throbber
Paper No. 11
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, LLC
`Patent Owner.
`
`Patent No. 8,583,556
`Issue Date: Nov. 12, 2013
`Filed: August 15, 2011
`Inventors: Bryan Dunkeld and Edward Lambert
`Title: METHOD OF PROVIDING A DIGITAL ASSET FOR DISTRIBUTION
`
`____________________
`
`Inter Partes Review No. IPR2015-00400
`
`__________________________________________________________________
`
`Notice Clarifying Grounds of Petition
`
`
`
`
`i
`
`

`
`IPR2015-00400
`Paper 11
`Pursuant to the Board’s direction, Petitioner files this clarification of the
`
`proposed grounds in IPR2015-00400. This description of the proposed grounds
`
`supersedes the description of the proposed grounds in the petition at pages 3 to 4.
`
`Patent Owner requested that Petitioner identify the element(s) not disclosed
`
`in the primary reference for each ground based on obviousness. Petitioner has
`
`acceded to this request and has provided this information in the table below.
`
`I.
`
`
`
`Relationship of Grounds and Evidence in IPR2015-00400 and in
`CBM2015-00042
`
`The grounds and evidence presented in this proceeding (IPR2015-00400) are
`
`the same as those presented in CBM2015-00042. To simplify the issues before the
`
`Board, Petitioner is concurrently seeking authorization to terminate the CBM2015-
`
`00042 proceeding. Patent Owner has indicated that it will not oppose termination
`
`of the CBM2015-00042 proceeding.
`
`II. The Grounds Presented in this Petition
`
`Each of the grounds proposed in this petition is for obviousness under 35
`
`U.S.C. § 103 based on one of two primary references, namely, either: (i) Doherty
`
`(Ex. 1010) or (ii) Hollar (Ex. 1011). The petition describes the teachings of each
`
`primary reference and compares it to the contested claims at §§ IV.A.1 and 2
`
`(Doherty) and §§ IV.B.1 and 2 (Hollar), respectively. Certain grounds set forth
`
`obviousness based on each primary reference considered alone, while other
`
`grounds set forth obviousness based on each primary reference in view of one or
`1
`
`

`
`IPR2015-00400
`Paper 11
`
`more secondary references.
`
`To simplify matters for the Board and Patent Owner, Petitioner proposes to
`
`withdraw the proposed obviousness grounds based on Doherty or Hollar
`
`considered alone, and to proceed with the obviousness grounds in the petition
`
`based on combinations of each primary reference with one or more secondary
`
`references. There are three such grounds proposed in this petition:
`
`
`
`
`
`
`
`2
`
`

`
`IPR2015-00400
`Paper 11
`
`
`
`Obviousness
`Ground
`
`Claims at
`Issue
`
`Location in
`Petition
`
`Element(s) Not Disclosed in Primary
`Reference1 & Where Addressed
`
`1, 12
`
`§ IV.A.1
`(overview)
`§ IV.A.2
`(correlation to
`Doherty)
`
`8, 19
`
`§ IV.A.3
`
`11, 22
`
`§ IV.A.5
`
`9, 20
`
`§ IV.A.4
`
` “one or more processors …”
`(IV.A.2.a)
`“one or more memories …”
`(IV.A.2.a)
`“the second instance of the digital
`asset including digital content and at
`least one other portion …”
`(IV.A.2.g.(i))
`
`Limitations of dependent claims 8 and
`19 are disclosed by Doherty
`(§ IV.A.3)
`
`Limitations of dependent claims 11
`and 22 are disclosed by Doherty.
`(§ IV.A.5)
` “update[e/ing] [a/said] transaction
`database to indicate identities of
`parties involved in a transfer of said
`digital asset, and a timestamp for the
`transfer” (§ IV.A.4)
`
`(i) Doherty
`(Ex. 1010) in
`view of Sasaki
`(Ex. 1006)
`
`(ii) Doherty in
`view of Sasaki
`and further in
`view of Dorak
`(Ex. 1007)
`
`
`1
`Subject to the Board’s construction and determinations on teachings of
`
`primary reference.
`
`
`
`3
`
`

`
`Obviousness
`Ground
`
`Claims at
`Issue
`
`Location in
`Petition
`
`1, 12
`
`§ IV.B.1
`(overview)
`§ IV.B.2
`(correlation to
`Hollar)
`
`
`(iii) Hollar
`(Ex. 1011) in
`view of
`Doherty
`
`8, 19
`
`§ IV.B.3
`
`9, 20
`
`§ IV.B.4
`
`11, 22
`
`§ IV.B.5
`
`IPR2015-00400
`Paper 11
`Element(s) Not Disclosed in Primary
`Reference1 & Where Addressed
`
` “debit[ing] an account of the user
`related to the transfer of the second
`instance of the digital media asset to
`the user” (§IV.B.2.i)
`
`Limitations of dependent claims 8 and
`19 are disclosed by Doherty
`(§ IV.B.3)
`“update[e/ing] [a/said] transaction
`database to indicate identities of
`parties involved in a transfer of said
`digital asset, and a timestamp for the
`transfer” (§ IV.B.4)
`
`Limitations of dependent claims 11
`and 22 are disclosed by Hollar
`(§ IV.B.5)
`
`
`
`Dated: February 27, 2015
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Registration No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`(202) 736-8914
`Attorney for Petitioner
`
`
`
`
`
`4
`
`

`
`CERTIFICATE OF SERVICE
`
`IPR2015-00400
`Paper 11
`
`
`
`I hereby certify that on this 27th day of February, 2015, a copy of this Notice
`
`Clarifying Grounds of Petition, has been served in its entirety by email on the
`
`Patent Owner:
`
`
`
`Thomas F. Lebens, Reg. No. 38,221
`tom@fitcheven.com
`Fitch, Even, Tabin & Flannery LLP
`100 Cross Street, Suite 203A
`San Luis Obispo, CA 93401
`Tel.: 805-548-1800
`
`Timothy P. Maloney, Reg. No. 38,233
`tpmalo@fitcheven.com
`Fitch, Even, Tabin & Flannery LLP
`120 S. LaSalle, Suite 1600
`Chicago, IL 60603
`Tel.: 312-577-7000
`
`Robert A. Cote, Reg. No. 34,570
`rcote@mckoolsmith.com
`McKOOL SMITH, P.C.
`One Bryant Park, 47th Floor
`New York, NY 10036
`Tel.: 212-402-9400
`
`Dated:
`
`February 27, 2015
`
`
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Attorney for Petitioner Apple
`
`5

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket