Trials@uspto.gov
`571-272-7822
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` Paper 61
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` Entered: July 1, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION AND ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2013-00133
`Patent 7,523,072 B2
`____________
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`Petitioner Apple Inc. - Ex. 1041, p. 1
`
`

`

`IPR2013-00133
`Patent 7,523,072 B2
`
`
`I. BACKGROUND
`
`A. Introduction
`
`
`
`On February 11, 2013, ZTE Corporation and ZTE (USA) Inc.
`
`(“ZTE”) filed a Petition requesting inter partes review of claims 1–25 (“the
`
`challenged claims”) of U.S. Patent No. 7,523,072 B2 (“the ’072 patent”).
`
`Paper 3. In response to a notice of defect(s) in the Petition, ZTE filed a
`
`corrected Petition (“Pet.”) on February 15, 2013.1 Paper 10. ContentGuard
`
`Holdings Inc. (“ContentGuard”)2 timely filed a Patent Owner Preliminary
`
`Response. Paper 13. Taking into account ContentGuard’s Preliminary
`
`Response, the Board determined that the information presented in the
`
`Petition demonstrated that there was a reasonable likelihood that ZTE would
`
`prevail in challenging claims 1–25 as unpatentable under 35 U.S.C.
`
`§ 102(b). Pursuant to 35 U.S.C. § 314, the Board instituted this proceeding
`
`on July 1, 2013, as to the challenged claims of the ’072 patent. Paper 15
`
`(“Dec.”).
`
`After institution of trial, ContentGuard timely filed a Patent Owner
`
`Response (Paper 31, “PO Resp.”), and did not file a motion to amend. ZTE
`
`subsequently filed a Reply. Paper 38 (“Pet. Reply”). A consolidated oral
`
`hearing for IPR2013-00133, IPR2013-00137, IPR2013-00138, and
`
`IPR2013-00139, each involving the same parties, was held on February 26
`
`and 27, 2014. The transcript of the consolidated hearing has been entered
`
`into the record. Papers 58–60.
`
`
`
`1 The term “the Petition” in this final written decision refers to the corrected
`petition unless indicated otherwise.
`2 The mandatory notice filed pursuant to 37 C.F.R. § 42.8(b)(1) indicates
`that ContentGuard Holdings, Inc. and Pendrell Corporation are the real
`parties-in-interest. Paper 12, 2.
`
`2
`
`Petitioner Apple Inc. - Ex. 1041, p. 2
`
`

`

`IPR2013-00133
`Patent 7,523,072 B2
`
`
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a). Based on the record
`
`before us, ZTE has not demonstrated by a preponderance of the evidence
`
`that the challenged claims of the ’072 patent are unpatentable.
`
`B. Related Proceedings
`
`ZTE indicated that the ’072 patent was asserted against it in a patent
`
`infringement lawsuit titled ContentGuard Holdings Inc. v. ZTE Corp., No.
`
`1:12-cv-0206-CMH-TCB, filed in the United States District Court for the
`
`Eastern District of Virginia on February 27, 2012. Pet. 1. According to
`
`ZTE, this patent infringement lawsuit was transferred to the United States
`
`District Court for the Southern District of California on May 21, 2012. Id.
`
`ContentGuard does not dispute that it asserted the ’072 patent against ZTE.
`
`ZTE also filed five other petitions seeking inter partes review of the
`
`following patents owned by ContentGuard: 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); U.S. Patent No. 7,139,736 (IPR2013-
`
`00138); and U.S. Patent No. 7,269,576 (IPR2013-00139). Id.
`
`C. The Invention of the ’072 Patent
`
`The invention disclosed in the ’072 patent generally relates to
`
`distributing and enforcing usage rights for digital works. Ex. 1001, 1:27–28.
`
`A digital work refers to any work that has been reduced to a digital
`
`representation, including any audio, video, text, or multimedia work, and
`
`any accompanying interpreter, e.g., software, which may be required to
`
`recreate or render the content of the digital work. Ex. 1001, 6:3–7. Usage
`
`rights refer to rights granted to a recipient of a digital work that define the
`
`manner in which a digital work may be used and distributed. Ex. 1001,
`
`3
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`Petitioner Apple Inc. - Ex. 1041, p. 3
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`

