UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`Apple Inc.,
`Petitioner
`
`v.
`
`OpenTV, Inc.,
`Patent Owner.
`
`Case No. ______
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,148,081 CHALLENGING CLAIMS 1-3, 23 AND 24
`UNDER 35 U.S.C. § 312, 37 C.F.R. § 42.104
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`
`TABLE OF CONTENTS
`
`
`Introduction ..................................................................................................... 1
`I.
`II. Grounds for Standing, Mandatory Notices, and Fee Authorization ............... 1
`A. Grounds for Standing and Real Party-in-Interest ................................. 1
`B.
`Related Matters ..................................................................................... 1
`C.
`Counsel and Service Information ......................................................... 3
`D.
`Fee Authorization ................................................................................. 4
`III. Summary of Challenges .................................................................................. 4
`IV. The Challenged Patent .................................................................................... 4
`A. Overview of the ’081 Patent ................................................................. 4
`B.
`Level of Ordinary Skill In The Art ...................................................... 5
`C.
`Summary of the Prosecution History of the ’081 Patent ..................... 6
`Claim Construction Of Challenged Claims .................................................... 7
`A.
`“Credential” (claims 1-3 and 23) ......................................................... 8
`VI. Specific Explanation Of Grounds For Invalidity............................................ 9
`A. Ground 1: Rohatgi ’786 anticipates claims 1-3 and 23 ........................ 9
`1.
`Summary of Rohatgi ’786 .......................................................... 9
`2.
`Claim 1 ..................................................................................... 13
`3.
`Claim 2: “storing said information if said credential is
`valid” ........................................................................................ 18
`Claim 3: “wherein said credential contains an expiration
`date and wherein said step of verifying said credential
`further comprises determining whether said expiration
`date has passed” ....................................................................... 18
`Claim 23 ................................................................................... 19
`Claim 24: “wherein said control unit comprises a
`general-purpose computer” ...................................................... 23
`Claim Charts for Claims 1-3, 23, 24 Based On Rohatgi
`’786 .......................................................................................... 24
`
`5.
`6.
`
`V.
`
`
`
`4.
`
`7.
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`B. Ground 2: Apperson ’484 and Metz ’539 render obvious claims
`1-3, 23 and 24 ..................................................................................... 27
`1.
`Summary of Apperson ’484 ..................................................... 27
`2.
`Summary of Metz ’539 ............................................................ 28
`3.
`Reasons To Combine Apperson ’484 With Metz ’539 ........... 29
`4.
`Grounds 1 and 2 Are Not Redundant ....................................... 31
`5.
`Claim 1 ..................................................................................... 33
`6.
`Claim 2: “storing said information if said credential is
`valid” ........................................................................................ 41
`Claim 3: “wherein said credential contains an expiration
`date and wherein said step of verifying said credential
`further comprises determining whether said expiration
`date has passed” ....................................................................... 43
`Claim 23 ................................................................................... 44
`Claim 24: “wherein said control unit comprises a
`general-purpose computer” ...................................................... 50
`10. Claim Charts for Claims 1-3 and 23-24 Based On
`Apperson ’484 and Metz ’539 ................................................. 51
`VII. Conclusion .................................................................................................... 56
`
`8.
`9.
`
`7.
`
`ii
`
`
`
`
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`
`LIST OF EXHIBITS
`
`
`Exhibit No. Description
`
`U.S. Patent No. 6,148,081
`
`Prosecution File History of U.S. Patent No. 6,148,081
`
`Declaration of Richard Kramer
`
`Curriculum Vitae of Richard Kramer
`
`European Patent Application No. EP 0752786 (“Rohatgi ’786”)
`
`U.S. Patent No. 5,768,539 (“Metz ’539”)
`
`U.S. Patent No. 5,978,484 (“Apperson ’484”)
`
`U.S. Patent No. 5,625,693 (“Rohatgi ’693”)
`
`The American Heritage Dictionary (3d Ed. 1994) (excerpt)
`
`OpenTV, Inc. v. Apple Inc., No. 5:15-CV-02008-EJD, Dkt. No. 72
`
`(N.D. Cal. Jan. 28, 2016).
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`
`
`iii
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.100, et seq., Apple Inc. (“Petitioner” or “Apple”)
`
`hereby petitions the United States Patent and Trademark Office (the “Office”) to
`
`institute an inter partes review of claims 1-3 and 23-24 of U.S. Patent No.
