Trials@uspto.gov
`571-272-7822
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`Paper 58
`Entered: July 1, 2014
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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 Owners.
`____________
`
`Case IPR2013-00137
`Patent 6,963,859
`____________
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`
`KIM, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`Petitioner Apple Inc. - Ex. 1042, p. 1
`
`

`
`IPR2013-00137
`Patent 6,963,859
`
`
`A.
`
`Introduction
`
`I. BACKGROUND
`
`Petitioners (“ZTE”) filed a corrected Petition for inter partes review
`
`of claims 1-84 of U.S. Patent No. 6,963,859 (“the ’859 patent”). Paper 12
`
`(“Pet.”). The Patent Owner (“ContentGuard”) timely filed a Patent Owner
`
`Preliminary Response. Paper 16 (“Prel. Resp.”) On July 1, 2013, the Board
`
`instituted trial for claims 1-5, 9-11, 15-17, 19, 21-33, 37, 38, 42-44, 46, 48-
`
`62, 66, 67, 71-73, 75, and 77-84, under 35 U.S.C. § 102(e), as anticipated by
`
`U.S. Patent No. 5,588,146 to Leroux (Ex. 1011). Paper 17 (“Dec.”).
`
`After institution of trial, Patent Owners (“ContentGuard”) 1 filed a
`
`Patent Owner Response (Paper 34, “PO Resp.”), but did not file a motion to
`
`amend. Petitioner subsequently filed a Reply. Paper 39 (“Reply”).
`
`A consolidated oral hearing for IPR2013-00133, IPR2013-00137,
`
`IPR2013-00138, and IPR2013-00139, each involving the same Petitioners
`
`and Patent Owners, was held on February 26 and 27, 2014. The transcript of
`
`the consolidated hearing has been entered into the record. Papers 55-57.
`
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a).
`
`Claims 1-5, 9-11, 15-17, 19, 21-33, 37, 38, 42-44, 46, 48-62, 66, 67,
`
`71-73, 75, and 77-84 of the ’859 patent are not unpatentable.
`
`
`
`1 The mandatory notices filed pursuant to 37 C.F.R. § 42.8(b)(1) indicate
`that both ContentGuard Holdings, Inc. and Pendrell Corporation are the real
`parties in interest. Paper 15, 2.
`
` 2
`
`
`
`Petitioner Apple Inc. - Ex. 1042, p. 2
`
`

`
`IPR2013-00137
`Patent 6,963,859
`
`B.
`
`Related Proceedings
`
`
`
`ZTE indicates that the ’859 patent is involved in co-pending district
`
`court case titled ContentGuard Holdings Inc. v. ZTE Corp., No. 3:12-cv-
`
`01226 (S.D. Cal.). Pet. 1. ZTE also filed five other Petitions seeking inter
`
`partes review of the following patents of ContentGuard: U.S. Patent No.
`
`7,523,072 (IPR2013-00133); U.S. Patent No. 7,225,160 (IPR2013-00134);
`
`U.S. Patent No. 7,359,884 (IPR2013-00136); U.S. Patent No. 7,139,736
`
`(IPR2013-00138); and U.S. Patent No. 7,269,576 (IPR2013-00139). Id.
`
`C.
`
`The ’859 patent
`
`The subject matter of the ’859 patent relates to distribution of and
`
`usage rights enforcement for digitally encoded works. Ex. 1001, 1:12-13.
`
`According to the ’859 patent, an issue facing the publishing and information
`
`industries is how to prevent the unauthorized and unaccounted distribution
`
`or usage of electronically published materials. Ex. 1001, 1:16-19. In
`
`particular, a major concern is the ease in which electronically published
`
`works can be “perfectly” reproduced and distributed. Ex. 1001, 1:30-31.
`
`One way to curb unaccounted distribution is to prevent unauthorized
`
`copying and transmission. Ex. 1001, 1:49-51. Another way is to distribute
`
`software, which requires a “key” to enable its use. Ex. 1001, 1:65-66.
`
`However, the ’859 patent discloses that, although such distribution and
`
`protection schemes prevent unauthorized distributions, it does so by
`
`sacrificing the potential for subsequent revenue bearing uses. Ex. 1001,
`
`2:61-65. For example, the ’859 patent discloses that it may be desirable to
`
`allow the lending of a purchased work to permit exposure of the work to
`
` 3
`
`
`
`Petitioner Apple Inc. - Ex. 1042, p. 3
`
`

