied Upon
`
`
`
`ZTE relies upon the following prior art references:
`
`
`(Ex. 1013)
`
`Safadi
`
`Erickson et al.
`
`Messerges et al. U.S. Pat. Pub. 2002/0157002 A1
`Oct. 24, 2002
` U.S. Pat. Pub. 2003/0126086
`
`Jul. 3, 2003 (Ex. 1014)
`U.S. Pat. Pub. 2003/0046093 A1
`
`Mar. 6, 2003
`(Ex. 1015)
`U.S. Patent 5,444,779 Aug. 22, 1995
`(Ex. 1016)
`Daniele
`Stefik et al. U.S. Patent 5,629,980 May 13, 1997
`(Ex. 1017)
`Hall et al. U.S. Patent 5,920,861
`Jul. 6, 1999 (Ex. 1018)
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`5
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`Petitioner Apple Inc. - Ex. 1039, p. 5
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`E. The Asserted Grounds
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`ZTE contends that the challenged claims are unpatentable based on the
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`following grounds:
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`1. Claims 1-8, 14-20, 27-34, 40-46, and 53-70 are unpatentable under
`
`35 U.S.C. § 102 (e) as anticipated by Messerges;1
`
`2. Claims 1-3, 5, 14, 16-20, 27-29, 31, 40, 42-46, 53, and 54 are unpatentable
`
`under 35 U.S.C. § 102 (e) as anticipated by Safadi;2
`
`3. Claims 1, 20, 27, 46, 53, and 54 are unpatentable under 35 U.S.C. § 102 (e)
`
`as anticipated by Erickson;3
`
`
`
`1 The ’884 patent was filed on Mar. 14, 2003, and claims priority to provisional
`application No. 60/363,932, filed Mar. 14, 2002. Messerges was published on Oct.
`24, 2002, and was filed on Aug. 29, 2001. As Messerges was published less than
`one year before the filing date of the ’884 patent, Messerges cannot be prior art to
`the ’884 patent under 35 U.S.C. § 102(b). Accordingly, even though the Petition
`contends that Messerges is prior art to the ’884 patent under 35 U.S.C. §§ 102(b)
`and/or (e), of these two sections, Messerges is actually only prior art to the ’884
`patent under 35 U.S.C. § 102(e).
`2 The ’884 patent was filed on Mar. 14, 2003, and claims priority to provisional
`application No. 60/363,932, filed Mar. 14, 2002. Safadi was published on Jul. 3,
`2003, and was filed on Dec. 31, 2001. As Safadi was published after the filing
`date of the ’884 patent, Safadi cannot be prior art to the ’884 patent under
`35 U.S.C. § 102(b). Accordingly, even though the Petition contends that Safadi is
`prior art to the ’884 patent under 35 U.S.C. §§ 102(b) and/or (e), of these two
`sections, Safadi is actually only prior art to the ’884 patent under
`35 U.S.C. § 102(e).
`3 The ’884 patent was filed on Mar. 14, 2003, and claims priority to provisional
`application No. 60/363,932, filed Mar. 14, 2002. Erickson was published on Mar.
