Trials@uspto.gov
`571.272.7822
`
`
`
`Paper No. 10
`
` Filed: March 8, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-02041
`Patent 8,239,852 B2
`____________
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–8 and 16–18 (“challenged claims”) of U.S. Patent
`No. 8,239,852 B2 (Ex. 1001, “’852 patent”). Paper 2 (“Pet.”). Uniloc
`Luxembourg S.A. (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”).
`
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`IPR2017-02041
`Patent 8,239,852 B2
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`instituted unless “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” For the reasons given below, we determine that the information
`presented in the Petition and the Preliminary Response does not show that
`there is a reasonable likelihood of Petitioner prevailing as to any of the
`challenged claims of the ’852 patent, and we deny institution of inter partes
`review.
`
`I. BACKGROUND
`A. RELATED MATTERS
`The parties represent that Patent Owner has asserted the ’852 patent
`against Petitioner in an ongoing action before the U.S. District Court for the
`Eastern District of Texas, Uniloc USA, Inc. v. Apple Inc., No. 2:17-cv-
`00258. Pet. 2; Paper 5, 2. In addition, before the Office, the ’852 patent is
`the subject of IPR2017-02202, which was filed by Petitioner and in which
`the Board has not yet issued an institution decision. Apple Inc. v. Uniloc
`Luxembourg S.A., Case IPR2017-02202 (PTAB), Paper 1.
`B. THE ’852 PATENT
`The ’852 patent is directed to a system, method, and apparatus for
`remotely updating a program configuration of a client device. Ex. 1001,
`[57], 1:26–28, 2:55–58. The client device generates unique identifiers for
`the device, such as a device identifier and a software identifier, and sends the
`identifiers to an update server. Id. at [57], 3:4–15, 6:58–63, 9:16–27, 9:55–
`57. The update server analyzes the identifiers to determine an updated
`program configuration for the client device and delivers the updated
`program configuration to the device. Id. at [57], 4:35–39.
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`Patent 8,239,852 B2
`In disclosed embodiments, client device 100 features software “that
`requires a license to be authorized for use,” as well as a computer program
`for performing a remote update. Id. at 2:58–60, 3:4–7, 6:3–5. Client
`device 100 performs “[p]hysical device recognition” to determine “machine
`parameters” that are “expected to be unique to” the device. Id. at [57], 3:7–
`10, 5:36–41, Fig. 2; see id. at 7:1–32. The machine parameters may include,
`for example, “user account information, program information (e.g., serial
`number),” “and features of the software/hardware the user is entitled to use.”
`Id. at 5:36–41, 5:51–55. “An application . . . running on the client
`device 100” uses the machine parameters to “generate a device identifier.”
`Id. at 6:58–67; see id. at 3:10–13. In addition, the application on client
`device 100 “collects [a] software identifier” for software on the device by
`“collect[ing] or receiv[ing] information” that “is expected to be unique to
`software, for example,” “the software serial number, product identification
`number, [or] product key.” Id. at 9:16–27, 9:34–35.
`The application on client device 100 sends the unique identifiers to
`update server 120. Id. at 3:12–15, 9:55–57. Update server 120 analyzes the
`identifiers to determine an updated program configuration for client
`device 100. Id. at [57], 4:35–38, Fig. 4. Update server 120 then delivers the
`updated program configuration to client device 100. Id. at [57], 4:38–39.
`C. ILLUSTRATIVE CLAIM
`Challenged claims 1 and 18 are the only independent claims of the
`’852 patent. Ex. 1001, 12:2–40, 14:1–27. Claim 18, reproduced below, is
`illustrative of the recited subject matter:
`18. A client device configured to execute a computer program to
`perform a remote update of a program configuration on the client
`device, the client device comprising:
`a processor;
`
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`a memory coupled to the processor and storing the computer
`program which, when executed by the processor,
`(i) performs physical device recognition on the client device to
`determine machine
`parameters
`including
`account
`information for a user of the client device and features of
`software that the user of the client device is entitled to use,
`(ii) generates a unique device identifier for the client device, the
`unique device identifier is generated based at least in part on
`the determined machine parameters, and
`(iii) collects a unique software identifier for the software on the
`client device, the unique software identifier being unique to
`a particular copy of the software and to a particular user of
`the software; and
`a transceiver configured to
`(i) send the unique device identifier and the unique software
`identifier to an update server via the Internet to determine,
`based on analyzing the unique device identifier and the
`unique
`software
`identifier,
`an
`updated
`program
`configuration, and
`(ii) receive, from the update server, the updated program
`configuration if the user associated with the unique device
`identifier is entitled to use features of the updated program
`configuration according to a license associated with the
`unique software identifier.