`
`IPR2013-00137
`Patent 6,963,859
`
`potential buyers, permit the creation of a derivative work for a fee, or permit
`
`copying the work for a fee. Ex. 1001, 2:65-3:3. The ’859 patent discloses
`
`that it solves these problems by both permanently attaching usage rights to
`
`digital works, and by placing elements in repositories, which store and
`
`control the digital works, that enforce these usage rights. Ex. 1001, 6:11-21.
`
`D.
`
`Illustrative Claim
`
`Claims 1, 29, and 58 are independent claims. Independent claims 1,
`
`29, and 58 are directed to a system, a method, and a computer readable
`
`medium, respectively. Claims 2-28 directly or indirectly depend from claim
`
`1, claims 30-57 directly or indirectly depend from claim 29, and claims 59-
`
`84 directly or indirectly depend from claim 58. Claims 1, 29, and 58 are
`
`exemplary of the claimed subject matter of the ’859 patent, and are
`
`reproduced as follows (emphasis added):
`
`A rendering system adapted for use in a distributed
`1.
`system for managing use of content, said rendering system
`being operative to rendering content in accordance with usage
`rights associated with the content, said rendering system
`comprising:
`
` a
`
` rendering device configured to render the content; and
`
`
`
` a
`
` distributed repository coupled to said rendering device
`and including a requester mode of operation and server mode of
`operation,
`
`wherein the server mode of operation is operative to
`enforce usage rights associated with the content and permit the
`rendering device to render the content in accordance with a
`manner of use specified by the usage rights,
`
` 4
`
`
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`Petitioner Apple Inc. - Ex. 1042, p. 4
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`

`
`IPR2013-00137
`Patent 6,963,859
`
`
`
`the requester mode of operation is operative to request
`access to content from another distributed repository, and
`
`said distributed repository is operative to receive a
`request to render the content and permit the content to be
`rendered only if a manner of use specified in the request
`corresponds to a manner of use specified in the usage rights.
`
`29. A rendering method adapted for use in a distributed
`system for managing use of content, and operative to render
`content in accordance with usage rights associated with the
`content, said method comprising:
`
`configuring a rendering device to render the content;
`
`configuring a distributed repository coupled to said
`rendering device to include a requester mode of operation and
`server mode of operation;
`
`enforcing usage rights associated with the content and
`permitting the rendering device to render the content in
`accordance with a manner of use specified by the usage rights,
`when in the server mode of operation;
`
`requesting access to content from another distributed
`repository, when in the requester mode of operation; and
`
`receiving by said distributed repository a request to
`render the content and permitting the content to be rendered
`only if a manner of use specified in the request corresponds to a
`manner of use specified in the usage rights.
`
`58. A computer readable medium including one or more
`computer readable instructions embedded therein for use in a
`distributed system for managing use of content, and operative
`
` 5
`
`
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`Petitioner Apple Inc. - Ex. 1042, p. 5
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`

`
`IPR2013-00137
`Patent 6,963,859
`
`
`to render content in accordance with usage rights associated
`with
`the content, said computer
`readable
`instructions
`configured to cause one or more computer processors to
`perform the steps of:
`
`configuring a rendering device to render the content;
`
`configuring a distributed repository coupled to said
`rendering device to include a requester mode of operation and
`server mode of operation;
`enforcing usage rights associated with the content and
`permitting the rendering device to render the content in
`accordance with a manner of use specified by the usage rights,
`when in the server mode of operation;
`
`requesting access to content from another distributed
`repository, when in the requester mode of operation; and
`
`receiving by said distributed repository a request to
`render the content and permitting the content to be rendered
`only if a manner of use specified in the request corresponds to a
`manner of use specified in the usage rights.
`
`Ex. 1001, 51:16-38, 52:45-65, 54:6-28 (emphasis added).
`
`II. ANALYSIS
`
`The only ground instituted for trial is that of the alleged anticipation,
`
`under 35 U.S.C. § 102(e), of claims 1-5, 9-11, 15-17, 19, 21-33, 37, 38, 42-
`
`44, 46, 48-62, 66, 67,71-73, 75, and 77-84 by Leroux. 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 with claim construction,
`
`and then follow with specific analysis of the prior art.
`
` 6
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`
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`Petitioner Apple Inc. - Ex. 1042, p. 6
`
`