`6, 2003, and was filed on Dec. 31, 2001. As Erickson was published less than one
`
`
`6
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`Petitioner Apple Inc. - Ex. 1039, p. 6
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`4. Claims 1-8, 14-20, 27-34, 40-46, and 53-70 are unpatentable under
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`35 U.S.C. § 103(a) as obvious over Messerges and Safadi;
`
`5. Claims 1, 4-7, 19, 20, 27, 30-33, 45, 46, 53, 54, 61, and 69 are unpatentable
`
`under 35 U.S.C. §§ 102(a) and (b) as anticipated by Daniele;
`
`6. Claims 1, 4-7, 19, 20, 27, 30-33, 45, 46, 53, 54, 61, and 69 are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Daniele and Stefik;
`
`7. Claims 1, 2, 5, 6, 14, 18-20, 27, 28, 31, 32, 40, 44-46, 53, 54, 61, 62, 69, and
`
`70 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Hall;
`
`8. Claims 1, 2, 5, 6, 14, 18-20, 27, 28, 31, 32, 40, 44-46, 53, 54, 61, 62, 69, and
`
`70 are unpatentable under 35 U.S.C. § 103(a) as obvious over Hall and
`
`Stefik;
`
`9. Claims 9-11, 13, 35-37, and 39 are unpatentable under 35 U.S.C. § 103(a) as
`
`obvious over Messerges and Erickson; and
`
`10. Claims 21, 22, 47, and 48 are unpatentable under 35 U.S.C. § 103(a) as
`
`obvious over Messerges and Daniele.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`
`
`year before the filing date of the ’884 patent, Erickson cannot be prior art to the
`’884 patent under 35 U.S.C. § 102(b). Accordingly, even though the Petition
`contends that Erickson is prior art to the ’884 patent under 35 U.S.C. §§ 102(b)
`and/or (e), of these two sections, Erickson is actually only prior art to the ’884
`patent under 35 U.S.C. § 102(e).
`
`
`7
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`Petitioner Apple Inc. - Ex. 1039, p. 7
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`As a first step in our analysis for determining whether to institute a review,
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`we determine the meaning of the claims. In an inter partes review, claim terms in
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`an unexpired patent are given their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Also,
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`claim terms are given their ordinary and customary meaning as would be
`
`understood by one of ordinary skill in the art at the time of the invention. Phillips
`
`v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). An inventor may
`
`provide a contrary definition of the term in the specification, if it is done with
`
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475,
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`1480 (Fed. Cir. 1994). At the same time, we must be careful not to read a
`
`particular embodiment appearing in the written description into the claim if the
`
`claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181,
`
`1184 (Fed. Cir. 1993). In rendering our decision, it is necessary to construe several
`
`claim terms.
`
`1.
`
`Syntax
`
`Independent claims 1 and 27 each recite “syntax.” The specification does
`
`not provide a definition of “syntax.” Neither ZTE nor ContentGuard provide a
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`definition of “syntax.” The Microsoft Computer Dictionary defines “syntax” as
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`“[t]he grammar of a language; the rules governing the structure and content of
`
`statements.” Microsoft Computer Dictionary 507 (5th ed. Microsoft Press 2002).
`
`The use of “syntax” in the specification is consistent with this definition.
`
`
`
`Accordingly, we regard that definition as the meaning of the claim term
`
`“syntax.”
`
`8
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`2. Means for generating an intermediate format
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`Independent claim 27 recites “means for generating an intermediate format
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`for said rights expression based on at least one of syntax information and semantics
`
`information associated with said original format, grammar-based language.” ZTE
`
`proposes that the “means for generating” be construed as “hardware, software, or a
`
`hardware-software combination that performs the localizing, simplifying,
`
`translating, interpreting, canonicalizing, pre-processing, formatting, pruning, or
`
`evaluating processes described in [the ’884] Patent specification.” (Pet. 12-15.)
`
`ContentGuard did not provide a proposed claim construction for the “means for
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`generating” in the Preliminary Response.
`
`A claim element for a combination may be expressed as a means or a step
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`for performing a specified function without the recital of structure, material, or acts
`
`in support thereof, and it shall cover the corresponding structure, material or acts
`
`described in the specification and equivalents thereof. 35 U.S.C. § 112, 6th
`
`paragraph. To determine what is covered by a means-plus-function element, we
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`look to the specification to identify the corresponding structure, material, or acts
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`which are described as performing the recited function. 35 U.S.C. § 112, 6th
`
`paragraph; In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc).
`
`We agree with ZTE that the “means for generating . . .” recited in independent
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`claim 27 is a means-plus-function limitation under 35 U.S.C. § 112, sixth
`
`paragraph. (Pet. 13.) Accordingly, we look to the specification of the ’884 patent
`
`to identify the structure, material, or acts which are described as performing the
`
`recited functions.
