Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 12
`Filed: July 1, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-00354
`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. 12
`Filed: July 1, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-00354
`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
`
`
`
`
`
`
`
`
`IPR2015-00354
`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
`10, “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., No. 2:13-cv-
`01112 (E.D. Tex.); (2) Google, Inc. v. ContentGuard Holdings, Inc., No.
`3:14-cv-00498 (N.D. Cal.); and (3) ContentGuard Holdings, Inc. v. Google,
`Inc., No. 2:14-cv-00061 (E.D. Tex). Pet. 1; Paper 9, 2. In addition to this
`Petition, Petitioner filed at least 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 IPR2015-00353); and (2) U.S. Patent No. 8,001,053 B2 (Cases
`IPR2015-00355, IPR2015-00356, IPR2015-00357, and IPR2015-00358).
`Pet. 1; Paper 9, 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; and (6) U.S. Provisional Application No. 60/296,118, filed on June
`7, 2001. Id. at [60].
`The ’280 patent generally relates to a method and system for
`managing the transfer of rights associated with digital works using shared
`state variables. Ex. 1001, 1:18–20. According to the ’280 patent, “[o]ne 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 2:32–34. 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 24. 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):
`Reference
`Patent/Printed Publication
`Ginter
`US Patent No. 5,892,900
`Wiggins
`US Patent No. 5,717,604
`
`Date
`Apr. 6, 1999
`Feb. 10, 1998
`
`Exhibit
`Ex. 1007
`Ex. 1011
`
`F. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of certain claims of the ’280
`patent based on the following grounds:
`References
`Basis
`Ginter
`§ 103(a)
`
`Claims Challenged
`1–5, 8, 11–16, 19, 22, 24–28, 31,
`and 34
`1–5, 8, 11–16, 19, 22, 24–28, 31,
`and 34
`
`Ginter and Wiggins
`
`§ 103(a)
`
`
`
`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
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`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. 5–23.
`In response, Patent Owner proposes alternative constructions for most of the
`terms or phrases construed by Petitioner. Prelim. Resp. 18–33. For
`purposes of this decision, we need only assess the constructions offered by
`the parties for the claim term “repository” and the 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. 18 (citing Ex. 1003 ¶¶ 284–
`89). Petitioner argues that the construction it offers for the claim term
`“repository” in this proceeding is consistent with the Board’s construction of
`the same claim term in previous inter partes review proceedings, one of
`which involves U.S. Patent No. 5,634,012 (“Stefik”), which is incorporated
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`by reference into the ’280 patent. See id. In those proceedings, Petitioner
`asserts that the Board determined that the claim term “repository” was
`defined explicitly as “a trusted system, which maintains physical,
`communications and behavioral integrity, and supports usage rights.” Id.
`(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. (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
`“repository” in his supporting testimony. Dr. Prakash testifies that, in the
`previous inter partes review proceedings before the Board, one of which
`involved Stefik, the Board defined “communications integrity” as “only
`communicates with other devices that are able to present proof that they are
`trusted systems, e.g., by using security measures such as encryption,
`exchange of digital certificates, and nonces.” Ex. 1003 ¶ 284 (citing
`Ex. 1041, 12). Dr. Prakash further testifies that the Board defined
`“behavioral integrity” as requiring “software to include a digital certificate
`in order to be installed in the repository.” Id. (citing Ex. 1041, 13).
`With a few exceptions, 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. 24–27. Patent Owner
`argues that the claim term “repository” should be construed as “a trusted
`system in that it maintains physical, communications, and behavioral
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`integrity in the support of usage rights.” Id. at 24 (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 concerning the ’280 patent, and the construction adopted
`by a district court for the ’280 patent. Id. at 24–25 (citing Pet. 18; Ex. 2001,
`15, 99). Patent Owner urges us to adopt its proposed construction for
`reasons specified by the district court. Id. at 25. 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 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.” It is well settled that our
`reviewing court disfavors any claim interpretation that renders a claim term
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`or phrase superfluous. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d
`1358, 1362 (Fed. Cir. 2007). We agree with Patent Owner that, 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 Prelim. Resp. 25.
`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
`integrity in the support of usage rights.” Pet. 18; Prelim. Resp. 24
`(emphasis added). We view the Board’s construction of the claim term
`“repository” in the previous inter partes reviews, which were brought
`against patents that share a similar disclosure with Stefik , as informative.
`We give more weight to the panel’s construction of the claim term
`“repository” in those proceedings than the district court’s construction of the
`same claim term primarily because this proceeding and the previous
`proceeding before the Board both apply the broadest reasonable
`interpretation standard to the challenged claims of an unexpired patent.
`37 C.F.R. § 42.100(b).
`For purposes of this proceeding, we construe the claim term
`“repository” as “a trusted system which maintains physical,
`communications, and behavioral integrity, and supports usage rights.” We
`further define “physical integrity” as “preventing access to information by a
`non-trusted system”; “communications integrity” as “only communicates
`with other devices that are able to present proof that they are trusted
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`systems, e.g., by using security measures such 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
`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.”).1
`Independent claims 12 and 242 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.”).
`
`
`1 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.