`
`IPR2013-00137
`Patent 6,963,859
`
`
`A.
`
`Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). Under the broadest reasonable construction 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). If an inventor acts as his
`
`or her own lexicographer, the definition must be set 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).
`
` 7
`
`
`
`Petitioner Apple Inc. - Ex. 1042, p. 7
`
`

`
`IPR2013-00137
`Patent 6,963,859
`
`
`Repository (Claims 1, 29, and 58)
`
`In its Petition, ZTE did not provide an explicit construction for
`
`“repository.” In the Patent Owner Preliminary Response, ContentGuard
`
`contended that “repository” should be interpreted as “a trusted system for
`
`supporting usage rights.” Prelim. Resp. 17. When instituting trial, we
`
`construed “repository” as “a trusted system which maintains physical,
`
`communications and behavioral integrity, and supports usage rights.”
`
`Dec. 9. For reasons discussed below, we adhere to the same interpretation
`
`for this final written decision.
`
`The specification provides a glossary which recites the following
`
`meaning for “repository”:
`
`Conceptually a set of functional specifications defining core
`functionality in the support of usage rights. A repository is a
`trusted system in that it maintains physical, communications
`and behavioral integrity.
`
`Ex. 1001, 50:47-51 (emphasis added). By setting forth the term in a
`
`glossary and using the verb “is” following “repository” in the second
`
`sentence, the specification sets forth an explicit definition of “repository” as
`
`“a trusted system in that it maintains physical, communications and
`
`behavioral integrity.” The first sentence is relevant also 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.”
`
` 8
`
`
`
`Petitioner Apple Inc. - Ex. 1042, p. 8
`
`

`
`IPR2013-00137
`Patent 6,963,859
`
`
`Our analysis does not end here. In order to understand “a trusted
`
`system,” it is necessary to construe “physical integrity,” “communications
`
`integrity,” and “behavioral integrity.” Those terms are described in a section
`
`of the specification labeled “[r]epositories.” For “physical integrity,” the
`
`specification describes:
`
`Physical integrity refers to the integrity of the physical devices
`themselves. Physical integrity applies both to the repositories
`and to the protected digital works. Thus, the higher security
`classes of repositories themselves may have sensors that detect
`when tampering is attempted on their secure cases. In addition
`to protection of the repository itself, the repository design
`protects access to the content of digital works. In contrast with
`the design of conventional magnetic and optical devices-such as
`floppy disks, CD-ROMs, and videotapes-repositories never
`allow non-trusted systems to access the works directly. A
`maker of generic computer systems cannot guarantee that their
`platform will not be used to make unauthorized copies. The
`manufacturer provides generic capabilities for reading and
`writing information, and the general nature of the functionality
`of the general computing device depends on it. Thus, a copy
`program can copy arbitrary data. This copying issue is not
`limited to general purpose computers. It also arises for the
`unauthorized duplication of entertainment “software” such as
`video and audio recordings by magnetic recorders. Again, the
`functionality of the recorders depends on their ability to copy
`and they have no means to check whether a copy is authorized.
`In contrast, repositories prevent access to the raw data by
`general devices and can test explicit rights and conditions
`before copying or otherwise granting access. Information is
`only accessed by protocol between trusted repositories.
`
`Ex. 1001, 11:62-12:20 (emphases added). Much of the above description
`
`makes use of permissive terms such as “may” and “can” and, thus, does not
`
` 9
`
`
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`Petitioner Apple Inc. - Ex. 1042, p. 9
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`