`

`IPR2013-00133
`Patent 7,523,072 B2
`
`4:13–16; 6:9–12. According to the ’072 patent, objectives of the disclosed
`
`invention include the following: (1) providing the owner of a digital work
`
`the flexibility to distribute the digital work as desired; and (2) a distribution
`
`system that transports a means for billing with the digital work. Ex. 1001,
`
`3:15–17; 4:1–3.
`
`The ’072 patent discloses permanently attaching usage rights to the
`
`digital work. Ex. 1001, 6:16–17. Copies of the digital work also will have
`
`the usage rights attached thereto. Ex. 1001, 6:17–18. Therefore, any usage
`
`rights and associated fees assigned by the creator and subsequent distributor
`
`of the digital work always will remain with the digital work. Ex. 1001,
`
`6:18–21. The ’072 patent further discloses that repositories enforce the
`
`usage rights of digital works. Ex. 1001, 4:26–27; 6:22–23. In particular,
`
`repositories store digital works, control access to digital works, bill for
`
`access to digital works, and maintain the security and integrity of the digital
`
`works stored therein. Ex. 1001, 6:23–26.
`
`Figure 1 of the ’072 patent, reproduced below, illustrates the basic
`
`operations of the disclosed invention. Ex. 1001, 4:52–54; 6:38–40.
`
`4
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`Petitioner Apple Inc. - Ex. 1041, p. 4
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`

`

`IPR2013-00133
`Patent 7,523,072 B2
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`
`
`
`At shown in step 101 of Figure 1 of the ’072 patent, a creator creates a
`
`digital work. Ex. 1001, 6:40–41. At step 102, the creator determines the
`
`appropriate usage rights and fees, attaches them to the digital work, and
`
`stores the digital work with the associated usage rights and fees in
`
`repository 1. Ex. 1001, 6:41–43. At step 103, repository 1 receives a
`
`request to access the digital work from repository 2. Ex. 1001, 6:46–48.
`
`Such a request, or session initiation, includes steps that help ensure that
`
`repository 1 and repository 2 are trustworthy. Ex. 1001, 6:48–51. 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, 6:51–55. At step 105, repository 1 checks the usage
`
`rights associated with the digital work stored therein to determine if access
`
`to the digital work may be granted. Ex. 1001, 6:56–58. At step 106, if
`
`5
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`Petitioner Apple Inc. - Ex. 1041, p. 5
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`IPR2013-00133
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`access is denied, repository 1 terminates the session with repository 2 by
`
`transmitting an error message. Ex. 1001, 6:62–63. At step 107, if access is
`
`granted, repository 1 transmits the digital work to repository 2. Ex. 1001,
`
`6:63–65. At step 108, both repository 1 and 2 generate billing information
`
`prior to transmitting the billing information to a credit server. Ex. 1001,
`
`6:65–7:1. The use of both repositories 1 and 2 for billing prevents attempts
`
`to circumvent the billing process. Ex. 1001, 7:1–2.
`
`Figure 2 of the ’072 patent, reproduced below, illustrates the various
`
`types of repositories and the transaction flow between them. Ex. 1001,
`
`4:55–57; 7:3–6.
`
`
`
`
`
`As shown in Figure 2 of the ’072 patent, repository 201 represents a
`
`general instance of a repository having the following two modes of
`
`operation: (1) a server mode; and (2) a requester mode. Ex. 1001, 7:8–10.
`
`When repository 201 is in server mode, it receives and processes access
`
`requests for digital works. Ex. 1001, 7:11–12. When repository 201 is in
`
`requester mode, it initiates requests to access digital works. Ex. 1001, 7:12–
`
`14.
`
`6
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`Petitioner Apple Inc. - Ex. 1041, p. 6
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`IPR2013-00133
`Patent 7,523,072 B2
`
`
`
`During the course of operation, repository 201 may communicate with
`
`a plurality of other repositories, including rendering repository 203.
`
`Ex. 1001, 7:16–21. Communication with rendering repository 203 occurs in
`
`connection with rendering a digital work. Ex. 1001, 7:31–32. According to
`
`the ’072 patent, rendering repository 203 is coupled to a rendering device,
`
`e.g., a printer device, to comprise a rendering system. Ex. 1001, 7:32–35.
`
`D. Illustrative Claim
`
`
`
`Claims 1, 10, and 18 are independent claims. Claims 2–9 depend
`
`directly from independent claim 1, claims 11–17 depend directly or
`
`indirectly from independent claim 10, and claims 19–25 depend directly or
`
`indirectly from independent claim 18. Independent claim 1 is illustrative of
`
`the disclosed invention and is reproduced below:
`
`for
`
`securely
`
`rendering digital
`
`A method
`1.
`
`documents, comprising:
`
`retrieving, by a document platform, a digital document
`and at least one usage right associated with the digital
`document from a document repository, the at least one usage
`right specifying a manner of use indicating the manner in which
`the digital document can be rendered;
`
`storing the digital document and the at least one usage
`right in separate files in the document platform;
`
`determining, by the document platform, whether the
`digital document may be rendered based on the at least one
`usage right; and
`
`if the at least one usage right allows the digital document
`to be rendered on the document platform, rendering the digital
`document by the document platform.
`
`Ex. 1001, 52:8–22 (emphasis added).
`
`
`
`
`
`7
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`Petitioner Apple Inc. - Ex. 1041, p. 7
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`