`Id. at 14:1–27 (line breaks added for readability).
`D. EVIDENCE OF RECORD
`The Petition relies upon the following asserted prior art references:
`U.S. Patent No. 6,134,659 (issued Oct. 17, 2000) (Ex. 1007, “Sprong”);
`U.S. Patent Application Publication No. 2002/0004785 A1 (published
`Jan. 10, 2002) (Ex. 1006, “Schull”);
`U.S. Patent Application Publication No. 2004/0059938 A1 (published
`Mar. 25, 2004) (Ex. 1010, “Hughes”);
`U.S. Patent Application Publication No. 2007/0113090 A1 (published
`May 17, 2007) (Ex. 1008, “Villela”);
`U.S. Patent Application Publication No. 2008/0120195 A1 (published
`May 22, 2008) (Ex. 1009, “Shakkarwar”);
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`PCT International Publication No. WO 2007/001394 A2 (published
`Jan. 4, 2007) (Ex. 1005, “Eisen”); and
`PCT International Publication No. WO 2007/107905 A2 (published
`Sept. 27, 2007) (Ex. 1004, “Michiels”).
`In addition, Petitioner supports its contentions with the Declaration of
`Mr. James Geier (Ex. 1003, “Geier Declaration”).
`E. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability. Pet. 3.
`Challenged Claim(s) Basis
`References
`1, 5, 6, 18
`§ 103 Michiels and Eisen
`2–4
`§ 103 Michiels, Eisen, and Villela
`7, 8, 16
`§ 103 Michiels, Eisen, and Shakkarwar
`17
`§ 103 Michiels, Eisen, and Hughes
`1, 18
`§ 103 Schull and Sprong
`2–4
`§ 103 Schull, Sprong, and Villela
`5, 6
`§ 103 Schull, Sprong, and Eisen
`7, 8, 16
`§ 103 Schull, Sprong, and Shakkarwar
`17
`§ 103 Schull, Sprong, and Hughes
`II. ANALYSIS
`A. CLAIM CONSTRUCTION
`The Board interprets claim terms of an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent.”
`37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2144–46 (2016). We presume a claim term carries its “ordinary and
`customary meaning,” which is the meaning “the term would have to a person
`of ordinary skill in the art” at the time of the invention. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citation omitted).
`Neither Petitioner nor Patent Owner proffers a construction for any
`claim term. Pet. 7; Prelim. Resp. 16. Based on our review of the record and
`the dispositive issues in our determination of whether to institute inter partes
`
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`review, we determine that no claim terms require an express construction to
`resolve the issues presented by the patentability challenges. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (holding that only terms “that are in controversy” must be
`construed and “only to the extent necessary to resolve the controversy”).
`B. ASSERTED GROUND RELYING ONLY ON MICHIELS AND EISEN
`Petitioner argues that Michiels and Eisen render obvious claims 1, 5,
`6, and 18 of the ’852 patent. Pet. 7–30. Patent Owner disputes Petitioner’s
`obviousness assertions. Prelim. Resp. 18–22.
`1. Overview of Michiels
`Michiels discloses methods to protect a computer program running on
`a computer apparatus from piracy by providing a plurality of blockades that
`activate at different times or when different conditions are satisfied.
`Ex. 1004, [57], 2:13–33, 4:21–28, 6:30–7:6, 14:5–11. The blockades change
`the functionality of the program—causing the program to terminate, to
`operate incorrectly, or to operate with reduced functionality. Id. at [57],
`2:23–3:2, 4:25–26, 7:7–8, 12:16–18, 14:9–11. To deactivate a blockade, “at
`least one program update” must be executed. Id. at [57], 2:29–30, 14:11–12.
`Figure 1 of Michiels, reproduced below, depicts a system
`implementing an embodiment of the disclosed methods. Id. at 5:25–34.
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`The system of Figure 1 features computer apparatus 10,1 which includes
`processor 12 and memory/storage 14 storing program 16 with code for
`application 18, a number of blockades, Product ID 23, and Terminal ID 24.