`
`6,148,081 (“the ’081 Patent”). The ’081 Patent, attached as Ex. 1001, is assigned
`
`to OpenTV, Inc. (“Patent Owner”). The ’081 Patent relates to a method and
`
`system “for restricting or controlling the access rights of interactive television
`
`applications and carousels.” Ex. 1001 at Abstract. As set forth below, claims 1-3
`
`and 23-24 of the ’081 Patent are anticipated and rendered obvious by the prior art.
`
`This petition presents two non-cumulative grounds of invalidity. These grounds
`
`are each reasonably likely to prevail, and this petition, accordingly, should be
`
`granted on all grounds.
`
`II. GROUNDS FOR STANDING, MANDATORY NOTICES, AND FEE
`AUTHORIZATION
`A. Grounds for Standing and Real Party-in-Interest
`Petitioner certifies that the real party-in-interest is Apple Inc., and that the
`
`’081 Patent is available for inter partes review and that Petitioner is not barred or
`
`estopped from requesting an inter partes review challenging the patent claims on
`
`the grounds identified in this petition.
`
`B. Related Matters
`Patent Owner has asserted the ’081 Patent against Petitioner in OpenTV,
`
`1
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`Inc., et al. v. Apple Inc., 3:15-CV-02008-EJD (N.D. Cal., filed May 5, 2015) (the
`
`“District Court Action”).
`
`On January 28, 2016, the District Court for the Northern District of
`
`California found claims 1-3 and 23-24 of the ’081 patent invalid for claiming
`
`patent ineligible subject matter under 35 U.S.C. § 101. See OpenTV, Inc. v. Apple
`
`Inc., No. 5:15-CV-02008-EJD, 2016 WL 344845, at *1 (N.D. Cal. Jan. 28, 2016)
`
`(Ex. 1010). The District Court’s decision is not a final judgment—the decision did
`
`not address all patents asserted in the District Court Action. See Fed. R. Civ. P.
`
`54(b). Patent Owner has filed a motion for certification under Rule 54(b) to permit
`
`interlocutory appeal of the § 101 decision while other claims are still pending in
`
`the District Court. The District Court has yet to rule on Patent Owner’s motion,
`
`and a hearing is not scheduled until August 18, 2016.
`
`Petitioner’s one-year statutory period for seeking inter partes review is
`
`expected to expire before the District Court’s invalidity decision becomes a final
`
`judgment and before any appeal of that decision is completed. See 35 U.S.C. §
`
`315(b). Petitioner, therefore, respectfully requests that the Board institute review
`
`based on grounds set forth in this Petition while the invalidity decision remains
`
`pending before the District Court or the Federal Circuit. This Board has previously
`
`found it proper to consider the merits of a petition after the District Court found the
`
`challenged claims to be patent ineligible under § 101. In PNC Bank N.A. v. Parus
`
`2
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`Holdings., Inc., the Board issued an institution decision based on the merits of a
`
`CBM petition while the District Court’s patent ineligibility decision was pending
`
`before the Federal Circuit. Case CBM2015-00109 and -00149, Paper 10 at *3-4
`
`(P.T.A.B. Nov. 9, 2015).
`
`C. Counsel and Service Information
`Petitioner designates the following lead counsel: Mark E. Miller (Reg. No.
`
`31,401), O’Melveny & Myers LLP, Two Embarcadero Center, 28th Floor, San
`
`Francisco, CA 94111. (Telephone: 415-984-8700; Fax: 415-984-8701; Email:
`
`markmiller@omm.com.)
`
`Petitioner designates the following backup counsel: Ryan K. Yagura (Reg.
`
`No. 47,191), Anne E. Huffsmith (Reg. No. 57,041), Brian M. Cook (Reg. No.
`
`59,356), Xin-Yi Zhou (Reg. No. 63,366), and John Kevin Murray (Reg. No.
`
`69,529), O’Melveny & Myers LLP, 400 S. Hope Street, Los Angeles, CA 90071.
`
`(Telephone: 213-430-6000; Fax: 213-430-6407; Emails: ryagura@omm.com,
`
`ahuffsmith@omm.com, bcook@omm.com, vzhou@omm.com, and
`
`kmurray2@omm.com).