`

`IPR2013-00133
`Patent 7,523,072 B2
`
`
`
`
`ZTE relies upon the following prior art reference:
`
`E. Prior Art Relied Upon
`
`EP 0268139 A2 May 25, 1988
`
`Comerford
`(hereinafter “EP ’139”)
`
`Ex. 1012
`
`F. Ground of Unpatentability
`
`We instituted this proceeding based on just one ground of
`
`unpatentability set forth in the table below.
`
`Claims
`
`1–25
`
`Basis
`
`Reference
`
`§ 102(b) EP ’139
`
`
`
`
`
`II. ANALYSIS
`
`ZTE has to prove unpatentability by a preponderance of the evidence.
`
`35 U.S.C. § 316(e). In patent law, “the name of the game is the claim.” In
`
`re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Therefore, we begin
`
`our analysis with claim construction, and then follow with our analysis
`
`regarding whether EP ’139 anticipates the challenged claims.
`
`A. Claim Construction
`
`
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable interpretation in light of
`
`the specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). Under the broadest reasonable interpretation standard, 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 disclosure. In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, if
`
`an inventor acts as his or her own lexicographer, the definition must be set
`
`8
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`Petitioner Apple Inc. - Ex. 1041, p. 8
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`

`

`IPR2013-00133
`Patent 7,523,072 B2
`
`forth in the specification with reasonable clarity, deliberateness,
`
`and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
`
`1243, 1249 (Fed. Cir. 1998).
`
`
`
`An extraneous limitation should not be read into the claims from the
`
`specification. See e.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum
`
`Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is one
`
`where its presence in a claim is unnecessary to make sense of the claim.
`
`See, e.g., In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994); Renishaw
`
`PLC, 158 F.3d at 1249. The construction that stays true to the claim
`
`language and most naturally aligns with the inventor’s description is likely
`
`the correct interpretation. See Renishaw PLC, 158 F.3d at 1250. The
`
`challenge is to interpret claims without unnecessarily importing limitations
`
`from the specification into the claims. See E-Pass Techs., Inc. v. 3Com
`
`Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
`
`“Repository” (Claims 1, 10, and 18)
`
`
`
`In its Petition, ZTE did not provide an explicit construction for the
`
`claim term “repository.” In its Patent Owner Preliminary Response,
`
`ContentGuard contended that “repository” should be construed as “a trusted
`
`system for supporting usage rights.” Prelim. Resp. 18–19. ContentGuard
`
`then cited to several portions of the specification of the ’072 patent that
`
`allegedly support its proposed claim construction. Id. at 19–21 (citing to
`
`Ex. 1001, 11:58–67; 12:63–64; 13:15–20; 51:33–37). When instituting trial,
`
`we construed “repository” as “a trusted system which maintains physical,
`
`communications and behavioral integrity, and supports usage rights.”
`
`Dec. 10. For reasons discussed below, we adhere to the same interpretation
`
`for this final written decision.
`
`9
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`Petitioner Apple Inc. - Ex. 1041, p. 9
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`

