Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 9
`Entered: June 24, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00352
`Patent 7,774,280 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 9
`Entered: June 24, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00352
`Patent 7,774,280 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2015-00352
`Patent 7,774,280 B2
`
`
`I. INTRODUCTION
`
`Petitioner, Apple Inc. (“Apple”), filed a Petition (“Pet.”) requesting an
`
`inter partes review of claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and 34 of
`
`U.S. Patent No. 7,774,280 B2 (“the ’280 patent,” Ex. 1001). Paper 1. Patent
`
`Owner, ContentGuard Holdings, Inc. (“ContentGuard”), timely filed a
`
`Preliminary Response (“Prelim. Resp.”). Paper 8.
`
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
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`inter partes review may not be instituted unless the information presented in
`
`the Petition shows “there is a reasonable likelihood that the petitioner would
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`prevail with respect to at least 1 of the claims challenged in the petition.”
`
`Taking into account the arguments presented in ContentGuard’s Preliminary
`
`Response, we conclude that the information presented in the Petition does
`
`not establish that there is a reasonable likelihood that Apple will prevail in
`
`challenging claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and 34 of the ’280
`
`patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the
`
`Petition.
`
`A. Related Matters
`
`
`
`The ’280 patent has been asserted in the following three district court
`
`cases: (1) ContentGuard Holdings, Inc. v. Amazon.com Inc., No. 2:13-cv-
`
`01112 (E.D. Tex.); (2) Google Inc. v. ContentGuard Holdings, Inc., No.
`
`3:14-cv-00498 (N.D. Cal.); and (3) ContentGuard Holdings, Inc. v. Google
`
`Inc., No. 2:14-cv-00061 (E.D. Tex). Pet. 1; Paper 7, 2. In addition to this
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`Petition, Apple filed at least seven other Petitions challenging the
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`patentability of a certain subset of claims in the following patents owned by
`
`ContentGuard: (1) the ’280 patent (Cases IPR2015-00351, IPR2015-00353,
`
`and IPR2015-00354); and (2) U.S. Patent No. 8,001,053 B2 (Cases
`
`2
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`IPR2015-00352
`Patent 7,774,280 B2
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`IPR2015-00355, IPR2015-00356, IPR2015-00357, and IPR2015-00358).
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`Pet. 2; Paper 7, 1.
`
`B. The ’280 Patent
`
`The ’280 patent, titled “System and Method for Managing Transfer of
`
`Rights Using Shared State Variables,” issued August 10, 2010, from U.S.
`
`Patent Application No. 10/956,121, filed on October 4, 2004. Ex. 1001, at
`
`[54], [45], [21], [22]. The ’280 patent is a continuation-in-part of U.S.
`
`Patent Application No. 10/162,701, filed on June 6, 2002. Id. at [63]. The
`
`’280 patent also claims priority to the following provisional applications:
`
`(1) U.S. Provisional Application No. 60/331,624, filed on November 20,
`
`2001; (2) U.S. Provisional Application No. 60/331,623, filed on November
`
`20, 2001; (3) U.S. Provisional Application No. 60/331,621, filed on
`
`November 20, 2001; (4) U.S. Provisional Application No. 60/296,113, filed
`
`June 7, 2001; (5) U.S. Provisional Application No. 60/296,117, filed on June
`
`7, 2001; and (6) U.S. Provisional Application No. 60/296,118, filed on June
`
`7, 2001. Id. at [60].
`
`The ’280 patent generally relates to a method and system for
`
`managing the transfer of rights associated with digital works using shared
`
`state variables. Ex. 1001, 1:18–20. According to the ’280 patent, one of the
`
`most important issues impeding the widespread distribution of digital works
`
`is the current lack of ability to enforce the rights of content owners during
`
`the distribution and use of their digital works. Id. at 1:24–29. In particular,
`
`content owners do not have control over downstream parties unless they are
`
`privy to transactions with the downstream parties. Id. at 2:33–34.
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`Moreover, the concept of content owners simply granting rights to others
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`Patent 7,774,280 B2
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`that are a subset of the possessed rights is not adequate for multi-tier
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`distribution models. Id. at 2:45–48.
