Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 9
`Filed: June 25, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-00353
`Patent 7,774,280 B2
`
`_______________
`
`
`
`Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 312(a)(4) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 9
`Filed: June 25, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-00353
`Patent 7,774,280 B2
`
`_______________
`
`
`
`Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 312(a)(4) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2015-00353
`Patent 7,774,280 B2
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`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “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 (Ex. 1001, “the ’280 patent”). ContentGuard
`Holdings, Inc. (“Patent Owner”) timely filed a Preliminary Response (Paper
`8, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless . . . there is
`a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.”
`Upon consideration of the Petition and Patent Owner’s Preliminary
`Response, we conclude Petitioner has not established a reasonable likelihood
`it would prevail with respect to at least one of the challenged claims.
`Accordingly, we deny the Petition.
`B. Related Matters
`The ’280 patent has been asserted in the following three district court
`cases: (1) ContentGuard Holdings, Inc. v. Amazon.com Inc., et al., No.
`2:13-cv-01112-JRG (E.D. Tex.); (2) Google Inc. v. ContentGuard Holdings,
`Inc., No. 3:14-cv-00498-WHA (N.D. Cal.); and (3) ContentGuard Holdings,
`Inc. v. Google Inc., No. 2:14-cv-00061-JRG-RSP (E.D. Tex). Pet. 1; Paper
`7, 2. In addition to this Petition, Petitioner filed seven other Petitions
`challenging the patentability of a certain subset of claims in the following
`patents owned by Patent Owner: (1) the ’280 patent (Cases IPR2015-00351,
`IPR2015-00352, and IPR2015-00354); and (2) U.S. Patent No. 8,001,053
`B2 (Cases IPR2015-00355, IPR2015-00356, IPR2015-00357, and IPR2015-
`00358). Pet. 2; Paper 7, 1.
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`C. 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 (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.
`Moreover, the concept of content owners simply granting rights to others
`that are a subset of the possessed rights is not adequate for multi-tier
`distribution models. Id. at 2:45–48.
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`The ’280 patent purportedly addresses these problems by providing a
`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.
`Id. at 2:55–57. The rights that may be derived from the meta-rights include
`at least one state variable based on the set of rights, which, in turn, may be
`used to determine a state of the derived right. Id. at 2:62–64. If the
`consumer is entitled to the rights derived from the meta-rights, the disclosed
`invention then derives at least one right from the meta-rights. Id. at 2:58–60.
`D. Illustrative Claim
`Claims 1, 12, and 24 are independent claims and are challenged in this
`proceeding. Claim 1 is directed to a method for transferring rights
`associated with an item from a rights supplier to a rights consumer; claim 12
`is directed to a system for performing the same, and claim 24 is directed to a
`device for performing the same. 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 12. Independent claim 1 is illustrative of the ’280 patent
`and is reproduced below:
`1.
`A computer-implemented method for transferring
`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-
`right is provided in digital form and is enforceable by a
`repository;
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`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.
`
`E. The Evidence of Record
`Petitioner relies upon the following references, as well as the
`Declaration of Atul Prakash, Ph.D. (Ex. 1003):
`Date
`Reference
`Patent/Printed Publication
`England
`US Patent No. 6,327,652 B1 Dec. 4, 2001
`US Patent No. 6,389,538 B1 May 14, 2002
`Gruse
`Wiggins
`US Patent No. 5,717,604
`Feb. 10, 1998
`
`Exhibit
`Ex. 1009
`Ex. 1008
`Ex. 1011
`
`F. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–5, 8, 11–16, 19, 22,
`24–28, 31, and 34 of the ’280 patent based on the following grounds:
`References
`Basis
`Claims Challenged
`§ 103(a)1 1–5, 8, 11–16, 19, 22, 24–28, 31,
`England
`and 34
`1–5, 8, 11–16, 19, 22, 24–28, 31,
`and 34
`1–5, 8, 11–16, 19, 22, 24–28, 31,
`and 34
`
`§ 103(a)
`
`§ 103(a)
`
`England and Gruse
`
`England and Wiggins
`
`
`1 The America Invents Act (“AIA”), Pub. L. No. 112-29, took effect on
`March 18, 2013. Because the application from which the ’280 patent issued
`was filed before that date, our citations to Title 35 are to its pre-AIA version.