`Ex. 1004, 6:1–20, 11:17, 12:23. Computer apparatus 10 communicates with
`registration server 40 via network 30, such as the Internet. Id. at 6:4–5.
`In one disclosed embodiment, computer apparatus 10 initiates a
`request for a program update. Id. at 11:16–12:20, Fig. 4. In step 101, a user
`installs a copy of program 16 on computer apparatus 10 and “registers the
`copy of the program with registration server 40.” Id. at 11:16–19. During
`registration, computer apparatus 10 sends Product ID 23, “which uniquely
`identifies that copy of the [software] product,” and may send
`Terminal ID 24, which uniquely identifies “hardware 10 on which the
`program 16 is installed,” to registration server 40. Id. at 11:19–28. Next, in
`step 102, “registration server 40 registers the copy of the program and stores
`the identification data.” Id. at 11:28–29. In particular, server 40 stores the
`Product ID and Terminal ID in store 43. See id. at 11:22–29, 12:8, Fig. 1.
`During step 103, computer apparatus 10 uses program 16 while
`monitoring criteria that determine when blockades will be activated. Id.
`at 11:29–31. At step 104, computer apparatus 10 checks if the activation
`criteria for any blockade have been met or if a window to install an update
`before a blockade activates is open. Id. at 8:13–24, 11:31–33. If either of
`these conditions is met, program 16 “gathers the local data” to be sent in an
`update request, which “can include the Product ID and Terminal ID,” and
`
`
`1 Michiels refers to element 10 interchangeably as a “terminal” or “computer
`apparatus.” E.g., Ex. 1004, 6:1–2, 8:24–28, 11:17–19, Figs. 4–5. Petitioner
`likewise uses both terms. E.g., Pet. 11–19, 22, 24. For clarity, we refer to
`element 10 as “computer apparatus 10” throughout this Decision.
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`sends the data to registration server 40 in step 105. Id. at 12:2–6; see id.
`at 4:31–33. At step 106, registration server 40 examines the data in the
`request as well as the Product ID and Terminal ID “locally stored” in its
`store 43. Id. at 11:22–23, 12:6–8, Fig. 1. Based on this examination,
`registration server 40 decides “whether the computer apparatus 10 is
`authori[z]ed to receive the update” in step 107. Id. at 12:7–9; see id. at 5:1–
`2, 8:24–27. If “computer apparatus 10 is authori[z]ed to continue using the
`program,” registration server 40 retrieves the appropriate update and sends it
`to computer apparatus 10 in step 108. Id. at 12:9–12; see id. at 5:3–4, 8:27–
`29. Finally, in step 109, computer apparatus 10 receives, installs, and
`executes the update, thereby deactivating the blockade. Id. at 12:13–14.
`In addition, Michiels discloses an alternative embodiment in which
`registration server 40 “initiates the process of sending program updates.” Id.
`at 12:20–21, Fig. 5. This embodiment is substantially similar to that in
`which computer apparatus 10 initiates update requests, except that—instead
`of computer apparatus 10 monitoring blockades and sending update
`requests—registration server 40 schedules times to send program updates
`before activation of blockades, monitors the schedule, and sends
`authorization requests to computer apparatus 10 “request[ing] information
`that the server can use to identify that the computer program is a legitimate
`copy.” Id. at 12:25–13:3; see id. at 12:21–24, 13:4–12, Figs. 4–5.
`2. Overview of Eisen
`Eisen describes a method and system for detecting fraudulent Internet
`transactions by creating a unique customer computer identifier based on
`various parameters. Ex. 1005 ¶¶ 2, 9–10, 37–38. After a fraudulent
`transaction occurs, subsequent transactions involving the same customer
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`computer identifier can be subject to fraud prevention techniques, including
`cancellation, further verification, or legal action. Id. ¶¶ 9, 39–40.
`In one preferred embodiment, customer computer identifier 31 is
`constructed by “combin[ing] or aggregat[ing]” customer personal
`information 32 and customer non-personal information 34, including
`browser ID 36 and delta of time parameter 38. Id. ¶ 38, Fig. 5; see id. ¶¶ 7,
`25–26, 37, Fig. 4. The customer personal information may include “user or
`personal name, address, billing information, shipping information, telephone
`number(s), [and] e-mail address(es).” Id. ¶ 41, Fig. 7; see id. ¶¶ 24–25, 37.