`
`IPR2013-00137
`Patent 6,963,859
`
`reflect or indicate a required limitation for physical integrity. The
`
`specification also appears to use the terms or phrases in each of the
`
`following three groups interchangeably:
`
`1. data, content, digital work, information;
`
`2. non-trusted system, general device; and
`
`3. “never allow access” and “prevent access.”
`
`When referring to the relationship between the repository and data, the
`
`specification uses absolute terms such as “never” and “only.” In light of the
`
`foregoing, we construe “physical integrity” as “preventing access to
`
`information by a non-trusted system.”
`
`For “communications integrity,” the specification describes the
`
`following:
`
`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, 12:21-33 (emphases added). We construe “communications
`
`integrity” as “only communicates with other devices that are able to present
`
`proof that they are trusted systems, for example, by using security measures
`
`
`
`10
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`Petitioner Apple Inc. - Ex. 1042, p. 10
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`

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`IPR2013-00137
`Patent 6,963,859
`
`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:
`
`Behavioral integrity refers to the integrity in what repositories
`do. What repositories do is determined by the software that
`they execute. The integrity of the software is generally assured
`only by knowledge of its source. Restated, a user will trust
`software purchased at a reputable computer store but not trust
`software obtained off a random (insecure) server on a network.
`Behavioral integrity is maintained by requiring that repository
`software be certified and be distributed with proof of such
`certification, i.e. a digital certificate. The purpose of the
`certificate is to authenticate that the software has been tested by
`an authorized organization, which attests that the software does
`what it is supposed to do and that it does not compromise the
`behavioral integrity of a repository. If the digital certificate
`cannot be found in the digital work or the master repository
`which generated the certificate is not known to the repository
`receiving the software, then the software cannot be installed.
`
`Ex. 1001, 12:34-50 (emphasis added). We construe “behavioral integrity” in
`
`the context of a repository as “requiring software to include a digital
`
`certificate in order to be installed in the repository.”
`
`We acknowledge that the record is not without evidence contrary to
`
`our interpretation. That is not unusual. The nature of interpretation is to
`
`come to the appropriate conclusion in light of all of the evidence. All of the
`
`evidence does not have to point uniformly in a single direction.
`
`
`
`11
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`Petitioner Apple Inc. - Ex. 1042, p. 11
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`

`
`IPR2013-00137
`Patent 6,963,859
`
`
`For example, the specification in Table 2 indicates ten different levels
`
`of security for repositories, and the lowest level, i.e., level “0,” is described
`
`as follows:
`
`Open system. Document transmission is unencrypted. No
`digital certificate is required for identification. The security of
`the system depends mostly on user honesty, since only modest
`knowledge may be needed to circumvent the security measures.
`The repository has no provisions for preventing unauthorized
`programs from running and accessing or copying files. The
`system does not prevent the use of removable storage and does
`not encrypt stored files.
`
`Ex. 1001, 14:58-64. Thus, according to Table 2, repositories are not all
`
`trusted systems. Level “0” security means having an open system lacking in
`
`physical, communications, and behavioral integrity, and without support for
`
`managing usage rights. That is directly contrary to the meaning of
`
`“repository” as defined in the glossary. For reasons discussed below, we
`
`adhere to the definition provided in the glossary. The contrary evidence
`
`based on level “0” security shown in Table 2 is insufficient to outweigh the
`
`rest of the evidence including, in particular, the explicit definition provided
`
`in the glossary. We make our determination based on the totality of the
`
`evidence.
`
`As noted above, the disclosed invention is about distribution of and
`
`usage rights enforcement of digital works. The problems described in the
`
`background portion of the specification concerns unauthorized and
`
`unaccounted distribution or usage of electronically published materials. See
`
`generally Ex. 1001, 1:30-48. The ’859 patent states that it solves preexisting
`
`problems by both permanently attaching usage rights to digital works and
`
`
`12
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`Petitioner Apple Inc. - Ex. 1042, p. 12
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`