`
`9
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`Petitioner Apple Inc. - Ex. 1039, p. 9
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`The claimed function is “generating an intermediate format for said rights
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`expression based on at least one of syntax information and semantics information
`
`associated with said original format, grammar-based language.” The following
`
`portions of the specification of the ’884 patent disclose the claimed function:
`
`The exemplary localizer processes 201 can receive a rights expression
`207 in a grammar-based language, such as XrML, and rights
`expression language information 209 including syntax information,
`semantics information. The exemplary localizer processes 201 can
`convert the rights expression 207 into an intermediate format that can
`be referred to as in an exemplary self-contained format 211 based on
`and the grammar-based rights expression language information 209.
`
`(Ex. 1001, 6:45-53; emphasis added.)
`
`In an exemplary embodiment, the exemplary localizer processes 201
`can include devices, components, applications, functions, systems,
`platforms, responsible for assigning
`the semantic meaning of
`keywords, elements, conditions, rights expressions, employed in the
`rights expression 207, for resolving potential ambiguities within the
`rights expression 207, for preprocessing the rights expression 207.
`The exemplary localizer processes 201 can employ the syntax and
`semantics information 209 of the corresponding rights language to
`pre-process the rights expressions 207 to generate the rights
`expression 207 in the exemplary self-contained format 211, which,
`can include the rights expression 207 in an unambiguous form.
`
`(Ex. 1001, 7:57-8:3; emphasis added.) Figure 2 of the specification is shown
`
`below, and illustrates exemplary multi-pass interpretation processes that can be
`
`implemented on DRM systems.
`
`10
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`All of the above disclosures in the specification show a grammar-based rights
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`expression, syntax information, and semantics information being input into
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`localizer 201, and also show localizer 201 outputting a rights expression in a self-
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`contained format. Based on these disclosures in the specification, the “means for
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`generating . . .” covers localizer 201 and equivalents thereof.
`
`The specification also discloses that “[t]he exemplary localizer processes
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`201 [and] the exemplary distributor processes can be implemented in the computer
`
`system 130 of FIG. 1.” (Ex. 1001, 10:63-65.) The specification further discloses
`
`the following:
`
`the exemplary localizer processes 201, the exemplary distributor
`processes 401, the exemplary interpreter processes 403, the exemplary
`simplifier processes 203, and the exemplary translator processes 205,
`can be implemented on one or more of the devices and sub-systems of
`the Digital Rights Management systems of FIGS. 1, 4 and 5.
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`11
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`(Ex. 1001, 11:2-8; see also 7:7-12). The specification further discloses the
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`following:
`
`All or a portion of the Digital Rights Management systems of FIGS. 1,
`4 and 5 as described with respect to FIGS. 1-15, can be conveniently
`implemented using one or more general-purpose computer systems,
`microprocessors, digital
`signal processors, micro-controllers,
`programmed according to the teachings of the disclosed exemplary
`embodiments. Appropriate software can be readily prepared by
`programmers of ordinary skill based on the teachings of the disclosed
`exemplary embodiments. In addition, the Digital Rights Management
`systems of FIGS. 1, 4 and 5 can be implemented by the preparation of
`application-specific integrated circuits or by interconnecting an
`appropriate network of component circuits.
`
`(Ex. 1001, 31:22-34.) Accordingly, as localizer 201 is software implemented on a
`
`general purpose computer, the corresponding structure under § 112, sixth
`
`paragraph is not the general purpose computer, but the disclosed algorithm for
`
`performing the claimed function. Aristocrat Technologies Australia Pty Ltd. v.
`
`International Game Technology, 521 F.3d 1328, 1333 (Fed. Cir. 2008) (citing
`
`Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005)) (“computer-
`
`implemented means-plus-function term is limited to the corresponding structure
`
`disclosed in the specification and equivalents thereof, and the corresponding
`
`structure is the algorithm”.) The algorithm may be expressed “‘in any
`
`understandable terms including as a mathematical formula, in prose, or as a flow
`
`chart, or in any other manner that provides sufficient structure.’” Typhoon Touch
`
`Technologies, Inc. v. Dell, Inc., 659 F.3d 1376, 1395 (Fed. Cir. 2011) (quoting
`
`Finisar v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)).