`3. Independent Claims 1 and 18
`a. “unique software identifier”
`Independent claims 1 and 18 recite a “unique software identifier.”
`Specifically, the claims require a “client device comprising[] a processor
`[/first processor]” coupled to a memory “storing the computer program
`which, when executed by the processor[/first processor], . . . collects a
`unique software identifier for the software on the client device, the unique
`software identifier being unique to a particular copy of the software and to a
`particular user of the software.” Ex. 1001, 12:4–21, 14:3–17. The claims
`further require a “transceiver[/first transceiver] configured to” “send . . . the
`unique software identifier” to the “update server.” Id. at 12:22–24, 14:18–
`20. Thus, the “unique software identifier” has two uniqueness requirements:
`(1) “unique to a particular copy of the software” and (2) “unique . . . to a
`particular user of the software.” Id. at 12:17–21, 14:14–17.
`Petitioner alleges that Michiels, particularly its Product ID,
`“discloses” the “unique software identifier.” Pet. 21–25 (“unique software
`identifier (‘[P]roduct ID’)”). We agree with Petitioner that the Product ID
`satisfies the first uniqueness requirement of uniqueness “to a particular copy
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`of the software,” given Michiels’s disclosure that the Product ID “uniquely
`identifies that copy of the [software] product.” Ex. 1004, 11:19–21; Pet. 21
`(quoting Ex. 1004, 11:19–21). With respect to the second uniqueness
`requirement of uniqueness “to a particular user of the software,” however,
`Petitioner’s showing is insufficient, for the reasons we explain below.
`With supporting testimony from Mr. Geier, Petitioner argues that
`“[d]uring software installation, the user registers the copy of the program,
`and the unique ‘[P]roduct ID’ of the program ‘is sent to registration
`server 40.’” Pet. 21 (citing Ex. 1004, 11:21–23, Fig. 1); Ex. 1003 ¶ 66
`(same). Petitioner contends that “[t]his ‘[P]roduct ID’ is stored in . . .
`store 43[] of the ‘registration server 40’ such that the identified copy is
`registered to information identifying the user device and a user thereof (e.g.,
`‘[T]erminal ID’).” Pet. 21 (citing Ex. 1004, 11:23–29); Ex. 1003 ¶ 66
`(same). Petitioner—referring to its analysis of the recited “unique device
`identifier,” which Petitioner identifies as Michiels’s Terminal ID—further
`alleges that “it would have been obvious” for Michiels’s Terminal ID to
`include user account information. Pet. 21 n.4; see id. at 15–20, 23, 25;
`Ex. 1003 ¶ 66. “Thus,” according to Petitioner, “upon registration,
`[Michiels’s ‘P]roduct ID’ is uniquely linked to a particular copy of the
`software and to a particular user of the software.” Pet. 21; Ex. 1003 ¶ 66.
`Petitioner further asserts that when requesting a program update after
`registration, Michiels’s client device “collects and sends the ‘Product ID’
`and ‘Terminal ID’” to the server. Pet. 22 (citing Ex. 1004, 12:2–12, 13:1–4,
`Fig. 4 (step 105), Fig. 5 (step 206)); Ex. 1003 ¶ 67; see Pet. 23 (citing
`Ex. 1004, 12:2–6, 13:1–4, 13:18–22, Fig. 4 (step 105), Fig. 5 (step 206)).
`This proffered analysis fails to demonstrate adequately that Michiels’s
`Product ID satisfies the “unique software identifier” limitation, particularly
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`the requirement that the identifier be “unique . . . to a particular user of the
`software,” for two reasons. We address each in turn.
`First, Petitioner fails to show sufficiently that Michiels’s Product ID is
`itself “unique . . . to a particular user of the software,” as claims 1 and 18
`require of the “unique software identifier.” Claims 1 and 18 each separately
`recites two identifiers as distinct claim elements with different requirements:
`(1) the “unique software identifier,” which must be “unique . . . to a
`particular user of the software,” and (2) the “unique device identifier,” which
`must be “generated based at least in part on the determined machine
`parameters,” “including account information for a user of the client device.”
`Ex. 1001, 12:10–21, 14:7–17. Petitioner identifies Michiels’s Terminal ID
`as the “unique device identifier.” Pet. 18–20, 23, 25 (“unique device
`identifier (‘[T]erminal ID’)”). Petitioner further argues that it would have
`been obvious to use user account information—and particularly, Eisen’s
`personal information—to generate Michiels’s Terminal ID, thereby
`allegedly meeting the requirement that the “unique device identifier” be
`based on “account information for a user.” Id. at 11–13, 15–20, 21 n.4.