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`References
`England, Gruse, and
`Wiggins
`
`
`Basis
`§ 103(a)
`
`Claims Challenged
`1–5, 8, 9, 15–19, 22, 23, 26–30,
`33, and 342
`
`II. DISCUSSION
`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
`standard in enacting the AIA,” and “the standard was properly adopted by
`PTO regulation”). 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).
`Petitioner proposes constructions for numerous terms or phrases,
`some of which are not recited explicitly in the challenged claims. Pet. 5–25.
`In response, Patent Owner proposes alternative constructions for most of the
`terms or phrases construed by Petitioner. Prelim. Resp. 18–34. For
`
`
`2 Petitioner challenges claims 1–5, 8, 9, 15–19, 22, 23, 26–30, 33, and 34 as
`obvious under 35 U.S.C. § 103(a) based on England in view of Gruse and
`Wiggins (Pet. 3), but then presents arguments regarding claims 1–5, 8, 11–
`16, 19, 22, 24–28, 31, and 34 (id. at 43).
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`purposes of this decision, we need only assess the constructions offered by
`the parties for the claim term “repository” and means-plus-function
`limitations in certain claims because our determination to deny the Petition
`is based, at least in part, on the construction of these claim terms.
`1. “Repository”
`Petitioner 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. 19 (citing Ex. 1003 ¶¶ 284–
`89). Petitioner argues that the construction it offers for the claim term
`“repository” in this proceeding 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 the ’280 patent. See id. In
`those proceedings, Petitioner asserts that the Board determined that the claim
`term “repository” was construed explicitly as “a trusted system, which
`maintains physical, communications and behavioral integrity, and supports
`usage rights.” Id. (citing Ex. 1035, 9) (emphasis omitted). Petitioner 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 19–20 (citing Ex.
`1035, 11).
`
`Although Petitioner does not address separately “communications
`integrity” and “behavioral integrity” in its Petition, Petitioner’s declarant,
`Dr. Atul Prakash, nonetheless addresses these aspects of the claim term
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`“repository” in his supporting testimony. Dr. Prakash testifies that, in
`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, Patent Owner generally agrees with
`Petitioner’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. 25–27. Patent Owner
`argues that the claim term “repository” should be construed as “a trusted
`system in that it maintains physical, communications, and behavioral
`integrity in the support of usage rights.” Id. at 25 (emphasis added). Patent
`Owner argues that its proposed construction is consistent with the Board’s
`construction of the claim term “repository” in the previous inter partes
`review proceedings, which considered the same disclosure of Stefik
`incorporated by reference into the ’280 patent, and the construction adopted
`by a district court for the ’280 patent. Id. (citing Pet. 19; Ex. 2001, 15, 99).
`Patent Owner urges us to adopt its proposed construction for reasons
`specified by the district court. Id. Patent Owner further argues that we
`should not adopt the language in Petitioner’s proposed construction that
`characterizes a repository as enforcing both meta-rights and usage rights
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`because it would render the claim language describing a “meta-right . . .
`enforceable by a repository” redundant. Id.
`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 this glossary definition in mind, we decline to adopt the
`language in Petitioner’s proposed construction pertaining to “using
`information that enables it to enforce both ‘meta-rights’ and ‘usage rights’
`associated with a particular digital work.” If we were to adopt this language
`proposed by Petitioner, it would render the claim phrase a “meta-right . . .
`enforceable by a repository,” explicitly recited in independent claims 1, 12,
`and 24, superfluous. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358,
`1362 (Fed. Cir. 2007) (disfavors any claim interpretation that renders a claim
`term or phrase superfluous).
`After reviewing the remaining language in the constructions offered
`by both parties, we discern little, if any, difference between a “repository”
`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
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`integrity in the support of usage rights” (emphases added). We view the
`Board’s construction of the claim term “repository” in the previous inter
`partes reviews, which were brought against Patent Owner’s 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
`systems, e.g., by using security measures such an 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.”
