Trial@uspto.gov
`571-272-7822
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` Paper 14
` Entered: October 14, 2015
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`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 Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
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`
`
`
`571-272-7822
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` Paper 14
` Entered: October 14, 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 Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2015-00354
`Patent 7,774,280 B2
`
`I. INTRODUCTION
`Petitioner, Apple Inc. (“Petitioner”), timely filed a Request for Rehearing
`under 37 C.F.R. § 42.71(d) on July 31, 2015. Paper 13 (“Req. Reh’g”).
`Petitioner’s Request for Rehearing seeks reconsideration of our Decision Denying
`Institution (Paper 12, “Dec.”) entered on July 1, 2015, particularly our
`determination to deny review of challenged independent claim 1 of U.S. Patent No.
`7,774,280 B2 (“the ’280 patent”) as being unpatentable under 35 U.S.C. § 103(a)
`over Ginter.1 See Dec. 12–18.
`In its Request for Rehearing, Petitioner contends that our determination to
`deny review of challenged independent claim 1 of the ’280 patent was improper for
`at least two reasons. First, Petitioner argues that we misapprehended or
`overlooked Petitioner’s argument that it would have been obvious to one of
`ordinary skill in the art to modify Ginter’s scheme to use digital certificates when
`installing software on Ginter’s “trusted” device to assure the integrity and security
`of those devices. Req. Reh’g 2–10. Second, Petitioner argues we misapprehended
`or overlooked the testimony of Petitioner’s declarant, Dr. Atul Prakash, which
`purportedly supports its argument that it would have been obvious to one of
`ordinary skill in the art to modify Ginter’s scheme by configuring devices to have
`additional, known security features, such as using digital certificates to install
`repository software. Id. at 8 (citing Ex. 1003 ¶¶ 388–93), 12–15.
`As we explain below, we have considered the arguments presented by
`Petitioner in its Request for Rehearing, but we discern no sufficient reason to
`
`
`1 U.S. Patent No. 5,892,900 B2, issued Apr. 6, 1999 (Ex. 1007, “Ginter”).
`2
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`IPR2015-00354
`Patent 7,774,280 B2
`
`modify the Decision Denying Institution. As a consequence, we deny Petitioner’s
`Request for Rehearing.
`
`
`II. STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing that the decision
`should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all
`matters we misapprehended or overlooked, and the place where each matter was
`addressed previously in a motion, an opposition, or a reply. Id. When rehearing a
`decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R.
`§ 42.71(c). An abuse of discretion may be indicated if a decision is based on an
`erroneous interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005);
`Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203
`F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we address the arguments
`presented by Petitioner.
`
`III. ANALYSIS
`A. We Did Not Misapprehend or Overlook Arguments or Evidence Regarding
`Modifications of Ginter’s Scheme
`
`In our Decision Denying Institution, we denied institution of two challenges
`based on Ginter, and Ginter in combination with Wiggins.2 Dec. 17–18. With
`respect to Ginter, we stated:
`
`
`2 U.S. Patent No. 5,717,604 B2, issued Feb. 10, 1998 (Ex. 1011, “Wiggins”).
`3
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`IPR2015-00354
`Patent 7,774,280 B2
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`we are not persuaded that Petitioner has presented sufficient evidence
`to support a finding 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.
`
`Id.
`Petitioner argues the “Board misapprehended and/or overlooked arguments
`clearly presented in the Petition (as well as supporting evidence) which explained
`that it would have been obvious” to one of ordinary skill in the art “to modify the
`Ginter [Digital Rights Management (“DRM”)] system to employ digital certificates
`when installing software on the devices used in Ginter’s scheme.” Req. Reh’g 1
`(citing Paper 1 (“Pet.”), 47–49). According to Petitioner, “the Petition clearly
`explained that Ginter’s ‘trusted devices’ could be altered to possess additional
`capabilities, including those that would confer greater security or control over the
`electronic appliances used in its scheme.” Id. at 7. Petitioner also argues that the
`Petition provides evidence in the form of Dr. Prakash’s testimony to support its
`explanation. Id. at 8 (citing Ex. 1003 ¶¶ 388–93).
`We disagree with Petitioner’s contention that we misapprehended or
`overlooked an explanation as to how and why it would have been obvious to
`modify Ginter’s scheme to use digital certificates on its secure appliance devices.
`The Petition provides:
`security of the devices could be improved by requiring all software
`applications used on the device to be “certified to be trusted” (e.g., by
`requiring a digital certificate to install or execute the software). See
`Ex. 1003 at ¶¶ 388-393; Ex. 1001 at 1:60-64. Indeed, the ’280 patent
`4
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`IPR2015-00354
`Patent 7,774,280 B2
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`acknowledges doing so was known in the prior art. Ex. 1001 at 1:43-
`44, 1:58-2:21.
`
`Pet. 48 (emphasis in original). The Petition, thus, merely offers a conclusory
`statement that someone of ordinary skill in the art could have modified Ginter’s
`scheme, yet fails to explain persuasively why a person of ordinary skill in the art
`would have modified Ginter’s scheme so as to require a digital certificate to install
`and execute software so that the secure appliance devices would constitute a
`“repository” that exhibits “behavioral integrity,” as required by claim 1. Although
`the ’280 patent acknowledges that digital certificates were known in the art,
`Petitioner fails to provide a rationale as to why or how a person of ordinary skill in
`the art would take such information from the’280 patent, apply it to the teachings
`in Ginter, and account for all the elements of the claim 1. Therefore, as our
`Decision Denying Institution states, Petitioner’s analysis is conclusory and fails to
`explain adequately how the evidence supports the contentions that Ginter would
`have rendered the limitations of challenged claim 1 obvious. See Dec. 16–18.
`Accordingly, we are not persuaded that we misapprehended or overlooked
`Petitioner’s argument that it would have been obvious to one of ordinary skill in
`the art to modify Ginter’s scheme to use digital certificates when installing
`software on Ginter’s “trusted” device to teach the claimed “repository.” Although
`we recognize that digital certificates and trusted devices may have been
`independently known in the prior art, Petitioner does not explain what would have
`led a person of ordinary skill in the art at the time of the invention to choose to use
`digital certificates when installing software on Ginter’s “trusted” device to assure
`the integrity and security of those devices. Rather, we find Petitioner’s arguments
`5
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`IPR2015-00354
`Patent 7,774,280 B2
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`fraught with hindsight bias. See KSR, 550 U.S. at 418 (“A patent composed of
`several elements is not proved obvious by merely demonstrating that each of its
`elements was, independently, known in the prior art.”); Kinetic Concepts, Inc. v.
`Smith & Nephew, Inc., 688 F.3d 1342, 1368–69 (Fed. Cir. 2012) (“[Smith &
`Nephew] never offered evidence articulating why a person having ordinary skill in
`the art would combine the primary references to obtain the disclosed inventions.”);
`Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373–74 (Fed. Cir. 2008) (“We
`must still be careful not to allow hindsight reconstruction of references to reach the
`claimed invention without any explanation as to how or why the references would
`be combined to produce the claimed invention.”)..
`Moreover, we note that merely disagreeing with our analysis or conclusions
`does not serve as a proper basis for a rehearing. It is not an abuse of discretion to
`provide analysis or conclusions with which Petitioner disagrees.
`B. We Did Not Misapprehend or Overlook Certain Testimony Offered by
`Dr. Prakash, But Rather Accorded it Little, if any, Weight
`
`Petitioner contends that we overlooked the testimony of Petitioner’s
`
`declarant, Dr. Prakash, which purportedly supports its explanation as to why it
`would have been obvious to one of ordinary skill in the art to modify Ginter’s
`scheme to use digital certificates when installing software on Ginter’s “trusted”
`device to assure the integrity and security of those devices. Req. Reh’g 12–15
`(citing Ex. 1003 ¶¶ 383–92). In particular, Petitioner argues that we committed
`legal error by not according Dr. Prakash testimony in this regard any weight and by
`placing improper reliance on Patent Owner’s contentions about the trustworthiness
`of Dr. Prakash’s opinions. Id. at 12–13.
`
`6
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`IPR2015-00354
`Patent 7,774,280 B2
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`We disagree with Petitioner’s contentions. We note that it is within our
`discretion to assign the appropriate weight to the testimony offered by Dr. Prakash.
`See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board
`has discretion to give more weight to one item of evidence over another “unless no
`reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367
`F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
`declarations and conclude that the lack of factual corroboration warrants
`discounting the opinions expressed in the declarations.”). In the Decision Denying
`Institution, we focused only on Dr. Prakash’s conflicting testimony regarding the
`definition for “behavioral integrity.” Dec. 16–17. This, however, was just one of
`many examples as to why we accorded Dr. Prakash’s testimony little, if any,
`weight.
`
`Dr. Prakash testified that “[e]ssentially, additional common security
`mechanisms (secure hardware, digital certificates, etc.) can be added to a less
`secure system while retaining the same design for rights management.” Ex. 1003
`¶ 392. Dr. Prakash, however, failed to explain why a person of ordinary skill in the
`art would chose to modify Ginter by requiring digital certificates, rather than
`modify Ginter’s scheme using additional secure hardware. Dr. Prakash also
`testified that “trusted systems’ for distribution of digital content were well-known
`before 2001, and that a person of ordinary skill in the art would have understood
`how to modify a less secure system to make it a trusted system while still retaining
`the same design for DRM. Id. at ¶¶ 391–92. Yet, Dr. Prakash failed to provide a
`specific rationale for how a person of ordinary skill in the art would take such
`known information, particularly digital certificates, apply it to the teachings in
`
`7
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`IPR2015-00354
`Patent 7,774,280 B2
`
`Ginter, and account for all the elements of the claim 1. Dr. Prakash’s testimony in
`this regard, thus, is conclusory and also appears to be fraught with hindsight bias.
`Accordingly, we are not persuaded that we misapprehended or overlooked
`testimony from Dr. Prakash supporting Petitioner’s explanation as to why it would
`have been obvious to one of ordinary skill in the art to modify Ginter’s scheme to
`use digital certificates when installing software on its “trusted” device to assure the
`integrity and security of those devices. Instead, for the reason discussed in the
`Decision Denying Institution (Dec. 16–18), as well as the additional reasons
`provided above, we maintain that Dr. Prakash’s testimony in this regard is entitled
`to little, if any, weight.
`
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated that we abused
`our discretion by denying the Petition as to challenged independent claim 1 of the
`’280 patent.
`
`
`V. ORDER
`Accordingly, it is ORDERED that Petitioner’s Request for Rehearing is
`DENIED.
`
`8
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`9
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`IPR2015-00354
`Patent 7,774,280 B2
`
`For PETITIONER:
`Jeffrey P. Kushan
`Michael R. Franzinger
`Sidley Austin LLP
`iprnotices@sidley.com
`
`
`
`
`
`For PATENT OWNER:
`Timothy P. Maloney
`Nicholas T. Peters
`Fitch Even Tabin & Flannery LLP
`tpmalo@fitcheven.com
`ntpete@fitcheven.com
`
`Robert A. Cote
`McKool Smith, P.C.
`rcote@mckoolsmith.com
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