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`The ’280 patent purportedly addresses these problems by providing a
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`method and system for transferring rights associated with an item—
`
`presumably a digital work—from a supplier to a consumer. Ex. 1001, 2:52–
`
`55. The consumer obtains a set of rights associated with the digital work,
`
`which includes meta-rights specifying rights that may be derived therefrom.
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`Id. at 2:55–57. If the consumer is entitled to the rights derived from the
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`meta-rights, the disclosed invention then derives at least one right from the
`
`meta-rights. Id. at 2:58–60. The rights that may be derived from the meta-
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`rights include at least one state variable based on the set of rights, which, in
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`turn, may be used to determine a state of the derived right. Id. at 2:62–64.
`
`C. Illustrative Claim
`
`
`
`Of the challenged claims, claims 1, 12, and 24 are independent.
`
`Claims 1, 12, and 24 are directed to a method, a system, and a device,
`
`respectively, for transferring rights associated with an item from a rights
`
`supplier to a rights consumer. Claims 2–5, 8, and 11 directly depend from
`
`independent claim 1; claims 13–16, 19, and 22 directly depend from
`
`independent claim 12; and claims 25–28, 31, and 34 directly depend from
`
`independent claim 24. Independent claim 1 is illustrative of the challenged
`
`claims and is reproduced below:
`
`A computer-implemented method for transferring
`1.
`rights adapted to be associated with items from a rights supplier
`to a rights consumer, the method comprising:
`obtaining a set of rights associated with an item, the set
`of rights including a meta-right specifying a right that can be
`created when the meta-right is exercised, wherein the meta-
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`right is provided in digital form and is enforceable by a
`repository;
`determining, by a repository, whether the rights
`consumer is entitled to the right specified by the meta-right; and
`exercising the meta-right to create the right specified by
`the meta-right if the rights consumer is entitled to the right
`specified by the meta-right, wherein the created right includes
`at least one state variable based on the set of rights and used for
`determining a state of the created right.
`
`Ex. 1001, 15:7–22.
`
`D. Prior Art Relied Upon
`
`
`
`
`
`Apple relies upon the following prior art references:
`
`Wiggins
`Gruse
`
`
`
`
`
`
`
`Feb. 10, 1998
`US 5,717,604
`
`US 6,389,538 B1 May 14, 2002
`
`
`
`(filed Oct. 22, 1998)
`
`Ex. 1011
`Ex. 1008
`
`E. Asserted Grounds of Unpatentability
`
`Apple challenges claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and 34 of
`
`the ’280 patent based on the asserted grounds of unpatentability (“grounds”)
`
`set forth in the table below. Pet. 2–3, 24–60.
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Gruse
`
`§ 103(a)
`
`1–5, 8, 11–16, 19, 22, 24–28, 31, and 34
`
`Gruse and Wiggins § 103(a)
`
`1–5, 8, 11–16, 19, 22, 24–28, 31, and 34
`
`
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, we construe claims by applying the broadest
`
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`
`see In re Cuozzo Speed Tech., LLC, 778 F.3d 1271, 1281–82 (Fed. Cir.
`
`2015) (“Congress implicitly adopted the broadest reasonable interpretation
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`standard in enacting the AIA,” and “the standard was properly adopted by
`
`PTO regulation”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,766 (Aug. 14, 2012). Under the broadest reasonable interpretation
`
`standard, and absent any special definitions, 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. In re Translogic Tech.
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for
`
`claim terms or phrases must be set forth with reasonable clarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994).
`
`
`
`Apple proposes constructions for numerous terms or phrases, some of
`
`which are not recited explicitly in the challenged claims. Pet. 5–24. In
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`response, ContentGuard proposes alternative constructions for most of the
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`terms or phrases construed by Apple. Prelim. Resp. 18–33. For purposes of
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`this decision, we need only assess the constructions offered by the parties for
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`the claim term “repository” because our determination to deny the Petition is
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`based, at least in part, on the construction of this claim term.