`Petitioner proceeds to rely on the user account information that it
`argues would have been obvious to include in Michiels’s Terminal ID
`(“unique device identifier”) in asserting that Michiels’s Product ID satisfies
`the “unique software identifier” claim element. Id. at 21 & n.4; Ex. 1003
`¶ 66. Specifically, in its analysis of the “unique software identifier,”
`Petitioner alleges that—in light of its arguments proposing “to include user
`account information as part of the ‘[T]erminal ID’”—“the identified copy”
`of Michiels’s program “is registered to information identifying the user
`device and a user thereof (e.g., ‘[T]erminal ID’)” and, “[t]hus, upon
`registration, the ‘[P]roduct ID’ is uniquely linked . . . to a particular user of
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`the software.” Pet. 21 (emphases added); Ex. 1003 ¶ 66 (emphases added).
`Indeed, throughout Petitioner’s analysis of the “unique software identifier”
`limitation, the only information that Petitioner alleges to be unique to a user
`is the user account information in Michiels’s Terminal ID (“unique device
`identifier”). See Pet. 21–22; Ex. 1003 ¶¶ 66–67.
`Petitioner’s reliance on the user account information allegedly within
`Michiels’s Terminal ID—which Petitioner identifies and relies upon as the
`“unique device identifier”—to allege that Michiels’s Product ID satisfies the
`distinct “unique software identifier” claim element is improper. See Unique
`Concepts, Inc. v. Brown, 939 F.2d 1558, 1561–64 (Fed. Cir. 1991) (holding
`that a claim’s “separate[]” “recitation of two distinct elements” should be
`given “full effect”). In particular, Petitioner fails to allege or show
`sufficiently how and why Michiels’s Product ID itself is “unique . . . to a
`particular user of the software”—as required to meet the “unique software
`identifier” of claims 1 and 18. Ex. 1001, 12:17–21, 14:14–17.
`Second, Petitioner fails to show that Michiels’s computer apparatus 10
`(“client device”) “collects” and is “configured to send” to registration
`server 40 (“update server”) a “unique software identifier”—i.e., the
`Product ID—that is “unique . . . to a particular user of the software,” as
`claims 1 and 18 require. Id. at 12:4–24, 14:1–20. As reflected above in our
`overview of Michiels and in Petitioner’s analysis of the “unique software
`identifier” limitation, Michiels’s computer apparatus 10 gathers and sends
`the Product ID to registration server 40 on two sets of occasions: (1) during
`registration of the computer program with registration server 40 (step 101 of
`Figure 4, step 201 of Figure 5); and (2) when sending an update request to
`registration server 40 (step 105 of Figure 4) or responding to an
`authorization request from server 40 (step 206 of Figure 5). Ex. 1004,
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`11:18–23, 12:2–6, 12:19–25, 13:3–4, Fig. 4 (steps 101, 105), Fig. 5
`(steps 201, 206); see Pet. 21–22. Yet Petitioner fails to demonstrate
`sufficiently that the Product ID collected and sent by computer apparatus 10
`on either of these occasions is unique to a particular software user.
`Rather, Petitioner’s arguments focus and rely on actions of
`registration server 40 in registering and storing the Product ID in its store 43.