`
`12
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`Figure 6 of the specification is shown below, and illustrates exemplary
`
`localizer processes 201 that can be implemented on DRM systems.
`
`
`
`In describing Figure 6, the Specification discloses the following:
`
`In FIG. 6, exemplary canonicalizer processes 601 can resolve
`potential ambiguities within the rights expression 207, based on
`syntax information 607 of the syntax and semantics information 209
`to generate the rights expression 207 in an unambiguous form. In
`addition, the exemplary canonicalizer processes 601 can convert the
`unambiguous rights expression 207 into a canonical form 609 as
`described in greater detail below.
`
`Exemplary pre-processor processes 603 can be employed to process
`the unambiguous rights expression 207 in the canonical form 609
`based on semantics information 611 of the syntax and semantics
`information 209, to generate processing results 613. The processing
`results 613 can include, the unambiguous rights expression 207, a
`context
`table, a semantics
`table,
`the processing
`instructions.
`Exemplary formatter processes 605 can package, process, the
`processing results 613 to generate the rights expression 207 in the
`exemplary self-contained format 211.
`
`13
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`(Ex. 1001, 11:53-12:3.) We discern the following algorithm from Figure 6 and
`
`corresponding portions of the specification: (1) receiving a rights expression;
`
`receiving syntax information; (2) using the syntax information to generate an
`
`unambiguous form of the rights expression; (3) receiving semantics information;
`
`(4) using the semantics information to generate a semantics table and processing
`
`instructions; (5) appending the semantics table and the processing instructions to
`
`the unambiguous form of the rights expression; and (6) processing the semantics
`
`table, the processing instructions, and the unambiguous form of the rights
`
`expression to generate a rights expression in a self-contained format. Accordingly,
`
`we construe the “means for generating” as corresponding to localizer 201 and
`
`equivalents thereof that implement the aforementioned algorithm.
`
`B. Claims 1-8, 14-20, 27-34, 40-46, and 53-70 – Anticipated by Messerges
`
`ZTE contends that claims 1-8, 14-20, 27-34, 40-46, and 53-70 are
`
`unpatentable under 35 U.S.C. § 102(e) as anticipated by Messerges. (Pet. 16-24.)
`
`We will address ZTE and ContentGuard’s contentions with respect to each group
`
`of independent claims in turn.
`
`Messerges
`
`Messerges discloses content management systems for securely accessing
`
`digital content. (Ex. 1013, ¶ 1.) According to Messerges, when a user requests
`
`content from a content provider, the requested content is provided from the content
`
`provider as a part of a content package. (Ex. 1013, ¶ 42.) According to Messerges,
`
`the content package may include a rights document 720, an encoded rights table
`
`(ERT) 730, and encrypted content 750. (Id.) According to Messerges, an ERT
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`14
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`730 is a more efficient representation of the rights document. (Ex. 1013, ¶ 43.)
`
`Specifically, Messerges discloses that the encoded rights table 730 is designed so
`
`that digital usage rights of other rights documents can be transcribed into the
`
`encoded rights table format. (Ex. 1013, ¶ 44.) According to Messerges,
`
`transcribing from one digital rights management language to an encoded rights
`
`table representation may be done using a transcoder. (Id.) According to
`
`Messerges, the transcoder will parse the data from the source language and recode
`
`it to the encoded rights table format or vice-versa. (Id.) According to Messerges,
`
`the encoded rights table 730 is added to the content package 700 by the content
`
`provider 210 to reduce the complexity of enforcing the rules. (Ex. 1013, ¶ 46.)
`
`According to Messerges, by using an encoded rights table, the software on the user
`
`device can be simpler at the expense of a slightly larger content package and some
`
`additional preprocessing steps by the content provider. (Id.)