`
`Service of documents may be made to Apple’s counsel at O’Melveny &
`
`Myers LLP, Two Embarcadero Center, 28th Floor, San Francisco, CA 94111, with
`
`courtesy copies to the email addresses identified above.
`
`3
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`
`Fee Authorization
`
`D.
`The Office is authorized to charge an amount in the sum of $23,000 to
`
`Deposit Account No. 50-0639 for the fee set forth in 37 CFR § 42.15(a), and any
`
`additional fees that might be due in connection with this Petition.
`
`III. SUMMARY OF CHALLENGES
`Petitioner respectfully requests that claims 1-3 and 23-24 be cancelled on the
`
`following grounds:
`
`1.
`
`European Patent Application No. EP 0752786 (“Rohatgi ’786”) anticipates
`
`claims 1-3, 23, and 24 under 35 U.S.C. § 102 (see Section VI.A);
`
`2.
`
`U.S. Patent No. 5,978,484 (“Apperson ’484”) combined with U.S. Patent
`
`No. 5,768,539 (“Metz ’539”) render obvious claims 1-3, 23, and 24 under 35
`
`U.S.C. § 103 (see Section VI.B).
`
`Grounds 1 and 2 are not redundant for reasons set forth below in Section
`
`VI.B.4.
`
`IV. THE CHALLENGED PATENT
`A. Overview of the ’081 Patent
`The ’081 patent discloses an interactive television system that uses
`
`electronic “credentials” to control the access rights and permissions of
`
`applications. See Ex. 1001 [’081 Patent] at Abstract; see also id. at 2:47-49 (“The
`
`system utilizes a credential consisting of various pieces of information to identify
`
`an application and its respective privileges, rights and restrictions.”). Each
`
`4
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`application has defined access rights, such as permission to execute certain
`
`program modules, control other applications, use system resources, or access
`
`restricted data. Id. at 2:35-40. The disclosed system assigns to each application an
`
`electronic “credential” and uses that “credential” to identify the application and its
`
`access rights. Id. at 2:47-57. For example, an interactive shopping application
`
`may attempt to access restricted data stored on a user’s set-top box (e.g., credit
`
`card payment data); the application is granted access to the restricted data only if it
`
`holds a valid “credential” indicating that it has the relevant permission for the
`
`requested data. Id. at 3:17-24. In one embodiment, the “credential” includes “a
`
`producer identification number (ID) and an application ID for the application, an
`
`expiration date, a list of rights, a producer certificate and a signature.” Id. at 2:50-
`
`53; Fig. 6(a).
`
`Level of Ordinary Skill In The Art
`
`B.
`The level of ordinary skill in the art is evidenced by the references cited in
`
`Section VI below. Specifically, one of ordinary skill in the art would be someone
`
`with a bachelor’s degree or higher in computer science, computer engineering,
`
`electrical engineering, or the equivalent, plus two or more years of experience in
`
`the field of interactive system engineering and/or software development, or an
`
`equivalent amount of relevant work and/or research experience. Ex. 1003 [Kramer
`
`Decl.] ¶ 22. A hypothetical person having ordinary skill in the art at the time of the
`
`5
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`alleged invention shall be referred to herein as a “POSITA.”
`
`Summary of the Prosecution History of the ’081 Patent
`
`C.
`The ’081 Patent issued from U.S. Patent App. No. 09/196,964 (the “’964
`
`Application”). The ’964 Application was filed on November 20, 1998 as a
`
`continuation-in-part of App. No. 09/087,386. Ex. 1001 [’081 Patent] at Cover.
`
`On July 19, 1999, the Examiner issued a non-final office action rejecting all
`
`pending claims. Ex. 1002 [’081 File History] at 67-76. The Examiner found
`
`claims 20-26 to be anticipated by U.S. Patent No. 5,920,626 (Durden), claims 1-9
`
`to be obvious over Durden combined with U.S. Patent Nos. 5,625,693 (Rohatgi
`
`’693, Ex. 1008) and 5,046,090 (Walker), and claims 10-19 to be obvious over
`
`Durden and Walker. Id.