`See Pet. 21–22; Ex. 1003 ¶¶ 66–67. In particular, Petitioner alleges that the
`Product ID sent by computer apparatus 10 “is stored as an item 44 in
`store 43 . . . of the ‘registration server 40’ such that the identified copy is
`registered to information identifying the user device and a user thereof (e.g.,
`‘[T]erminal ID’)” and, “[t]hus, upon registration, the ‘[P]roduct ID’ is
`uniquely linked to a particular copy [and user] of the software.” Pet. 21
`(emphases added); Ex. 1003 ¶ 66 (emphases added). Michiels does disclose
`that during registration, client apparatus 10 “registers the copy of the
`program with registration server 40” by sending Product ID 23 to server 40,
`which stores it “as an item 44 in store 43” of server 40. Ex. 1004, 11:18–29,
`12:7–9 (referring to “locally stored data 44” on server 40), Fig. 1 (depicting
`Product ID as item 44 in store 43 of registration server 40), Fig. 4
`(steps 101–102), Fig. 5 (steps 201–202). Yet Petitioner does not allege or
`show sufficiently that these actions of registration server 40, or the version
`of the Product ID stored on server 40, impacts the Product ID that computer
`apparatus 10 stores and sends to server 40 after registration (whether in an
`update request or authorization request response)—which, for example,
`could occur if server 40 were to send its version of the Product ID in
`store 43 to computer apparatus 10. Based on our review of the Petition and
`the cited disclosures of Michiels, we see nothing to support any such actions
`by server 40. In addition, Petitioner does not assert that such actions do or
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`would occur. Accordingly, Petitioner fails to show that the actions of
`server 40 during registration—on which Petitioner’s arguments rest—allow
`computer apparatus 10 to satisfy the claim language requiring that the
`“client device” “collect[]” and be “configured to send . . . to the update
`server” a “unique software identifier” that is “unique . . . to a particular user
`of the software.” Ex. 1001, 12:4–24, 14:1–20 (emphasis added); see Pet. 4
`(citing Ex. 1001, 9:16–26) (explaining that the ’852 patent specification
`discloses that “[t]he client device . . . generates a ‘software identifier’”).
`Thus, Petitioner does not show sufficiently that Michiels and Eisen
`render obvious the “unique software identifier” recited in claims 1 and 18.
`b. determine / receive “an updated program configuration if the user
`associated with the unique device identifier is entitled to use
`features of the updated program configuration”
`Independent claim 1 recites an “update server” configured to
`
`“determine . . . an updated program configuration if the user associated with
`the unique device identifier is entitled to use features of the updated program
`configuration according to a license associated with the unique software
`identifier.” Ex. 1001, 12:25–37 (emphasis added). Similarly, independent
`claim 18 requires that the claimed “client device” be configured to “receive,
`from the update server, the updated program configuration if” the same
`condition recited in claim 1 is satisfied. Id. at 14:1–3, 14:18–27. Thus,
`these limitations are directed to whether “the user associated with the unique
`device identifier”—in particular—is entitled to use updated program
`configuration features. Id. at 12:32–37, 14:24–27 (emphasis added).
`
`Petitioner asserts that “Michiels discloses” these limitations. Pet. 25,
`28; Ex. 1003 ¶¶ 81, 94. As support, Petitioner represents, and Mr. Geier
`opines, that Michiels’s registration server 40 compares the Product ID
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`(alleged “unique software identifier”) and Terminal ID (alleged “unique
`device identifier”) received in an update request “to the stored identifiers to
`ensure that the user associated with the unique device identifier is entitled to
`use features of the updated program configuration according to a license
`associated with the unique software identifier.” Pet. 25 (emphasis added)
`(citing Ex. 1004, 11:21–28, 12:5–9, 13:3–9, Fig. 1); Ex. 1003 ¶ 79 (same).
`Petitioner and Mr. Geier allege that server 40 “transmits a program update”
`only “if the user associated with the unique device identifier . . . is entitled to
`use” the updated program configuration features. Pet. 25 (emphasis added)
`(citing Ex. 1004, 12:7–18, 13:6–12, Fig. 4 (step 107), Fig. 5 (step 205);
`§ VII.A.4.g of the Petition); Ex. 1003 ¶¶ 78–79 (emphasis added) (citing
`Ex. 1004, 12:7–18, 13:6–12, Fig. 4 (step 107), Fig. 5 (step 205)).
`
`The cited disclosures of Michiels, however, do not support
`sufficiently Petitioner’s allegations that Michiels’s registration server 40
`transmits a program update based on a determination of whether the user is
`authorized to use the update. Rather, Michiels expressly and repeatedly
`discloses that server 40 determines only whether “computer
`apparatus 10”—not a user thereof—“is authori[z]ed to receive” a program
`update or to continue using the functionality of program 16. Ex. 1004, 12:7–
`12, 12:34–13:1, 13:7–9 (emphasis added); see id. at 5:1–4 (“verifying that
`the computer apparatus is authori[z]ed to use the copy of the computer
`program; and if [so] . . . sending the program update” (emphasis added)); id.
`at 8:24–29 (“verify that [computer apparatus] 10 is authori[z]ed to maintain
`at least the present pertaining functionality of application 18 and should
`receive an update” (emphasis added)); id. at Fig. 5 (step 205).