`
`Independent Claim 1
`
`ContentGuard contends Messerges does not disclose “generating an
`
`intermediate format . . . based on at least one of syntax information and semantics
`
`information associated with said original format,” as recited in independent
`
`claim 1. Specifically, ContentGuard contends that in recoding the rights document
`
`from the source language to the encoded rights table format in Messerges, no
`
`“syntax information” or “semantics information” needs to be utilized. We
`
`disagree.
`
`As an initial matter, independent claim 1 recites “generating an intermediate
`
`format . . . based on at least one of syntax information and semantics information
`
`associated with said original format.” (Emphasis added.) As set forth above, we
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`15
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`construe syntax” as “[t]he grammar of a language; the rules governing the structure
`
`and content of statements.” In recoding the rights document from the source
`
`language to the encoded rights table format, Messerges discloses that the data from
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`the source language is parsed. (Ex. 1013, ¶ 44.) By parsing the data, Messerges
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`discloses taking the rules governing the structure and content of statements in the
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`parsed data into account when recoding the rights document to the encoded rights
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`table format.
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`We are persuaded that ZTE has demonstrated a reasonable likelihood that
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`claims 2-8, 14-20, and 55-62 are anticipated by Messerges. (Pet. 20-24.)
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`Independent Claim 27
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`ContentGuard contends that Messerges does not disclose a “means for
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`generating an intermediate format for said rights expression based on at least one
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`of syntax information and semantics information associated with said original
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`format, grammar-based language,” as recited in independent claim 27. We agree.
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`We have construed the “means for generating . . .” as covering localizer 201 and its
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`equivalents thereof, with localizer 201 implementing the algorithm set forth in
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`Figure 6 of the specification.
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`Messerges discloses that the transcoder will parse the data from the source
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`language and recode it to the encoded rights table format or vice-versa. (Ex. 1013,
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`¶ 44.) ZTE contends that the transcoder of Messerges corresponds to localizer 201,
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`the source language corresponds to the recited rights expression, and that the
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`encoded rights table corresponds to the recited intermediate format. However,
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`Messerges does not disclose the transcoder performing several steps of the
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`algorithm set forth in Figure 6 of the specification. For example, the algorithm
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`16
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`includes “using the semantics information to generate a semantics table and
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`processing instructions; appending the semantics table and the processing
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`instructions to the unambiguous form of the rights expression.” ZTE has not
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`shown how Messerges discloses generating a semantics table, let alone appending
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`that semantics table to anything to form the encoded rights table.
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`As claims 28-34, 40-46, and 63-70 depend directly or indirectly from
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`independent claim 27, ZTE has also not shown a reasonable likelihood that it
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`would prevail in showing that these claims are anticipated by Messerges.
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`Conclusion
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`ZTE has shown a reasonable likelihood that it would prevail in showing that
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`claims 1-8, 14-20, and 55-62 of the ’884 patent are anticipated by Messerges.
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`ZTE has not shown a reasonable likelihood that it would prevail in showing
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`that claims 27-34, 40-46, and 63-70 of the ’884 patent are anticipated by
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`Messerges.
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`C. Claims 21-22 and 47-48 – Obvious Over Messerges and Daniele
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`ZTE contends that claims 21, 22, 47, and 48 are unpatentable under
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`35 U.S.C. § 103(a) as obvious over Messerges and Daniele. (Pet. 58-59.) Claims
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`47 and 48 depend indirectly from independent claim 27. As ZTE has not shown
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`how Daniele remedies the deficiency of independent claim 27 set forth above, ZTE
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`has not shown a reasonable likelihood that it would prevail in showing that claims
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`47 and 48 of the ’884 patent are unpatentable over Messerges and Daniele.
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`For claims 21 and 22, however, we are persuaded by ZTE’s analysis and
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`supporting evidence. For example, claim 21 recites “wherein said device-specific
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`format comprises a graphical representation of said rights expression.” Messerges
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`is cited for disclosing the device-specific format. (Pet. 21.) Daniele discloses a
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`method and apparatus for detecting copying of a document protected by a
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`copyright on a reprograhic device. (Ex. 1016, 1:10-12.) Daniele discloses that
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`data may be presented on a document using multi-bit binary data symbols encoded
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`in a two-dimensional code. (Ex. 1016, 6:54-57.) Daniele discloses that such a
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`self-clocking glyph code faithfully preserves the logical ordering of the bits that
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`are encoded in its glyphs because the glyphs are written onto and read from a
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`suitable recording medium in a known order and are in compliance with a
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`predetermined spatial formatting rule. (Ex. 1016, 6:57-62.)
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`ContentGuard contends that Daniele is non-analogous art. We disagree.
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`The ’884 patent is directed to controlling use of content through usage rights
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`associated with the content. (Ex. 1001, 1:19-21.) Daniele discloses a method and
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`apparatus for detecting copying of a document protected by a copyright on a
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`reprograhic device. (Ex. 1016, 1:10-12.) Thus, both the ’884 patent and Daniele
`
`are within the same field of endeavor—namely the technical field of protection of
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`content rights. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (a reference is
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`analogous art to the claimed invention if: (1) the reference is from the same field of
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`endeavor as the claimed invention; or (2) the reference is reasonably pertinent to
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`the problem faced by the inventor).
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`Moreover, the ’884 patent is directed to solving problems concerning
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`unauthorized copying of printed materials. (Ex. 1001, 1:43-47.) Similarly,
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`Daniele is directed to solving problems concerning user copying and reprinting of
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`materials that should not be reproduced. (Ex. 1016, 1:23-28.) Accordingly,
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`Daniele is also reasonably pertinent to a problem identified in the ’884 patent.
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`ContentGuard further contends that ZTE failed to provide a sufficient
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`rationale to combine the disclosures of Messerges and Daniele. Specifically,
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`ContentGuard states:
`
`In alleging that Messerges and Safadi, Daniele and Stefik, Hall and
`Stefik, Messerges and Erickson, and Messerges and Daniele can be
`combined to render obvious various claims of the ’884 Patent, ZTE
`(as well as the Madisetti Declaration) provided only statements that
`either characterize each of the individual references or assert
`conclusions about alleged benefits of the supposed combinations
`without any articulated reasoning for why one of ordinary skill in the
`art would have made each of the alleged combination.
`
`(Prel. Resp. 32-33.) We are not persuaded by ContentGuard’s contention.
`
`ZTE asserts the following rationale to combine:
`
`One of ordinary skill in the art would have been motivated to combine
`Messerges and Daniele, at least, because both relate to rights
`management of an item, and both relate to increasing the flexibility of
`a rights management system to use additional means to enforce usage
`rights of an item, e.g., via a glyph. In addition, glyphs provide an
`accurate data structure for preserving the logical ordering of data and
`are thus as another form to enforce usage rights of items. (Daniele,
`6:54-62; see also Madisetti Decl., ¶ 146.)
`
`(Pet. 58-59.) We are persuaded by the opinion of Dr. Madisetti that representing
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`the device-specific format of Messerges in another form, such as the glyph codes
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`of Daniele, would have been within the abilities of one of ordinary skill in the art.
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`ZTE has shown a reasonable likelihood that it would prevail in showing that
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`claims 21 and 22 of the ’884 patent are unpatentable over Messerges and Daniele.
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`19
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`ZTE has not shown a reasonable likelihood that it would prevail in showing
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`that claims 47 and 48 of the ’884 patent are unpatentable over Messerges and
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`Daniele.
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`D. Claims 9-11, 13, 35-37, and 39 – Obvious Over Messerges and Erickson
`
`ZTE contends that claims 9-11, 13, 35-37, and 39 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Messerges and Erickson. (Pet. 55-58.) Claims
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`35-37 and 39 depend indirectly from independent claim 27. As ZTE has not
`
`shown how Erickson remedies the deficiency of independent claim 27 as set forth
`
`above, ZT