`
`The Examiner cited Rohatgi ’693 as a secondary reference in combination
`
`with Durden, and relied only on its disclosure of a “multifunctional interactive
`
`television system.”1 See Ex. 1002 at 71. The Examiner found that “Durden fails to
`
`teach an interactive television application attempting to perform the one or more
`
`functions,” and that “[i]t would have been obvious to modify Durden’s
`
`analog/digital system to include Rohatgi’s multifunctional interactive television
`
`system.” Id. The Examiner did not cite any other disclosure of Rohatgi ’693. Id.
`
`1 European Patent Application No. EP 0752786 (“Rohatgi ’786”), relied on by
`
`Petitioner for Grounds 1 and 2 in this Petition, claims priority to Rohatgi ’693.
`
`6
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`
`at 71-73.
`
`On August 30, 1999, Patent Owner responded to the Office Action by
`
`arguing that Durden “does not disclose a receiver which is configured to accept a
`
`request from an application to perform an operation and to allow this application to
`
`perform the operation if the application has a valid credential ….” Id. at 80.
`
`According to Patent Owner, Durden “fails to teach an application credential having
`
`information identifying an interactive television application.” Id. at 81. Patent
`
`Owner did not address Rohatgi ’693. Id. at 82-86.
`
`On October 25, 1999, the Examiner withdrew the pending rejections and
`
`rejected all claims based on obviousness-type double patenting over claims 1-23 of
`
`App. No. 09/087,386. Id. at 93-94. Patent Owner submitted a terminal disclaimer
`
`on January 24, 2000. Id. at 98-99. The Examiner issued a Notice of Allowance on
`
`April 10, 2000 (id. at 101-103), and the patent issued on November 14, 2000.
`
`V. CLAIM CONSTRUCTION OF CHALLENGED CLAIMS
`In the context of an inter partes review, “[a] claim in an unexpired patent
`
`shall be given its broadest reasonable construction in light of the specification of
`
`the patent in which it appear.” 37 C.F.R. § 42.100(b). Because the ’081 Patent has
`
`not expired, Petitioner proposes constructions for certain claim terms according to
`
`7
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`their broadest reasonable interpretation in light of the specification.2
`
`For terms not specifically construed below, Petitioner interprets them in
`
`accordance with their plain and ordinary meaning consistent with the broadest
`
`reasonable interpretation standard.
`
`“Credential” (claims 1-3 and 23)
`
`A.
`In light of the ’081 Patent specification, the broadest reasonable construction
`
`of “credential” is “information that identifies an object and its privileges, rights,
`
`and restrictions.” See Ex. 1001 [’081 Patent] at 2:47-49; Ex. 1003 [Kramer Decl.]
`
`at ¶¶ 25-28.
`
`Petitioner’s proposed construction is directly supported by the specification.
`
`The ’081 Patent describes a “credential” as information that serves two purposes:
`
`(1) identify an object (e.g., an application, an application carousel, or an
`
`application module), and (2) describe the privileges, rights, and restrictions of the
`
`identified object. See, e.g., Ex. 1001 at 2:47-49 (“The system utilizes a credential
`
`consisting of various pieces of information to identify an application and its
`
`2 Because the claim construction standard in this proceeding differs from the
`
`standard applicable to a district court litigation, see In re Am. Acad. of Sci. Tech
`
`Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004), Petitioner expressly reserves the
`
`right to argue in litigation a different construction for any term recited by the
`
`claims of the ’081 Patent.
`
`8
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`respective privileges, rights and restrictions.”); 4:47-49 (“The credentials are sets
`
`of data which can be used to identify and verify the privileges and limitations of
`
`particular modules.”); 8:62-65 (“A credential is a collection of information which
`
`typically identifies the carousel and can be taken as proof of the module’s
`
`authorization to perform the restricted operation.”).
`
`Petitioner’s proposed construction is consistent with the plain and ordinary
`
`meaning of the claim term. The American Heritage Dictionary defines
`
`“credential” as: “(1) Something that entitles one to confidence or authority. (2)
`
`Credentials. Evidence concerning one’s authority.” Ex. 1009 at 203. Much like a
`
`credential given to a diplomat, the electronic “credential” described by the ’081
`
`Patent identifies its holder and provides information relating to the holder’s
`
`authorities to perform certain functions. See Ex. 1003 [Kramer Decl.] at ¶ 28.