`2 Claims 13–16, 19, 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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`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” that corresponds to each means-plus-function limitation, and
`“there are no algorithms or other description of software that function as”
`each means-plus-function limitation. Pet. 21–23. 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 rights from a
`content provider” (id. at 21–22); (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 22); 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 23).
`Patent Owner argues that Petitioner does not identify any structure in
`the ’280 specification for independent claims 12 and 243 and compare it to
`structure disclosed in the prior art. Prelim. Resp. 33–34. According to
`
`3 Patent Owner also argues that Petitioner does not identify any structure in
`the ’280 specification for dependent claims 13–16, 19, 22, 25–28, 31, and
`34, which, as we discussed above, depend from independent claims 12 and
`24. Prelim. Resp. 33–34.
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`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 means-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.
`B. Obviousness Based on Ginter
`
`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 Ginter. Pet. 24–42.
`Petitioner explains how Ginter purportedly teaches the claimed subject
`matter of each challenged claim, and relies upon the Declaration of
`Dr. Prakash (Ex. 1003 ¶¶ 198–201, 236–308, 312–317, 362–458)4 to support
`its positions. Id. We have considered Petitioner’s explanations and
`
`
`4 Our governing statute and rules require a petitioner to set out their claim
`challenges “with particularity” and with a “detailed explanation of the
`significance of the evidence. 35 U.S.C. § 312(a)(3); 37 C.F.R.
`§§ 42.22(a)(2), 42.104(b)(4), (5). Likewise, the Office Patent Trial Practice
`Guide admonishes a petitioner to “focus on concise, well organized, easy-to-
`follow arguments supported by readily identifiable evidence of record.” 77
`Fed. Reg. 48,756–73, 48,763 (Aug. 14, 2012). In general, citations to
`voluminous sections (e.g., ninety-six 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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`supporting evidence, but we are not persuaded that Ginter teaches the
`claimed “repository” that exhibits “behavioral 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
`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. Ginter
`Ginter generally relates to secure transaction management and
`electronic rights protection in a virtual distribution environment. Ex. 1007,
`Abstr.; 2:20–23. Ginter teaches that digital content in a virtual distribution
`environment can be packaged in secure “containers.” Id. at 12:38–44,
`59:12–50, 308:29–35; Fig. 5A. Figure 5A of Ginter, reproduced below,
`illustrates one embodiment of digital content packaged in a secure container
`in a virtual distribution environment. Id. at 59:8–12. Specifically, content is
`packaged into container 302 so that information cannot be accessed except
`as provided by the “rules and controls” of container 302. Id.
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`As shown in Figure 5 of Ginter, container 302 can include, among
`other things, a permissions record 808, budgets 308, and other methods
`1000, all of which can delineate rules and controls relating to the use of
`certain digital content. Id. at 59:37–41, FIG. 5A. According to Ginter, the
`rules and controls may specify what kinds of content usage are permitted,
`and what kinds are not. Id. at 56:23–24, 57:1–5. Ginter discloses that
`displaying, printing, copying, and distributing are types of allowable content
`usages. Id. at Fig. 4.
`3. “Repository” that Exhibits “Behavioral Integrity”
`Independent claim 1 recites, in relevant part, “wherein the meta-right
`is provided in digital form and is enforceable by a repository,” and
`“determining, by a repository, whether the rights consumer is entitled to the
`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 Ginter’s “trusted architecture,” including
`secure electronic appliances, constitute the claimed “repository.” Pet. 35–
`37. In particular, Petitioner argues that Ginter teaches a “configurable,
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`consistent, secure and ‘trusted’ architecture for distributed, asynchronous
`control of electronic content and/or appliance usage [that displays certain
`security elements, including behavior integrity.]” Id. at 35 (citing Ex. 1007,
`13:20–23). According to Petitioner, a rights operating system in Ginter is
`used to securely handle tasks, including rights and auditing operating system
`functions. Id. at 36 (citing Ex. 1007, 13:5–26; Ex. 1003 ¶ 385). Petitioner,
`therefore, asserts that Ginter’s “electronic appliances” exhibit “behavioral
`integrity.” Id. at 36–37 (citing Ex. 1003 ¶ 381–393).
`In response, Patent Owner contends that Petitioner fails to
`demonstrate that Ginter’s electronic appliances constitute the claimed
`“repository” that exhibits “behavioral integrity.” Prelim. Resp. 46. Patent
`Owner argues that “behavioral integrity” was construed by both a previous
`panel of the Board and a district court to require “software to include a
`digital certificate in order to be installed in the repository.” Id. (emphasis
`added) (citing Ex. 1041, 13; Ex. 2001, 19–21). Patent Owner further argues
`that Petitioner’s reliance on the secure handling of rights and auditing
`functions in Ginter has no relevance whatsoever to “behavioral integrity” as
`previously construed by the Board and the district court. Id. at 47.