`
`
`
`Apple contends that the broadest reasonable interpretation of the
`
`claim term “repository” is “a trusted system, which maintains physical,
`
`communications and behavioral integrity, and supports usage rights using
`
`information that enables it to enforce both ‘meta-rights’ and ‘usage rights’
`
`associated with a particular digital work.” Pet. 18 (citing Ex. 1003 ¶¶ 284–
`
`89). Apple argues that its proposed construction is consistent with the
`
`construction of the same claim term in previous inter partes review
`
`proceedings handled by another panel of the Board, one of which involves
`
`U.S. Patent No. 5,634,012 (“Stefik”) that is incorporated by reference into
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`6
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`the ’280 patent. See id. In those proceedings, Apple asserts that the Board
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`determined that the claim term “repository” was defined explicitly as “a
`
`trusted system, which maintains physical, communications and behavioral
`
`integrity, and supports usage rights.” Id. at 18–19 (citing Ex. 1035, 9)
`
`(emphasis omitted). Apple also asserts that, in those proceedings, the Board
`
`observed that to possess “physical integrity,” the repository must, among
`
`other things, “prevent[] access to information by a non-trusted system.” Id.
`
`at 19 (citing Ex. 1035, 11).
`
`
`
`
`
`Although Apple does not address separately “communications
`
`integrity” and “behavioral integrity” in its Petition, Apple’s declarant, Dr.
`
`Atul Prakash, nonetheless addresses these aspects of the claim term
`
`“repository” in his supporting testimony. Dr. Prakash testifies that, in the
`
`previous inter partes review proceedings before the Board, one of which
`
`involved Stefik, the Board defined “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.” Ex. 1003 ¶ 284 (citing
`
`Ex. 1041, 12). Dr. Prakash further testifies that the Board defined
`
`“behavioral integrity” as requiring “software to include a digital certificate
`
`in order to be installed in the repository.” Id. (citing Ex. 1041, 13).
`
`
`
`With a few exceptions, ContentGuard generally agrees with Apple’s
`
`proposed construction for the claim term “repository,” including its and Dr.
`
`Prakash’s definitions of “physical integrity,” “communications integrity,”
`
`and “behavioral integrity.” Prelim. Resp. 24–26. ContentGuard argues that
`
`the claim term “repository” should be construed as “a trusted system in that
`
`it maintains physical, communications, and behavioral integrity in the
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`support of usage rights.” Id. at 24 (emphasis added). ContentGuard argues
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`that its proposed construction is consistent with both the Board’s
`
`construction of the claim term “repository” in the previous inter partes
`
`review proceedings, which considered Stefik, and the construction adopted
`
`by a district court for the ’280 patent. Id. (citing Pet. 18; Ex. 2001, 15, 99).
`
`ContentGuard urges us to adopt its proposed construction for reasons
`
`specified by the district court. Id. at 24–25. ContentGuard further argues
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`that we should not adopt the language in Apple’s proposed construction that
`
`characterizes a repository as enforcing both meta-rights and usage rights
`
`because it would render the claim language describing a “meta-right . . .
`
`enforceable by a repository” redundant. Id. at 25.
`
`
`
`As an initial matter, we agree with the parties that the specification of
`
`the ’280 patent does not provide an explicit definition for the claim term
`
`“repository.” We also agree with the parties that the ’280 patent
`
`incorporates by reference Stefik, which provides an explicit definition for
`
`the claim term “repository.” Ex. 1001, 2:9–12; Ex. 1012, 53:23–27. Stefik
`
`provides a glossary that explicitly defines the claim term “repository” as
`
`“[c]onceptually 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. 1012,
`
`53:23–27.
`
`
`
`With the glossary definition from Stefik in mind, we decline to adopt
`
`the language in Apple’s proposed construction pertaining to “using
`
`information that enables it to enforce both ‘meta-rights’ and ‘usage rights’
`
`associated with a particular digital work.” It is well settled that our
`
`reviewing court disfavors any claim interpretation that renders a claim term
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`or phrase superfluous. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d
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`1358, 1362 (Fed. Cir. 2007). We agree with ContentGuard that, if we were
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`to adopt this language proposed by Apple, it would render the claim phrase a
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`“meta-right . . . enforceable by a repository,” explicitly recited in
`
`independent claims 1, 12, and 24, superfluous.