`
`2. “Means for obtaining,” “means for determining,” and
`“means for exercising”
`A petitioner must “identify the specific portions of the specification
`that describe the structure, material, or acts corresponding to each claimed
`function” of any means- or step-plus-function limitation. 37 C.F.R.
`§ 42.104(b)(3); see also 35 U.S.C. § 112 ¶ 6 (“An element in a claim for a
`combination may be expressed as a means or step for performing a specified
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`function without the recital of structure, material, or acts in support thereof,
`and such claim shall be construed to cover the corresponding structure,
`material, or acts described in the specification and equivalents thereof.”).3
`Independent claims 12 and 244 recite several limitations that are
`presumably means-plus-function limitations: “means for obtaining . . .”;
`“means for determining . . .”; and “means for exercising . . . .” See
`Williamson v. Citrix Online, LLC, Case No. 2013-1130, slip op. 16 (Fed.
`Cir. June 16, 2015) (en banc in relevant part) (““use of the word ‘means’
`creates a presumption that § 112, ¶ 6 applies.”).
`Petitioner does not rebut the presumption that these limitations are
`governed by § 112 ¶ 6, and does not “identify the specific portions of the
`specification that describe the structure, material, or acts corresponding to
`each claimed function.” 37 C.F.R. § 42.104(b)(3). To the contrary,
`Petitioner states that “[t]he ’280 patent does not identify any specific
`structure” and “there are no algorithms or other description of software that
`function as” each mean-plus-function limitation. Pet. 22–24. Petitioner
`states that, if the Board elects to proceed with review of the challenged
`claims with means-plus-function limitations, it should construe these terms
`as follows: (i) “means for obtaining a set of rights” as “encompassing any
`computer-based technique or scheme that functions to obtain one or more
`
`
`3 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 11229,
`125 Stat. 284 (2011) (“AIA”) re-designated 35 U.S.C. § 112 ¶ 6 as
`35 U.S.C. § 112(f). Because the ’280 patent has a filing date prior to
`September 16, 2012, the effective date of § 4(c) of the AIA, we refer to the
`pre-AIA version of 35 U.S.C. § 112.
`4 Claims 13–16, 19, and 22 depend from claim 12, whereas claims 25–28,
`31, and 34 depend from claim 24. Ex. 1001, 16:1–17:2.
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`rights from a content provider” (id. at 23); (ii) “means for determining
`whether the rights consumer is entitled to the derivable right” as
`“encompassing any computer-based technique or scheme that functions to
`determine if a rights consumer is entitled to a derivable right” (id. at 23); and
`(iii) “means for exercising a meta-right” as “encompassing any computer-
`based technique or scheme that functions to determine create a usage right
`using information in a meta-right” (id. at 24–25).
`Patent Owner argues that Petitioner does not identify any structure in
`the ’280 specification for independent claims 12 and 245 and compare it to
`structure disclosed in the prior art. Prelim. Resp. 33–34. According to
`Patent Owner, the failure to analyze the claims, based on the proper
`construction of the corresponding structure of the means-plus-function
`limitations recited in the challenged claims is fatal to each ground against
`those claims. Id. We agree.
`Petitioner only addresses the recited functions of the mean-plus-
`function limitations, but does not identify any structure in the ’280
`specification that corresponds to the limitations. Accordingly, we are not
`persuaded that there is a reasonable likelihood that Petitioner would prevail
`with respect to independent claims 12 and 24, or dependent claims 13–16,
`19, 22, 25–28, 31, and 34, on any of the challenged grounds.
`
`
`5 Patent Owner also argues that Petitioner does not identify any structure in
`the ’280 specification for the means-plus-function limitations included in
`dependent claims 13–16, 19, 22, 25–28, 31, and 34. Prelim. Resp. 33–34.
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`B. Obviousness Based on England
`
`Petitioner contends that claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and
`34 are unpatentable under 35 U.S.C. § 103(a) over England. Pet. 25–43.