`
`For example, in describing the embodiment in which computer
`apparatus 10 requests program updates, Michiels explains that server 40:
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`decide[s, in step] 107[,] whether the computer apparatus 10 is
`authori[z]ed to receive the update. If the computer apparatus 10
`is authori[z]ed to continue using the program[,] then at step 108
`the appropriate update is retrieved from storage 47 . . . and sent
`to the computer apparatus 10.
`Id. at 12:7–17 (emphases added). Likewise, in discussing the alternative
`embodiment in which server 40 initiates program updates, Michiels states:
`server 40 first checks, at step 205, whether the computer
`apparatus is authori[z]ed to receive the update . . . [and] requests
`information that the server can use to identify that the computer
`program is a legitimate copy. . . . If the computer apparatus 10
`is authori[z]ed to receive an update, the update is . . . sent
`(step 207) to the computer apparatus 10.
`Id. at 12:34–13:12 (emphases added); see id. at [57], 14:13–14. Figure 5,
`depicting this embodiment, summarizes step 205 as “check that computer is
`authori[z]ed to receive an update.” Id. at Fig. 5 (quoted text altered from all
`capitalization) (emphasis added); see id. at 12:19–21.
`
`Accordingly, Michiels explicitly states that the authorization
`confirmed by registration server 40 before transmittal of a program update is
`limited to whether computer apparatus 10—the client device—is authorized
`to use the program and receive the program update. Claims 1 and 18,
`however, require a more specific determination regarding whether the user
`of the client device is entitled to use the program update.
`Petitioner’s representations in the Petition and the Geier Declaration,
`outlined above, that Michiels’s authorization is directed specifically to “the
`user”—as claimed—are conclusory and are not factually supported by the
`cited portions of Michiels. See, e.g., Pet. 22–25, 28 (citing Ex. 1004, 2:23–
`24, 2:27–30, 3:9–14, 5:13–14, 6:3–9, 11:21–28, 12:2–18, 13:1–12, 13:18–
`22, 14:9–12, Figs. 1, 4–5); Ex. 1003 ¶¶ 69–80, 92–94 (same). Rather,
`Michiels’s disclosures regarding registration server 40’s confirmation that
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`computer apparatus 10 is authorized to receive a program update—alone and
`without more—fail to teach or suggest that the relevant authorization is
`directed to a particular user of this apparatus. Yet Petitioner fails to provide
`explanation adequate to support inferring from Michiels’s disclosures that
`the authorization disclosed to focus on computer apparatus 10 extends to a
`particular user thereof. Further, in the analysis of these claim limitations, the
`Petition and the Geier Declaration do not provide citations to record
`evidence other than Michiels and the Geier Declaration. See Pet. 25 (citing
`Ex. 1004, 11:21–28, 12:5–18, 13:3–12, Figs. 1, 4–5; § VII.A.4.g of the
`Petition; Ex. 1003 ¶¶ 77–81); Pet. 28 (citing §§ VII.A.4.h–i of the Petition;
`Ex. 1003 ¶¶ 92–94); Ex. 1003 ¶¶ 77–80 (citing Ex. 1004, 11:21–28, 12:5–
`18, 13:3–12, Figs. 1, 4–5; Ex. 1003 ¶¶ 69–72); Ex. 1003 ¶ 92 (citing
`Ex. 1003 ¶¶ 73–81). In light of the lack of sufficient explanation and factual
`and evidentiary support, Mr. Geier’s testimony opining that Michiels
`discloses these limitations lacks probative value and we do not credit this
`testimony. See 37 C.F.R. § 42.65(a); 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.”); Rohm & Haas Co.
`v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997).
` In sum, Petitioner’s arguments and evidence are insufficient to
`demonstrate that Michiels2 teaches, suggests, or otherwise renders obvious
`
`2 As stated above, Petitioner alleges “Michiels discloses” these limitations
`and, thus, expressly does not rely on Eisen for these limitations. Pet. 25, 28;
`Ex. 1003 ¶¶ 81, 94. In our analysis above, we—as we must—focus on and
`address the specific arguments that Petitioner proffers directed to Michiels.
`See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir.
`2016) (holding that because petitioner “bears the burden of proof,” the
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`an “update server” (registration server 40) determining or transmitting an
`“updated program configuration” (program update) “if the user associated
`with the unique device identifier” (Terminal ID) “is entitled to use features
`of the update