`
`
`
`After reviewing the remaining language in the constructions offered
`
`by both parties, we discern little, if any, difference between a “repository”
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`that is “a trusted system which maintains physical, communications, and
`
`behavioral integrity, and supports usage rights,” and one that is “a trusted
`
`system in that it maintains physical, communications, and behavioral
`
`integrity in the support of usage rights.” Pet. 18; Prelim Resp. 24.
`
`(emphasis added). We view the Board’s construction of the claim term
`
`“repository” in the previous inter partes reviews, which were brought
`
`against ContentGuard patents that share a similar disclosure with Stefik
`
`incorporated by reference in the ’280 patent, as informative. We give more
`
`weight to the panel’s construction of the claim term “repository” in those
`
`proceedings than the district court’s construction of the same claim term
`
`primarily because this proceeding and the previous proceeding before the
`
`Board both apply the broadest reasonable interpretation standard to the
`
`challenged claims of an unexpired patent. 37 C.F.R. § 42.100(b).
`
`
`
`For purposes of this proceeding, we construe the claim term
`
`“repository” as “a trusted system which maintains physical,
`
`communications, and behavioral integrity, and supports usage rights.” We
`
`further define “physical integrity” as “preventing access to information by a
`
`non-trusted system”; “communications integrity” as “only communicates
`
`with other devices that are able to present proof that they are trusted
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`systems, e.g., by using security measures such as encryption, exchange of
`
`digital certificates, and nonces”; and “behavioral integrity” as “requiring
`
`software to include a digital certificate in order to be installed in the
`
`repository.”
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`B. Obviousness Based on Gruse
`
`
`
`Apple contends that claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and 34
`
`are unpatentable under § 103(a) over Gruse. Pet. 24–50. Apple explains
`
`how Gruse purportedly teaches the claimed subject matter of each
`
`challenged claim (id. at 31–50), and relies upon the Declaration of
`
`Dr. Prakash (Ex. 1003 ¶¶ 236–308, 318–31, 459–560)1 to support its
`
`positions (Pet. 24). We have considered Apple’s explanations and
`
`supporting evidence, but we are not persuaded Apple has presented
`
`sufficient evidence to support a finding that Gruse teaches the claimed
`
`“repository” that exhibits “behavioral integrity.”
`
`
`
`We begin our analysis with the principles of law that generally apply
`
`to a ground based on obviousness, followed by a brief discussion of Gruse,
`
`
`
`1 Our governing statute and rules require a petitioner to set out their claim
`challenges “with particularity” and with a “detailed explanation of the
`significance of the evidence.” 35 U.S.C. § 312(a)(3); 37 C.F.R.
`§§ 42.22(a)(2), 42.104(b)(4), (5). Likewise, the Office Patent Trial Practice
`Guide admonishes a petitioner to “focus on concise, well organized, easy-to-
`follow arguments supported by readily identifiable evidence of record.” 77
`Fed. Reg. 48,756–73, 48,763 (Aug. 14, 2012). In general, citations to
`voluminous sections, e.g., one hundred and one paragraphs, of an expert
`declaration do not conform to these requirements and guidance, and are
`unhelpful. As such, citations of this type, as well as statements they
`allegedly support, are not entitled to consideration.
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`and then we turn to the parties’ arguments directed to the claimed
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`“repository” that exhibits “behavioral integrity.”
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`1. Principles of Law
`
`A claim is unpatentable under § 103(a) if the differences between the
`
`claimed subject matter and the prior art are such that the subject matter, as a
`
`whole, would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations,
`
`including: (1) the scope and content of the prior art; (2) any differences
`
`between the claimed subject matter and the prior art; (3) the level of skill in
`
`the art; and (4) where in evidence, so-called secondary considerations.
`
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze this
`
`asserted ground based on obviousness with the principles identified above in
`
`mind.
`
`2. Gruse
`
`
`
`Gruse generally relates to the field of electronic commerce and, in
`
`particular, to tools for the secure delivery and rights management of digital
`
`assets, such as print media, films, games, and music, over global
`
`communications networks. Ex. 1008, 1:58–63. Figure 6 of Gruse,
`
`reproduced below, illustrates a block diagram of content distribution and
`
`licensing control as it applies to the license control layer of the secure digital
`
`content electronic distribution system.