`Petitioner relies upon the Declaration of Dr. Prakash (Ex. 1003 ¶¶ 236–308,
`332–44, 561–660)6 to support its positions. Id. We have considered
`Petitioner’s explanations and supporting evidence, but as discussed below,
`we are not persuaded Petitioner has presented sufficient evidence to support
`a finding that England teaches the claimed “repository” that exhibits
`“communications integrity.”
`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
`
`
`6 Our governing statute and rules require petitioners 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 petitioners 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., ninety-nine 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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`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. England
`England generally relates to loading and identifying a digital rights
`management operating system (DRMOS). Ex. 1009, Title. England
`discloses that to prevent their content from being stolen or misused, content
`providers will download content only to known software and, therefore, only
`subscriber computers that can prove that their operating systems will enforce
`the limitations the provider places on the content. Id. at 8:56–60. Such a
`system (i.e., DRMOS 205) must load and execute only OS components that
`are authenticated as respecting digital rights (“trusted”), and must allow
`access to the downloaded content by only similarly trusted applications. Id.
`at 8:60–65. One embodiment of England is shown in Figure 2, reproduced
`below.
`
`
`As shown in Figure 2 of England, the system includes content
`provider server computer 220 connected to subscriber computer 200 with
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`DRMOS loaded into CPU 201 of subscriber computer 200. Id. at 8:40–44;
`9:7–10. DRMOS 205 is assigned unique trusted identity 206, which is
`recorded in an internal register of CPU 201. Id. at 9:4–6. England discloses
`that content provider server computer 220 performs many processes, some
`of which incorporate either public/private key pairs, digital signatures,
`digital certificates, and/or encryption algorithms, or a combination of these
`standard cryptographic functions. Id. at 8:48–51.
`According to England, its system has two requirements. England
`discloses that the first requirement is met in the exemplary embodiment of
`the invention by having all trusted operating system-level components
`digitally signed by their developers or a trusted third-party, with the
`signature acting as a guarantee that the components respect digital rights.
`The signature is validated before the component is loaded. Id. at 8:66–9:4.
`England then discloses that the second requirement for its system has two
`aspects. Id. at 9:11. First, trusted applications must be identified in some
`fashion, and, second, the DRMOS must prevent non-trusted applications
`from gaining access to the content when it is stored, either permanently or
`temporarily, on the subscriber computer. Id. at 9:11–15.
`In the England system, a content provider downloads the content, an
`“access predicate” and a “license” to the DRMOS on a subscriber computer.
`Id. at 10:14–17. The access predicate specifies the properties an application
`must have to process the content, and also may specify applications allowed
`to process the content. Id. at 10:17–22. The license restricts what kind of
`processing may be performed on the content. Id. at 19:41–43. The DRMOS
`enforces the license when an application wants to access the content stored
`on the client. Id. at 10:41–51.
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`3. “Repository” that Exhibits “Communications 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
`right 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.”
`Petitioner contends that England’s subscriber computer 200 running
`DRMOS operating system 205 constitute the claimed “repository.” Pet. 33–
`34. In particular, Petitioner argues that trusted applications on a user’s
`device in England enforce the content license and the sublicense. Id. at 35–
`36 (citing Ex. 1003 ¶ 584; Ex. 1009 at 8:56–65; 10:52–59). England
`specifically states “[a] series of processes and data structures on a subscriber
`computer control the loading of a digital rights management operating
`system, identify the DRMOS and trusted applications to a content provider,
`and secure content downloaded by the provider to the subscriber computer.”
`Ex. 1009, 10:54–59. Petitioner, therefore, asserts that England’s subscriber
`computer 200 running DRMOS operating system 205 exhibit
`“communications integrity.” Pet. 36. Petitioner relies on testimony from
`Dr. Prakash to support its position, but Dr. Prakash merely reiterates
`Petitioner’s arguments with no additional discussion or explanation. See Ex.
`1003 ¶ 584.