`
`VI. SPECIFIC EXPLANATION OF GROUNDS FOR INVALIDITY
`A. Ground 1: Rohatgi ’786 anticipates claims 1-3 and 23
`Summary of Rohatgi ’786
`1.
`Rohatgi ’786, titled “Apparatus and method for authenticating transmitted
`
`applications in an interactive information system,” was published by the European
`
`Patent Office on January 8, 1997. Ex. 1005 [Rohatgi ’786] at cover. Because
`
`Rohatgi ’786 was published more than a year before the earliest priority date of the
`
`’081 Patent, it qualifies as prior art to the ’081 Patent under at least 35 U.S.C. §
`
`102(b).
`
`9
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`Rohatgi ’786 discloses an interactive television system that executes
`
`interactive television applications. Ex. 1005 at Abstract. Each application
`
`comprises multiple program “modules,” including “Code Modules” containing
`
`executable code, “Data Modules” containing non-executable data, and a “Directory
`
`Module” containing “information to interrelate respective transmission units and
`
`modules as an application.” Id. at 3:49-54; Fig. 4. In addition, the “Directory
`
`Module” of an interactive application includes data that can authenticate the
`
`application and specify its privileges, rights, and restrictions. See Id. at Abstract;
`
`5:39-40; Fig. 12. Before a television receiver executes an application, a
`
`“certificate” within the “Directory Module” of the application is “decoded and
`
`checked for authenticity.” Id. The “Directory Module” of the application also
`
`includes “authorization flags which grant/deny the receiver processors access to
`
`privileged actions.” Id. at 5:39-40; Fig. 12.
`
`Figure 12, reproduced below, illustrates the contents of a “Directory
`
`Module” as disclosed by Rohatgi ’786. It includes information identifying the
`
`application (e.g., “Application ID”), the producer of the application (e.g.,
`
`“Producer ID”), and the execution permissions and privileges of the application
`
`(e.g., “Application Authorization Mask”). Id. at Fig. 12; 5:56-57.
`
`10
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`
`FIGURE 12 OF ROHATGI ’786 (EX. 1005)
`Rohatgi ’786 was not cited during prosecution of the ’081 Patent. To the
`
`
`
`extent Patent Owner argues this Petition should be denied because Rohatgi ’693
`
`(Ex. 1008)—a U.S. patent related to Rohatgi ’786—was cited during prosecution,
`
`that argument should be rejected because the Board is “not required by statute to
`
`11
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`reject a petition based upon the fact that certain arguments or art were previously
`
`considered by the Office.” Micron Tech., Inc. v. The Bd. of Tr. of the Univ. of Ill.,
`
`IPR2013-00008, Paper 24 at *6-7 (P.T.A.B. Marc. 13, 2013); Int’l Bus. Machines
`
`Corp. v. Intellectual Ventures I LLC, IPR2015-00303, Paper 8 at *15 (P.T.A.B.
`
`June 2, 2015). The Board has consistently instituted reviews based on prior art
`
`considered during prosecution when the “record [of the petition] differs from the
`
`one before the Examiner.” Micron Tech., IPR2013-00008, Paper 24 at *7 (IPR
`
`record is different because of new expert testimony); see also, Chi Mei Innolux
`
`Corp. v. Semiconductor Energy Lab. Co., Ltd., IPR2013-00028, Paper 14 at *10
`
`(P.T.A.B. Mar. 21, 2013) (same); Macauto U.S.A. v. BOS GMBH & KG, IPR2012-
`
`00004, Paper 18 at *17-19 (P.T.A.B. Jan. 24, 2013) (IPR record is different
`
`because of new combinations and new application of prior art). The record of this
`
`Petition differs from that of the original prosecution—Petitioner is relying on a
`
`reference not cited by the Office, portions of disclosure not considered by the
`
`Office, expert testimony not available to the Office, and grounds of invalidity not
`
`addressed during prosecution. Thus, the Examiner’s citation of Rohatgi ’693—as a
`
`combination reference for its disclosure of a “multifunctional interactive television
`
`system” (see Ex. 1002 at 71)—does not serve as a valid reason for denying
`
`proposed grounds of invalidity based on Rohatgi ’786.
`
`For reasons set forth below, Rohatgi ’786 discloses each and every
`
`12
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`limitation recited by claims 1-3, 23, and 24 of the ’081 Patent.
`
`2.
`
`Claim 1
`
`a.