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`As shown in Figure 6 of Gruse, secure digital content electronic
`
`distribution system 100 (not labeled in Figure 6) includes, among other
`
`things, content provider 101 or content proprietor, electronic digital content
`
`store 103, clearinghouse 105, and end-user device 109. Ex. 1008, 11:52–59.
`
`Content provider 101 or content proprietor are the owners of original content
`
`113 or, alternatively, distributors authorized to package independent content
`
`113 for further distribution. Id. at 11:66–12:1. Electronic digital content
`
`store 103 is an entity that markets content 113 through a wide variety of
`
`services or applications, such as content 113 theme programming or
`
`electronic merchandising of content 113. Id. at 12:57–60. Clearinghouse
`
`105 provides licensing authorization and record keeping for all transactions
`
`that relate to the sale or permitted use of content 113 encrypted in a secure
`
`container (“SC”). Id. at 13:45–48. End-user device 109 may be any player
`
`device that contains end-user player application 195 compliant with the
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`specifications of secure digital content electronic distribution system 100.
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`Id. at 14:24–27.
`
`
`
`When a digital content label, e.g., a music label such as Sony, Time-
`
`Warner, etc., decides to allow electronic digital content store 103 to sell its
`
`content 113, the electronic digital content store contacts clearinghouse 105
`
`with a request indicating that it would like to be added to secure digital
`
`content electronic distribution system 100. Ex. 1008, 44:58–63. The digital
`
`content label provides the name of the applicable electronic digital content
`
`store, as well as any other information that might be required, to
`
`clearinghouse 105, which, in turn, allows clearinghouse 105 to create a
`
`digital certificate for the electronic digital content store. Id. at 44:63–67.
`
`
`
`The digital certificate for the electronic digital content store then is
`
`sent to the digital content label in a secure fashion, after which it is
`
`forwarded by the digital content label to the electronic digital content store.
`
`Ex. 1008, 44:67–45:3. After the electronic digital content store has received
`
`the digital certificate that was created by clearinghouse 105, along with the
`
`necessary tools for processing the SC from the digital content label, the
`
`electronic digital content store may begin to offer content 113 for purchase
`
`by end-users 109. Id. at 45:17–21.
`
`
`
`Clearinghouse 105 maintains a database of the digital certificates that
`
`it has assigned to each electronic digital content store 103. Ex. 1008, 45:3–
`
`5. Clearinghouse 105 also maintains a digital certificate revocation list. Id.
`
`at 45:31–32. According to Gruse, end-user device 109 verifies that an
`
`electronic digital content store is a valid distributor of content 113 on secure
`
`digital content electronic distribution system 100 by first checking the digital
`
`certificate revocation list, and then using public key 621 of clearinghouse
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`105 to verify the information in the digital certificate for the electronic
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`digital content store. Id. at 45:24–31.
`
`3. “Repository” That Exhibits “Behavioral Integrity”
`
`
`
`Independent claim 1 recites, in relevant part, “wherein the meta-right
`
`is provided in digital form and is enforceable by a repository,” and
`
`“determining, by a repository, whether the rights consumer is entitled to the
`
`rights specified by the meta-right.” Ex. 1001, 15:12–16 (emphases added).
`
`Independent claims 12 and 24 recite similar limitations. Id. at 15:58–61,
`
`16:40–43. By virtue of their dependence to at least one of independent
`
`claims 1, 12, and 24, claims 2–5, 8, 11, 13–16, 19, 22, 25–28, 31, and 34
`
`also require “a repository.”
`
`
`
`In its Petition, Apple contends that Gruse’s clearinghouse 105
`
`constitutes the claimed “repository.” Pet. 37. In particular, Apple argues
`
`that Gruse’s clearinghouse 105 provides authorization to electronic digital
`
`content store 103 to sell or distribute content 113 in the form of a digital
`
`certificate along with the encryption keys needed to extract information from
`
`the SCs, which, among other things, store content in encrypted form. Id.
`
`(citing Ex. 1008, 44:57–45:3, 45:17–21; Ex. 1003 ¶¶ 476, 477). Apple
`
`further argues that, before Gruse’s end-user device 109 may access content
`
`from electronic content store 103, clearinghouse 105 must validate the
`
`information in the SC to ensure it has not been corrupted, and to verify that
`
`electronic content store 103 is authorized to sell or distribute content 113
`
`stored therein. Id. (citing Ex. 1008, 45:44–56, 46:10–25; Ex. 1003 ¶¶ 477,
`
`478). In this way, Apple asserts that Gruse’s clearinghouse 105 exhibits
`
`both “physical integrity” and “behavioral integrity.” Id. (citing Ex. 1003
`
`¶¶ 480–84) (emphases omitted).
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`14
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`IPR2015-00352
`Patent 7,774,280 B2
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`In response, ContentGuard contends that Apple fails to demonstrate
`
`that Gruse’s clearinghouse 105 constitutes the claimed “repository” that
`
`exhibits “behavioral integrity.” Prelim. Resp. 44. ContentGuard argues that
`
`“behavioral integrity” was defined by both a previous panel of the Board and
`
`a district court to require “software to include a digital certificate in order to
`
`be installed in the repository.” Id. (citing Ex. 1040, 13; Ex. 2001, 19–21).
`
`ContentGuard further argues that Apple’s reliance on Gruse’s clearinghouse
`
`105, particularly the fact that it provides a digital certificate to electronic
`
`digital content store 103 and validates the SC, has no bearing on “behavioral
`
`integrity” as previously defined by the Board and the district court. Id. at
`
`44–45. Apple asserts that neither Gruse’s digital certificate, nor the
`
`verification of the SC, functions to ensure that software is trusted prior to
`
`being installed on clearinghouse 105. Id. at 45. ContentGuard also argues
`
`that the supporting testimony of Dr. Prakash should be entitled to little, if
`
`any, weight because his definition of “behavioral integrity” does not
`
`comport with how the same term was defined by both the previous Board
`
`panel and the district court. Id.
`
`
`
`As we explained in the claim construction section, we construe
`
`“repository” as “a trusted system which maintains physical,
`
`communications, and behavioral integrity, and supports usage rights.” See
`
`supra Section A. Of particular importance in this case is our definition of
`
`“behavioral integrity” as “requiring software to include a digital certificate
`
`in order to be installed in the repository.” Id.
`
`
`
`We agree with ContentGuard that Gruse’s clearinghouse 105 does not
`
`constitute the claimed “repository” that exhibits “behavioral integrity”
`
`because the digital certificates assigned by the clearinghouse do not function
`
`15
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`IPR2015-00352
`Patent 7,774,280 B2
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`to ensure that software is authentic prior to being installed in the
`
`clearinghouse. Apple does not direct us to, nor can we find, a disclosure in
`
`Gruse that contemplates using the digital certificates assigned by
`
`clearinghouse 105 in the same manner required to exhibit “behavioral
`
`integrity”—namely, to authenticate the source of the software being installed
`
`in the clearinghouse, itself. In other words, Gruse is silent as to installing
`
`software in clearinghouse 105, much less authenticating the source of
`
`software using a digital certificate. Instead, Gruse discloses that end-user
`
`device 109 uses the digital certificate revocation list maintained by
`
`clearinghouse 105 to ensure that electronic digital content stores 103 are
`
`valid distributors of content 113 prior to purchasing content therefrom. See,
`
`e.g., 1008, 45:21–45 (disclosing that clearinghouse 105 maintains the digital
`
`certificate revocation list that end-user device 109 checks to ensure that the
`
`electronic digital content store it is purchasing content 113 from is, in fact, a
`
`valid distributer of the content).
`
`
`
`We also agree with ContentGuard that, when attesting to the teachings
`
`of Gruse, Dr. Prakash applies a new definition of “behavioral integrity” that
`
`is different from the Board’s previous definition, the definition adopted by
`
`the district court, and the definition adopted for purposes of this proceeding.
`
`As we explained above, although Dr. Prakash acknowledges the Board’s
`
`previous definition of “behavioral integrity” as requiring “software to
`
`include a digital certificate in order to be installed in the repository”
`
`(Ex. 1003 ¶ 284 (citing Ex. 1041, 13)), he nonetheless applies a new
`
`definition for “behavioral integrity” when testifying that Gruse’s
`
`clearinghouse 105 constitutes the claimed “repository.” The relevant portion
`
`of Dr. Prakash’s testimony states that: “a person of ordinary skill in 2001
`
`16
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`IPR2015-00352
`Patent 7,774,280 B2
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`would [have understood] that Gruse is explaining that its scheme can be
`
`implemented as ‘a trusted system which maintains physical, communications
`
`and behavioral integrity, and supports usage rights,’ where: . . . ‘behavioral
`
`integrity’ means ‘trusted software within a repository that enables control of
`
`content use.’” Ex. 1003 ¶ 484.
`
`
`
`Dr. Prakash does not explain why he deviated from the Board’s
`
`previous definition of “behavioral integrity” (see, e.g., Ex. 1041, 13), which
`
`eventually was adopted by the district court (Ex. 2001, 19–21) and adopted
`
`for purposes of this proceeding (see supra Section A). Nor does Dr. Prakash
`
`explain how his new definition of “behavioral integrity” would be
`
`understood by one of ordinary skill in the art in light of the specification of
`
`the ’280 patent. Absent some underlying facts or data to support Dr.
`
`Prakash’s new definition of “behavioral integrity,” his testimony in this
`
`regard is entitled to little, if any, weight. See 37 C.F.R. § 42.65 (“Expert
`
`testimony that does not disclose the underlying facts or data on which the
`
`opinion is based is entitled to little or no weight.”).
`
`
`
`In summary, we are not persuaded that Apple has presented sufficient
`
`evidence to support a finding that Gruse’s clearinghouse 105 constitutes the
`
`claimed “repository” that exhibits “behavioral integrity” because the digital
`
`certificates assigned by the clearinghouse do not function to ensure that
`
`software is authentic prior to being installed in the clearinghouse, itself.
`
`Based on the record before us, Apple has not demonstrated a reasonable
`
`likelihood that it will prevail on its assertion that claims 1–5, 8, 11–16, 19,
`
`22, 24–28, 31, and 34 would have been obvious over Gruse.
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`17
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`IPR2015-00352
`Patent 7,774,280 B2
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`C. Obviousness Based on the Combination of Gruse and Wiggins
`
`
`
`Apple contends that claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and 34
`
`are unpatentable under § 103(a) over the combination of Gruse and Wiggins.
`
`Pet. 50–60. In this asserted ground based on obviousness, Apple does not
`
`apply the teachings of Wiggins in such a way that remedies the deficiencies
`
`in Gruse discussed above. See generally id. Therefore, for essentially the
`
`same reasons discussed above, Apple has not demonstrated a reasonable
`
`likelihood that it will prevail on its assertion that claims 1–5, 8, 11–16, 19,
`
`22, 24–28, 31, and 34 would have been obvious over the combination of
`
`Gruse and Wiggins.
`
`
`
`III. CONCLUSION
`
`Taking into account the arguments presented in ContentGuard’s
`
`Preliminary Response, we conclude that the information presented in the
`
`Petition does not establish that there is a reasonable likelihood that Apple
`
`will prevail in challenging claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and 34
`
`of the ’280 patent as unpatentable under § 103(a).
`
`
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is ORDERED that the Petition is
`
`DENIED and no trial is instituted.
`
`18
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`IPR2015-00352
`Patent 7,774,280 B2
`
`
`For PETITIONER:
`
`Jeffrey P. Kushan
`Michael R. Franzinger
`Sidley Austin LLP
`iprnotices@sidley.com
`
`
`
`For PATENT OWNER:
`
`Timothy P. Maloney
`Nicholas T. Peters
`Fitch Even Tabin & Flannery LLP
`tpmalo@fitcheven.com
`ntpete@fitcheven.com
`
`Robert A. Cote
`McKool Smith, P.C.
`rcote@mckoolsmith.com
`
`
`
`
`19
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`
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