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`IPR2013-00137
`Patent 6,963,859
`
`placing elements in repositories which enforce those usage rights. Ex. 1001,
`
`6:11-21.
`
`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 ’859 patent. The
`
`specification also contains detailed preferred embodiments utilizing
`
`repositories which are trusted systems to provide usage control for digital
`
`works. Ex. 1001, 3:57-62, 6:66-7:37, 7:54-55, 13:1-9, 16-18; 14:3-15,
`
`17:30-32; 25:62-28-56; 40:42-41:44.
`
`The bulk of the disclosure 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, 6:17-21 (emphasis added). Other references to “repository” in the
`
`specification that recite necessary features of repositories also support the
`
`definition in the glossary that a repository is a trusted system:
`
`The core repository services 1302 comprise a set of functions
`required by each and every repository. The core repository
`services 1302 include the session initiation transactions which
`are defined in greater detail below. This set of services also
`includes a generic ticket agent which is used to “punch” a
`digital ticket and a generic authorization server for processing
`authorization specifications.
`
`
`
`13
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`Petitioner Apple Inc. - Ex. 1042, p. 13
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`

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`IPR2013-00137
`Patent 6,963,859
`
`Ex. 1001, 14:3-9 (emphasis added). In yet 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,
`
`13:1-2, 14:14-15. Indeed, by using words such as “require” and “required,”
`
`such examples amply support the definition provided in the glossary that a
`
`repository is a trusted system.
`
`In summary, even applying the rule of broadest reasonable
`
`construction 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 interpretation of “repository” is
`
`incorrect because it is too broad in one respect and too narrow in another.
`
`PO Resp. 8-11. For reasons discussed below, however, the specification of
`
`the ’859 patent does not support adequately either contention. On the record
`
`before us, we are unpersuaded 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 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
`
`
`
`14
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`Petitioner Apple Inc. - Ex. 1042, p. 14
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`

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`IPR2013-00137
`Patent 6,963,859
`
`software that makes the repository operative—that which ContentGuard
`
`believes is referred to in the specification as “repository software.” Id. at 8.
`
`We reproduce ContentGuard’s argument, in more detail, below:
`
`[The Board’s construction] is too broad because it is not
`restricted to what the ’859 patent refers to as “repository
`software”—that
`is, software
`that makes
`the
`repository
`operative. (See Ex. 1001, 12:34-50.) According to the ’859
`patent specification, “[b]ehavioral
`integrity refers
`to
`the
`integrity in what repositories do.” (Id., 12:34-35.) What
`repositories do, in turn, “is determined by the software that they
`execute.” (Id., 12:35-36.)
`
`But not all software relates “to the integrity in what
`
`repositories do.” (Ex. 1001, 12:34-35.) Repositories, along
`with usage rights, are used to manage the use and distribution
`of digital content. (See, e.g., id., 50:48-52, 5:47-48, 14:3-15.)
`For example, part of a repository’s function is to permit the
`rendering of content in accordance with the usage rights
`associated with the content. (E.g., id., cl. 1.) But content itself
`does not necessarily supply that function to a repository.
`(Goodrich Dec[l]., Ex. 2013, ¶ 53.) Rather, repository software
`implements the repository functions that are used to manage the
`use and distribution of the content. (Ex. 1001, 14:3-15.) 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. 8-9.
`
`On what repositories “do,” ContentGuard’s argument overlooks and
`
`fails to discuss the portions of the specification which indicate that
`
`repositories themselves also can be rendering devices which run and execute
`
`the software type digital works the usage rights of which they control. For
`
`
`
`15
`
`Petitioner Apple Inc. - Ex. 1042, p. 15
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`

`
`IPR2013-00137
`Patent 6,963,859
`
`instance, the ’859 patent states the following with regard to software
`
`runnable 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, 41:28-31 (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 above-quoted
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`disclosure refers to a digital work that is “runnable software on a
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`repository,” and states that, in a typical case, the repository asking for the
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`digital work is itself a rendering repository that identifies the software digital
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`work not as operating software, but application software. As such, the
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`specification conveys information contrary to ContentGuard’s contention.
`
`ContentGuard does not explain such disclosure and does not point to any
`
`testimony of its expert witness that addresses such disclosure in light of its
`
`“excessively broad” contention.
`
`Because a repository, itself, may run and execute software the usage
`
`and distribution of which is managed by the repository, it is unpersuasive
`
`that the reference to “repository software” in that portion of the specification
`
`discussing “behavioral integrity” (Ex. 1001, 12:34-50) is restricted to
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`software that only manages usage rights. Indeed, in the context of installing
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`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
`
`
`
`16
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`Petitioner Apple Inc. - Ex. 1042, p. 16
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`