`
`Preamble: “A method for controlling functions of
`interactive television applications in an interactive
`television system, the method comprising:”
`
`To the extent limiting, Rohatgi ’786 discloses the preamble of claim 1. See
`
`Ex. 1003 [Kramer Decl.] at ¶ 46.
`
`Rohatgi ’786 discloses a method for controlling an “executable interactive
`
`program” in an “interactive television system” by preventing the program from
`
`operating with unauthorized data. Ex. 1005 [Rohatgi ’786] at Abstract (“An
`
`executable interactive program is combined with audio/video data for
`
`transmission.”); 2:3-4 (“This invention relates to a method and apparatus for
`
`insuring that data accepted by an interactive television system is authorized data.”).
`
`Specifically, Rohatgi ’786 discloses using “authorization flags” within the
`
`certificate of a “Directory Module” of the application to “grant/deny the receiver
`
`processors access to privileged actions.” Id. at 5:30-55; Fig. 12. These
`
`“authorization flags” control the functions of the interactive television application
`
`because “[a]n application must have the authorization flags set … before it is
`
`permitted to perform the privileged action.” Id. at 5:57-58. Examples of functions
`
`controlled by the “authorization flags” include “the ability to establish a remote
`
`connection” and “the ability to control external devices.” Id. at 5:50-51.
`
`13
`
`

`
`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`Accordingly, Rohatgi ’786 discloses method for controlling functions of
`
`interactive television applications in an interactive television system.
`
`b.
`
`Element [1A]: “loading in said interactive television
`system an interactive television application having a
`credential associated therewith, said credential including
`information identifying one or more functions”
`
`Rohatgi ’786 discloses loading an interactive television application in an
`
`interactive television system. See Ex. 1005 [Rohatgi ’786] at 10:32-33 (“The
`
`audio, video and data packets are loaded into respective predetermined memory
`
`locations to enable the signal processors easy access to the component data.”).
`
`When an “application program is completely stored in memory,” the application is
`
`“checked for transmission integrity” and then “executed.” Id. at 11:52-59; Fig. 10.
`
`Rohatgi ’786 discloses that each loaded interactive television application has
`
`a credential associated therewith—in the form of identification and permission data
`
`contained within a “Data Module.” Rohatgi ’786 discloses that each application is
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`composed of multiple program “modules,” including “Code Modules” containing
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`executable code, “Data Modules” containing non-executable data, and a “Directory
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`Module” containing “information to interrelate respective transmission units and
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`modules as an application.” Ex. 1005 at 3:49-54; Fig. 4. A “signed certificate …
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`is appended to the Directory Module” of each application. Id. at 6:54-57. When
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`an application is received by the television receiver, the certificate included in the
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`“Directory Module” is “decoded and checked for authenticity of provider” and the
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`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
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`application is executed only if the certificate is verified to be authentic. Id. at
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`Abstract.
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`Each “Directory Module” includes, among other fields, identification
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`information for the application (e.g. “Application ID” and “Application Name”).
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`Id. at Fig. 12. The “Directory Module” also includes “authorization flags which
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`grant/deny the receiver processors access to privileged actions.” Id. at 5:30-40. For
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`example, these “authorization flags” may control whether the application has “the
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`ability to establish a remote connection” or “the ability to control external
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`devices.” Id. at 50-51. These “authorization flags” are stored in the “provider
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`certificate” and “application authorization field”—both of which are within the
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`“Directory Module.” See id. at 56-57; Fig. 12. “An application must have the
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`authorization flags set at both locations before it is permitted to perform the
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`privileged action.” Id. at 57-58. The “authorization flags” disclosed by Rohatgi
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`’786 identify one or more functions of an interactive television application.
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`Therefore, the “Directory Module” of each application includes data
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`constituting a “credential”—i.e., information that identifies an application and its
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`privileges, rights, and restrictions. See Ex. 1003 [Kramer Decl.] at ¶¶ 49-50. Thus,
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`Rohatgi ’786 discloses loading in an interactive television system an interactive
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`television application having a credential associated therewith, said credential
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`including information identifying one or more functions. See id. at ¶¶ 47-50.
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`Element [1B]: “verifying said credential”
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`c.