`In response, Patent Owner contends that Petitioner fails to
`demonstrate that England’s subscriber computer 200 running DRMOS
`
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`IPR2015-00353
`Patent 7,774,280 B2
`
`operating system 205 constitutes the claimed “repository” that exhibits
`“communications integrity.” Prelim. Resp. 43. Patent Owner argues that
`“communications integrity” was defined by both a previous panel of the
`Board and the district court to mean that, in support of usage rights, the
`repository “only communicates with other devices that are able to present
`proof that they are trusted systems, for example, by using security measures
`such as encryption, exchange of digital certificates, and nonces.” Id. (citing
`Ex. 1041, 12; Ex. 2001, 18–19). Patent Owner further argues that Petitioner
`fails to demonstrate or even allege that the trusted application of the user’s
`device disclosed in England only communicates with other trusted systems
`in support of usage rights. Id. at 44. According to Patent Owner, England
`only describes the content provider’s server verifying that a subscriber
`computer is trusted, but it does not disclose a mechanism for the subscriber
`computer to verify that the content provider server is a trusted system. Id.
`Patent Owner then asserts that subscriber devices in England’s system are
`vulnerable to participating in fraudulent transactions and/or malicious file
`downloads by entities posing as a legitimate usage rights providers, and
`therefore, do not constitute a “repository” as required by the claims. 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 II.A.1. Of particular importance in this case is our definition
`of “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 an encryption, exchange of digital certificates, and
`nonces.” Id.
`
`17
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`IPR2015-00353
`Patent 7,774,280 B2
`
`We agree with Patent Owner that England’s subscriber computer 200
`running DRMOS operating system 205 does not constitute a claimed
`“repository” that exhibits “communications integrity” because England does
`not teach a mechanism for the subscriber computer to verify that content
`provider server computer 220 is a trusted system. See Prelim. Resp. 44.
`Petitioner does not direct us to, nor can we find, a disclosure in England that
`contemplates a mechanism for the subscriber computer to verify that a server
`is a trusted system. Rather, England generically refers to “[a] series of
`processes and data structures on a subscriber computer [that] control the
`loading of a digital rights management operating system, identify the
`DRMOS and trusted applications to a content provider, and secure content
`downloaded by the provider to the subscriber computer.” Ex. 1009, 10:54–
`59. Petitioner does not explain adequately how these processes and data
`structures on England’s subscriber computer 200 running DRMOS operating
`system 205 are used to verify that content provider server computer 220 is,
`in fact, a trusted system.
`
`Therefore, we are not persuaded that Petitioner has presented
`sufficient evidence to support a finding that England’s subscriber computer
`200 running DRMOS operating system 205 constitutes the claimed
`“repository” that exhibits “communications integrity.” Accordingly, based
`on the record before us, Petitioner 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 England.
`
`C. Obviousness Based on England, Gruse, and/or Wiggins
`Petitioner contends that claims 1–5, 8, 11–16, 19, 22, 24–28, 31, and
`34 are unpatentable under 35 U.S.C. § 103(a) over England in view of Gruse
`
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`IPR2015-00353
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`
`and/or Wiggins. Pet. 43–60. In each of these asserted grounds based on
`obviousness, Apple does not apply the teachings of Gruse or Wiggins in
`such a way that remedies the deficiencies regarding a repository in England
`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 following
`combinations: (1) the combination of England and Gruse; (2) the
`combination of England and Wiggins; or (3) England, Gruse, and Wiggins.
`
`III. CONCLUSION
`
`The Petition fails to show there is a reasonable likelihood that
`petitioner would prevail with respect to at least one of the claims challenged
`in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.8(b)(2).
`
`IV. ORDER
`
`Accordingly, it is ORDERED that the Petition is denied and no trial is
`instituted.
`
`19
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`IPR2015-00353
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`FOR PETITIONER:
`Jeffrey P. Kushan
`Sidley Austin LLP
`iprnotices@sidley.com
`
`Michael R. Franzinger
`Sidley Austin LLP
`iprnotices@sidley.com
`
`FOR PATENT OWNER:
`Timothy P. Maloney
`Fitch, Even, Tabin, & Flannery LLP
`tpmalo@fitcheven.com
`
`Nicholas P
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