`IPR2013-00133
`Patent 7,523,072 B2
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`
`
`The specification provides a glossary that explicitly sets forth a
`
`definition for “repository.” For convenience, that glossary definition is
`
`reproduced below:
`
`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, 51:34–37 (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 also is
`
`relevant to the definition of “repository” because it specifies that the
`
`repository supports usage rights. Accordingly, we construe “repository” as
`
`“a trusted system which maintains physical, communications and behavioral
`
`integrity, and supports usage rights.”
`
`
`
`However, 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 “Repositories.” Ex. 1001,
`
`11:58–14:32. For “physical integrity,” the specification describes the
`
`following:
`
`Physical integrity refers to the integrity of the physical devices
`themselves. Physical integrity applies both to the repositories
`and to the protected digital works. Thus, the higher security
`classes of repositories themselves may have sensors that detect
`when tampering is attempted on their secure cases. In addition
`to 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
`
`10
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`

`

`IPR2013-00133
`Patent 7,523,072 B2
`
`
`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.
`
`Ex. 1001, 12:1–26 (emphases added).
`
`
`
`The description reproduced above 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.
`
`2.
`
`3.
`
`data, content, digital work, information;
`
`non-trusted system, general device; and
`
`“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:
`
`11
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`IPR2013-00133
`Patent 7,523,072 B2
`
`
`the
`integrity of
`the
`to
`integrity refers
`Communications
`communications channels between repositories.
` Roughly
`speaking, communications integrity means that repositories
`cannot be easily fooled by “telling them lies.” Integrity in this
`that repositories will only
`case refers
`to
`the property
`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, 12:27–39 (emphases added). We construe “communications
`
`integrity” as “only communicates with other devices that are able to present
`
`proof that they are trusted systems, e.g., by using security measures such as
`
`encryption, exchange of digital certificates, and nonces.” The Encyclopedia
`
`of Cryptography defines “nonce” as “[a] number used in a cryptographic
`
`protocol to indicate the unique character of a message.” ENCYCLOPEDIA OF
`
`CRYPTOGRAPHY 197 (1997) (Ex. 3001).
`
`
`
`For “behavioral integrity,” the specification describes the following:
`
`Behavioral integrity refers to the integrity in what repositories
`do. What repositories do is determined by the software that
`they execute. The integrity of the software is generally assured
`only by knowledge of its source. Restated, a user will trust
`software purchased at a reputable computer store but not trust
`software obtained off a random (insecure) server on a network.
`Behavioral integrity is maintained by requiring that repository
`software be certified and be distributed with proof of such
`certification, i.e. a digital certificate. The purpose of the
`certificate is to authenticate that the software has been tested by
`an authorized organization, which attests that the software does
`what it is supposed to do and that it does not compromise the
`behavioral integrity of a repository. If the digital certificate
`
`12
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`IPR2013-00133
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`
`
`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, 12:40–56 (emphases 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.”
`
`
`
`We acknowledge that the record is not without evidence contrary to
`
`our claim interpretation. The nature of claim interpretation, however, is to
`
`come to the appropriate conclusion in light of all of the evidence. All of the
`
`evidence does not have to point uniformly in a single direction.
`
`
`
`Table 2 in the specification indicates ten different levels of security
`
`for repositories. 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, 14:64–15:15. 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
`
`13
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`IPR2013-00133
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`in the glossary. We make our determination based on the totality of the
`
`evidence.
`
`
`
`As noted above, the disclosed invention is about distribution and
`
`usage rights enforcement of digital works. The problems described in the
`
`background portion of the specification concern unauthorized and
`
`unaccounted distribution or usage of electronically published materials. See
`
`generally Ex. 1001, 1:32–3:17. The ’072 patent states that it solves
`
`preexisting problems by both permanently attaching usage rights to digital
`
`works and placing elements in repositories that enforce those usage rights.
`
`Ex. 1001, 6:16–27.
`
`
`
`Here, the definition set forth in the glossary for “repository” is
`
`consistent fully with the description of the acknowledged prior art, and the
`
`objective or goal to be achieved by the invention of the ’072 patent. The
`
`specification also contains detailed preferred embodiments utilizing
`
`repositories, which are trusted systems to provide usage control for digital
`
`works. Ex. 1001, 7:3–41, 7:60–61, 13:7–14, 21–23, 14:8–20, 18:11–13,
`
`26:40–29:20, 41:9–42:12.
`
`
`
`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:
`
`invention are
`the present
`The enforcement elements of
`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, 6:23–27 (emphasis added). Other references to “repository” in the
`
`specification recite necessary features of repositories and also support the
`
`14
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`IPR2013-00133
`Patent 7,523,072 B2
`
`definition in the glossary that a repository is a trusted system. For example,
`
`the specification states:
`
`The core repository services 1302 comprise a set of functions
`required by each and every repository. The core repository
`services 1302 include the session initiation transactions which
`are defined in greater detail below. This set of services also
`includes a generic ticket agent which is used to “punch” a
`digital ticket and a generic authorization server for processing
`authorization specifications.
`
`Ex. 1001, 14:8–14 (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,
`
`13:7–8, 14:18–20 (emphasis added). In yet another example, the
`
`specification states “[p]rovisions for security and privacy are part of the
`
`requirements for specifying and implementing repositories and thus form the
`
`need for various transactions.” Ex. 1001, 26:35–38 (emphasis added).
`
`Indeed, by using words such as “require” and “requirements,” these
`
`examples amply support the definition provided in the glossary that a
`
`repository is a trusted system.
`
`
`
`In summary, even applying the rule of broadest reasonable
`
`interpretation consistent with the specification, the weight of the evidence
`
`supports the definition provided in the glossary. We regard as significant
`
`that the definition states in an unequivocal manner that a repository “is a
`
`trusted system.”
`
`ContentGuard’s Contentions
`
`
`
`According to ContentGuard, our claim interpretation of “repository”
`
`is incorrect because it is too broad in one respect and too narrow in another.
`
`15
`
`Petitioner Apple Inc. - Ex. 1041, p. 15
`
`