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`Rohatgi ’786 discloses verifying the credential within the “Directory
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`Module” by “decod[ing] and check[ing] [its certificate] for authenticity of
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`provider”; the user’s receiver executes an application only after completion of this
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`verification process. Ex. 1005 [Rohatgi ’786] at Abstract; see also, id. at 11:19-22.
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`Rohatgi ’786 also discloses using “hash values” to verify the integrity of modules,
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`including the “Directory Module.”3 Id. at Abstract, 6:54-57. “If the hash values
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`are identical and the certificate is authentic, the system is conditioned to execute
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`the transmitted program.” Id. at 2:26-27.
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`At execution time, Rohatgi ’786 verifies the “authorization flags” of an
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`application before permitting the program to perform certain privileged actions.
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`See id. at 57-58 (“An application must have the authorization flags set at both
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`locations before it is permitted to perform the privileged action.”).
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`Thus, Rohatgi ’786 discloses verifying the credential of an application. See
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`Ex. 1003 [Kramer Decl.] at ¶¶ 51-53.
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`3 A “hash value” is a fixed-length numerical value that uniquely identifies a blocks
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`of data. Ex. 1003 [Kramer Decl.] at ¶ 52.
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`d.
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`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
`Petition for Inter Partes Review
`Element [1C]: “ when said interactive television
`application attempts to perform said one or more
`functions, allowing said interactive television application
`to perform said one or more functions if said information
`indicates permission to perform said one or more
`functions”
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`Rohatgi ’786 discloses “authorization flags” in the “Directory Module” of
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`each application that specify whether that application is permitted to perform one
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`or more functions. Ex. 1005 [Rohatgi ’786] at 5:30-58; Fig. 12. “An application
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`must have the authorization flags set … before it is permitted to perform the
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`privileged action.” Id. at 5:57-58. Each television receiver contains an
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`“authorization mask” stored in nonvolatile memory that “is programmed to permit
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`access to particular privileged, or to prevent certain privileged actions” based on
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`the “authorization flags” in an application’s “Directory Module.” Id. at 5:58-6:1.
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`For example, the “authorization flags” of an interactive application may
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`specify whether the application is permitted to “establish a remote connection” or
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`“control external devices”; that interactive application would not be permitted to
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`perform these functions if the corresponding authorization flags are disabled. See
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`id. at 5:50-51. Thus, Rohatgi ’786 discloses that, when an interactive television
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`application attempts to perform one or more functions (e.g., establish a remote
`
`connection or control an external device), allowing said application to perform said
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`functions only if information in its credential (i.e., “authorization flags” in the
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`“Directory Module”) indicates permission to do so. See Ex. 1003 [Kramer Decl.]
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`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
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`
`at ¶¶ 55-57.
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`3.
`
`Claim 2: “storing said information if said credential is
`valid”
`Rohatgi ’786 discloses a receiver that stores received data in memory. See
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`Ex. 1005 [Rohatgi ’786] at Figs. 8-9; 12:20 (“storing detected modules in
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`memory”). Modules that cannot be verified are rejected and deleted. See id. at
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`12:41-42 (“The apparatus … includes means to delete from said memory, modules
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`for which corresponding hash values are not identical.”). In other words, if a
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`received “Directory Module” is verified to be valid, the “authorization flags”
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`contained therein would be stored in memory; otherwise, the entire module would
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`be deleted. Ex. 1003 [Kramer Decl.] ¶ at 61.
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`Thus, Rohatgi ’786 discloses storing “said information” recited by claim 1
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`(i.e. “information identifying one or more function”) if the credential is verified to
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`be valid. See id. at ¶¶ 59-62.
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`4.
`
`Claim 3: “wherein said credential contains an expiration
`date and wherein said step of verifying said credential
`further comprises determining whether said expiration date
`has passed”
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`Rohatgi ’786 discloses a “Directory Module” that includes a “certificate.”
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`Ex. 1005 [Rohatgi ’786] at Fig. 12. The “certificate” includes a field specifying
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`“the expiration date of the certificate.” Id. at 5:25-27. During the certificate
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`verification process, the “expiration time and date … is compared against the
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`U.S. Patent No. 6,148,081 (claims 1-9, 23-26)
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`current time and date.” Id. at 11:30-36; Fig. 12. The application identified by the
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`“Directory Module” is not executed “if … the certificate has expired.” Id.
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`As explained above for Claim 1, the