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`IPR2013-00137
`Patent 6,963,859
`
`digital certificate for that software (Ex. 1001, 41:41-44), in the same manner
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`that the specification describes requiring a digital certificate in the digital
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`work to ensure behavioral integrity of the repository (Ex. 1001, 12:40-43).
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`Moreover, some repositories are rendering repositories. Ex. 1001, 41:29-31.
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`“Repository software,” as used in the specification, is broad enough to cover
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`application software, such as the “player” referenced in column 41, lines 29-
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`31, of the specification, as well as what ContentGuard refers to as “operating
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`software” which enables the repository to regulate usage rights.
`
`We do not credit the testimony of the expert witness of ContentGuard,
`
`Dr. Michael T. Goodrich, in paragraphs 40 and 41 of his declaration
`
`(Ex. 2013). In those paragraphs, Dr. Goodrich testifies that, in his opinion, a
`
`person of ordinary skill in the art in 1994 would have understood that the
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`term “repository software” in the ’859 patent identifies and refers to the
`
`operating software of the repository, and not the software digital works the
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`usage rights of which are controlled by the repository. The testimony is
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`unpersuasive, because it does not account for the disclosure of the
`
`specification, discussed above, which conveys that some repositories are
`
`themselves rendering depositories which run and execute the software digital
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`works the rights of which they control, such as a new version of a “player.”
`
`2.
`
`ContentGuard contends that our 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 ensure behavioral integrity.
`
`
`
`17
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`Petitioner Apple Inc. - Ex. 1042, p. 17
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`

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`IPR2013-00137
`Patent 6,963,859
`
`PO Resp. 9-10. 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 9.
`
`ContentGuard’s contention that our construction is too narrow is
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`inconsequential to the outcome of this proceeding, because a broader
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`interpretation of “behavioral integrity,” would not render inapplicable any
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`teaching of the prior art which was applied under the narrower construction.
`
`We reproduce ContentGuard’s argument, here, in more detail:
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`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 ’859 patent says that
`“[t]he integrity of the software is generally assured only by
`knowledge of its source.” (Ex. 1001, 12:36-37.) Although the
`specification does say that “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 specification continues by explaining the
`broader purpose of the certificate. (Id., 12:40-43.) “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.” (Id.,
`12:43-47 (emphasis added).) So, as long as there is some
`assurance “that the software does what it is supposed to do,”
`whether by source certification or otherwise, behavioral
`integrity can be maintained.
`
`PO Resp. 9 (emphasis in original).
`
`The breadth argued by ContentGuard is on the extreme end of a
`
`spectrum for the meaning of “repository”—whatever ensures a repository
`
`
`18
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`Petitioner Apple Inc. - Ex. 1042, p. 18
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`

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`IPR2013-00137
`Patent 6,963,859
`
`does what it is supposed to do. ContentGuard would like to generalize the
`
`feature into a generic goal or purpose, entirely removed from any specific
`
`means for its implementation. There are several obstacles precluding such
`
`an interpretation.
`
`First, the restrictive language in the specification does not permit such
`
`an expansive construction. Although it is true that the broadest reasonable
`
`construction rule applies for claim interpretation, the construction must be
`
`reasonable in light of the specification. In that connection, the specification
`
`states: “Behavioral integrity is maintained by requiring that repository
`
`software be certified and be distributed with proof of such certification, i.e.,
`
`a digital certificate.” Ex. 1001, 12:40-43 (emphasis added).
`
`Second, ContentGuard does not point to any other means, described in
`
`the specification, for ensuring behavioral integrity of a repository. The sole
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`disclosure in that regard, as identified by ContentGuard, relates to the use of
`
`digital certificates. There is no basis to assume, on this record, that digital
`
`certificates are representative of all ways for ensuring that a digital work is
`
`authentic. Even ContentGuard does not make that assertion. Thus, the
`
`scope of disclosure is not commensurate with the breadth for the
`
`cons