`

`IPR2013-00133
`Patent 7,523,072 B2
`
`PO Resp. 14–17. For the reasons discussed below, however, the
`
`specification of the ’072 patent does not support adequately either
`
`contention. As a consequence, we are not persuaded by ContentGuard’s
`
`contentions.
`
`
`
`We first address ContentGuard’s contention that our construction is
`
`too broad, and then its contention that our construction is too narrow.
`
`1.
`
`
`
`ContentGuard contends that our claim construction regarding
`
`“behavioral integrity” as “requiring software to include a digital certificate
`
`in order to be installed in the repository” is “excessively broad” and should
`
`be limited to software that makes the repository operative—otherwise
`
`known as “repository software.” Id. at 14. For convenience,
`
`ContentGuard’s argument is reproduced below:
`
`[The Board’s construction] is too broad because it is not
`restricted to what the ’072 patent refers to as “repository
`software”—that is software that makes the repository operative.
`(See Ex. 1001, 12:46-48.) According to the ’072 patent
`specification, “[b]ehavioral integrity refers to the integrity in
`what repositories do.” (Ex. 1001, 12:40-41.) What repositories
`do, in turn, “is determined by the software that they execute.”
`(Id. at 12:41-42.)
`
`But not all software relates “to the integrity in what
`repositories do.” (Ex. 1001, 12:40-41[.]) Repositories, along
`with usage rights, are used to manage the use and distribution
`of digital content. (Ex. 1001, 51:65-67.) Allowing them to do
`so, repositories can perform several functions to implement the
`transmission of content and usage rights. (E.g., Ex. 1001,
`13:29-34.) But content itself does not necessarily supply that
`function to a repository. (Ex. 2013, [Declaration of Dr.
`Michael T. Goodrich] ¶ 48.) Rather, repository software
`implements the repository functions that are used to manage the
`use and distribution of the content. (Ex. 1001, 4:26-27; 6:38-
`
`16
`
`Petitioner Apple Inc. - Ex. 1041, p. 16
`
`