`According to Patent Owner, the mere mention that an operation system can
`“securely handle tasks” and has “rights and auditing operating system
`functions,” does not indicate that Ginter teaches designing the system to
`ensure that software is trusted before being installed on the electronic
`appliance. Id. Patent Owner contends that Ginter does not recognize the
`benefits of behavioral integrity and fails to disclose any component or
`methodology for providing this type of integrity. Id. Patent Owner also
`argues that the supporting testimony of Dr. Prakash should be entitled to
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`little, if any, weight because his definition of “behavioral integrity” does not
`comport with how the same term was construed by both the previous Board
`panel and the district court. Id. at 47–48 (citing Ex. 1003 ¶ 387).
`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 “behavioral integrity” as “requiring software to include a digital
`certificate in order to be installed in the repository.” Id.
`We agree with Patent Owner that Ginter’s trusted architecture
`including secure electronic appliances does not constitute a claimed
`“repository” that exhibits “behavioral integrity” because there is no
`indication Ginter’s rights operating system that securely handling tasks,
`including rights and auditing operating system functions, involves the use of
`a digital certificate. See Prelim. Resp. 46–47. Petitioner does not direct us
`to, nor can we find, a disclosure in Ginter that associates a digital certificate
`with the rights operating system and software that authenticates the source of
`the software prior to downloading it on the trusted architecture that is the
`secure electronic appliances. Rather, Ginter merely refers to a rights
`operating system that can “securely handle tasks” and has “rights and
`auditing operating system functions” without offering an adequate
`explanation as to how these tasks or functions involve the use of a digital
`certificate. See, e.g., Pet. 36–37.
`We also agree with Patent Owner that, when attesting to the teachings
`of Ginter, Dr. Prakash applies a new definition of “behavioral integrity” that
`is different from the Board’s previous definition, the definition adopted by
`
`16
`
`
`
`IPR2015-00354
`Patent 7,774,280 B2
`
`the district court, and the definition adopted for purposes of this proceeding.
`See Prelim. Resp. 47–48. As we explained above, although Dr. Prakash
`acknowledges the Board’s previous definition of “behavioral integrity” as
`requiring “software to include a digital certificate in order to be installed in
`the repository” (Ex. 1003 ¶ 284 (citing Ex. 1041, 13)), he nonetheless
`applies a new definition for “behavioral integrity” when testifying that
`Ginter’s rights operating system and software controlling the electronic
`appliances constitute the claimed “repository” (id. ¶ 387). The relevant
`portion of Dr. Prakash’s testimony states that: “Ginter . . . includes ‘a
`trusted system that maintains physical, communications and behavioral
`integrity, and that supports usage rights,’ (‘repository’) where: . . .
`‘behavioral integrity’ means ‘trusted software within a repository that
`enables control of content use.” Id.
`Dr. Prakash does not explain why he deviated from the Board’s
`previous definition of “behavioral integrity” (see, e.g., Ex. 1041, 13), which
`eventually was adopted by the district court (Ex. 2001, 19–21) and adopted
`for purposes of this proceeding (see supra Section II.A.1.). Nor does Dr.
`Prakash explain how the new definition of “behavioral integrity” would be
`understood by one of ordinary skill in the art in light of the specification of
`the ’280 patent. Absent some underlying facts or data to support Dr.
`Prakash’s new definition of “behavioral integrity,” his testimony in this
`regard is entitled to little, if any, weight. See 37 C.F.R. § 42.65 (“Expert
`testimony that does not disclose the underlying facts or data on which the
`opinion is based is entitled to little or no weight.”).
`In summary, we are not persuaded that Petitioner has presented
`sufficient evidence to support a finding that Ginter’s trusted architecture
`
`17
`
`
`
`IPR2015-00354
`Patent 7,774,280 B2
`
`including secure electronic appliances does not constitute a claimed
`“repository” that exhibits “behavioral integrity” because there is no
`indication Ginter’s rights operating system that securely handling tasks,
`including rights and auditing operating system functions, involves the use of
`a digital certificate. 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 Ginter.
`
`C. Remaining Obviousness Ground
`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 the combination of Ginter
`and Wiggins. Pet. 42–59. In this asserted ground based on obviousness,
`Petitioner does not apply the teachings of Wiggins in such a way that
`remedies the deficiencies in Ginter discussed above. See generally id.
`Therefore, for essentially the same reasons discussed above, 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 the combination of Ginter and Wiggins.
`
`III. CONCLUSION
`
`The Petitioner fails to show there is a reasonable likelihood that it
`would prevail with respect to at least one of the claims challenged in the
`Petition.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied and no trial is instituted.
`
`18
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`
`
`IPR2015-00354
`Patent 7,774,280 B2
`
`
`
`
`FOR PETITIONER:
`Jeffrey P. Kushan
`Sidley Austin LLP
`iprnotices@sidley.com
`
`Michael R. Franzinger
`Sidley Austin LLP
`iprnotices@sidley.com
`
`
`
`19
`
`FOR PATENT OWNER:
`Timothy P. Maloney
`Fitch, Even, Tabin, & Flannery LLP
`tpmalo@fitcheven.com
`
`Nicholas Peters
`Fitch, Even, Tabin, & Flannery LLP
`ntpete@fitcheven.com
`
`Robert A. Cote
`McKool Smith, P.C.
`rcots@mckoolsmith.com
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