`

`IPR2013-00133
`Patent 7,523,072 B2
`
`
`7:2; 11:58-67; 13:15-41; 51:34-38.) Thus, since “[b]ehavioral
`integrity refers to the integrity in what repositories do,” the
`relevant software is not any “software . . . to be installed in the
`repository,” but the software the repository uses to manage the
`use and distribution of content.
`
`PO Resp. 14–15.
`
`
`
`With respect to what repositories do, ContentGuard overlooks and
`
`fails to discuss the portions of the specification which indicate that
`
`repositories, themselves, also can be rendering devices that run and execute
`
`the software- type digital works, the usage rights of which they control. For
`
`instance, the ’072 patent states the following with regard to software capable
`
`of being run on a repository:
`
`An Install transaction is a request to install a digital work as
`runnable software on a repository. In a typical case, the
`requester repository is a rendering repository and the software
`would be a new kind or new version of a player.
`
`Ex. 1001, 41:64–67 (emphases added). This disclosure in the specification
`
`does not support ContentGuard’s contention that a repository merely
`
`manages the use and distribution of digital content, such as software, and
`
`does not perform, run, or execute that digital content. The disclosure quoted
`
`above refers to a digital work that is “runnable software on a repository,”
`
`and states that, in a typical case, the repository asking for the digital work is
`
`itself a rendering repository that identifies the software digital work as
`
`application software—not as operating software. As such, the specification
`
`conveys information contrary to ContentGuard’s contention. ContentGuard
`
`does not explain the disclosure identified above, nor does it point to any
`
`testimony of its expert witness that addresses such disclosure in light of its
`
`“excessively broad” contention.
`
`17
`
`Petitioner Apple Inc. - Ex. 1041, p. 17
`
`

`

`IPR2013-00133
`Patent 7,523,072 B2
`
`
`
`Because a repository, itself, may run and execute software, the usage
`
`and distribution of which is managed by the repository, we are not persuaded
`
`that the reference to “repository software” in the portion of the specification
`
`discussing “behavioral integrity” (Ex. 1001, 12:40–56) is restricted to
`
`software that only manages usage rights. Indeed, in the context of installing
`
`software identified as “a new kind or new version of a player,” which does
`
`not control usage rights, the specification discusses extracting a copy of the
`
`digital certificate for that software (Ex. 1001, 42:9–12), in the same manner
`
`that the specification describes requiring a digital certificate in the digital
`
`work to ensure behavioral integrity of the repository (Ex. 1001, 12:46-48).
`
`Moreover, some repositories are rendering repositories. Ex. 1001, 41:64–67.
`
`“Repository software,” as used in the specification, is broad enough to cover
`
`application software, such as the “player” referenced in the specification
`
`(Ex. 1001, 41:64–67), as well as what ContentGuard refers to as “operating
`
`software,” which enables the repository to regulate usage rights.
`
`
`
`We do not credit the testimony of ContentGuard’s expert, Dr. Michael
`
`T. Goodrich, in paragraph 48 of his Declaration (Ex. 2013). In that
`
`paragraph, Dr. Goodrich attests that, in his opinion, a person of ordinary
`
`skill in the art in 1994 would have understood that the term “repository
`
`software” in the ’072 patent identifies and refers to the operating software of
`
`the repository, and not the software digital works, the usage rights of which
`
`are controlled by the repository. Dr. Goodrich’s testimony is unpersuasive
`
`because it does not account for the disclosure of the specification, discussed
`
`above, which conveys that some repositories are rendering depositories that
`
`run and execute the software digital works the rights of which they control,
`
`such as a new version of a “player.”
`
`18
`
`Petitioner Apple Inc. - Ex. 1041, p. 18
`
`

`

`IPR2013-00133
`Patent 7,523,072 B2
`
`
`2.
`
`
`
`ContentGuard contends that our claim construction regarding
`
`“behavioral integrity” as “requiring software to include a digital certificate
`
`in order to be installed in the repository” is “excessively narrow” because it
`
`unnecessarily requires the inclusion of a “digital certificate” to maintain
`
`behavioral integrity. PO Resp. 15–16. According to ContentGuard, in order
`
`to maintain behavioral integrity, it is necessary only that the broader purpose
`
`of a repository doing what it is supposed to do is satisfied. Id. at 15.
`
`
`
`ContentGuard’s contention that our construction is too narrow is
`
`inconsequential to the outcome of this proceeding because a broader
`
`interpretation of “behavioral integrity” would not render inapplicable any
`
`teaching of the prior art which was applied under the narrower construction.
`
`
`
`For convenience, ContentGuard’s argument is reproduced below:
`
`The Board’s construction is also too narrow because it
`
`requires “a digital certificate.”
` After explaining
`that
`“[b]ehavioral
`integrity
`refers
`to
`the
`integrity
`in what
`repositories do” and that “[w]hat repositories do is determined
`by the software that they execute,” the ’072 patent says that
`“[t]he integrity of the software is generally assured only by
`knowledge of its source.” (Ex. 1001, 12:42[-]43.) Although
`the specification does say
`that “behavioral
`integrity
`is
`maintained by requiring that repository software be