Trials@uspto.gov
`571.272.7822
`
`
`
` Paper No. 8
` Filed: May 1, 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 IPR2017-02202
`Patent 8,239,852 B2
`____________
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, 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. 1101, “’852 patent”). Paper 1 (“Pet.”). Uniloc
`Luxembourg, S.A. (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”).
`
`
`
`
`
`
`571.272.7822
`
`
`
` Paper No. 8
` Filed: May 1, 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 IPR2017-02202
`Patent 8,239,852 B2
`____________
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, 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. 1101, “’852 patent”). Paper 1 (“Pet.”). Uniloc
`Luxembourg, S.A. (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”).
`
`
`
`
`
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`
`IPR2017-02202
`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 3, 2. In addition, the challenged claims were the
`subject of a previous petition for inter partes review filed by Petitioner in
`IPR2017-02041. The Board declined to institute trial on the grounds
`asserted in that case. Apple Inc. v. Uniloc Luxembourg S.A., Case
`IPR2017-02041 (PTAB Mar. 7, 2018) (Paper 10).
`
`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. 1101,
`[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
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`program configuration for the client device and delivers the updated
`program configuration to the device. Id. at [57], 4:35–39.
`In disclosed embodiments, a client device 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. The client
`device 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 5:51–55. “An application . . . running on the client device”
`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 the client
`device “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 9:16–23, 9:34–35.
`The application on the client device sends the unique identifiers to an
`update server, which analyzes the identifiers to determine an updated
`program configuration for the client device. Id. at [57], 3:12–15, 4:35–38,
`9:55–57, Fig. 4. The update server then delivers the updated program
`configuration to the client device. Id. at [57], 4:38–39.
`
`C. Illustrative Claim
`
`Challenged claims 1 and 18 are the only independent claims of the
`’852 patent. Ex. 1101, 12:2–40, 14:1–27. Claim 18, reproduced below, is
`illustrative of the recited subject matter:
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`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;
`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 Application Publication No. 2004/0059938 A1 (published
`Mar. 25, 2004) (Ex. 1108, “Hughes”);
`U.S. Patent Application Publication No. 2005/0076334 A1 (published
`Apr. 7, 2005) (Ex. 1105, “Demeyer”);
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`U.S. Patent Application Publication No. 2007/0113090 A1 (published
`May 17, 2007) (Ex. 1106, “Villela”);
`U.S. Patent Application Publication No. 2008/0120195 A1 (published
`May 22, 2008) (Ex. 1107, “Shakkarwar”); and
`U.S. Patent Application Publication No. 2008/0320607 A1 (published
`Dec. 25, 2008) (Ex. 1104, “Richardson”).
`In addition, Petitioner supports its contentions with a Declaration of
`Mr. James Geier (Ex. 1103, “Geier Declaration”).
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability. Pet. 3.
`Challenged Claim(s) Basis
`References
`1, 5–8, 18
`§ 103 Richardson and Demeyer
`2–4
`§ 103 Richardson, Demeyer, and
`Villela
`§ 103 Richardson, Demeyer, and
`Shakkarwar
`§ 103 Richardson, Demeyer, and
`Hughes
`
`16
`
`17
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`
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`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).
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`Neither Petitioner nor Patent Owner proffers a construction for any
`claim term. Pet. 6; Prelim. Resp. 19. Based on our review of the record and
`the dispositive issues in our determination of whether to institute inter partes
`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. Legal Principles
`
`A patent claim is unpatentable under 35 U.S.C. § 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;1 and (4) objective evidence of
`
`
`1 With supporting testimony of Mr. Geier, Petitioner proffers that “a person
`of ordinary skill in the art around the filing of the ’852 Patent (‘POSITA’)
`would have been someone with a bachelor’s degree in computer science or
`equivalent, and at least two years of experience in software engineering,
`network design, or electronic commerce, or an equivalent amount of relevant
`work or research experience.” Pet. 6 (citing Ex. 1103 ¶¶ 20–21). Patent
`Owner does not dispute Petitioner’s proffered assessment. To the extent
`necessary, we adopt Petitioner’s assessment for purposes of this Decision.
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`nonobviousness, i.e., secondary considerations, when presented.2 Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving
`obviousness, a petitioner cannot employ mere conclusory statements. The
`petitioner must instead articulate specific reasoning, based on evidence of
`record, to support the legal conclusion of obviousness.” In re Magnum Oil
`Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the
`asserted grounds with the principles stated above in mind.
`
`C. Obviousness over Richardson and Demeyer (claims 1, 5–8, 18)
`
`Petitioner argues that Richardson and Demeyer render obvious claims
`1, 5–8, and 18 of the ’852 patent. Pet. 7–38. Patent Owner disputes
`Petitioner’s obviousness assertions. Prelim. Resp. 20–25.
`1. Overview of Richardson
`Richardson is directed to “[s]ystems and methods for auditing and
`selectively restricting software usage based on, for example, software copy
`counts or execution counts.” Ex. 1104, [57], ¶ 3. An exemplary audit
`system of Richardson’s invention is illustrated in Figure 2, reproduced
`below. Id. ¶ 19.
`
`
`2 Patent Owner does not contend in its Preliminary Response that any such
`secondary considerations are present.
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`With reference to Figure 2, above, copy controlled software is
`executed in step 41 on a computing device, also referred to as client 40. Id.
`The software then checks to see if a license is granted for the software to
`run, such as by determining whether an “unlock key” is present on the
`computing device (step 42), and if so, comparing the unlock key to the
`hardware configuration of the computing device (step 44). Id. ¶ 20.
`Specifically, according to Richardson, “[i]nformation about the components,
`peripherals and settings of the computing device are compiled into a unique
`identifier that can be used to verify the identity of the device for purposes of
`identification.” Id.
`If a current unlock key is not present, an authorization process is
`started. Id. In the authorization process, the user is asked to input a
`“product serial number” (step 43), a “unique device identifier” is compiled
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`Patent 8,239,852 B2
`from the hardware configuration of the computing device (step 45), and both
`the serial number and the unique device identifier are sent or communicated
`to authorization authority/system 60 for license verification (step 47). Id.
`¶ 23. Upon verification of the software and device identifiers (step 62), the
`licensing system transmits back an unlock key that permits either unlimited
`or limited use, depending, for example, on the number of copies previously
`authorized under the license (steps 63–68). Id. ¶¶ 30, 34, 35, 42. Disclosed
`examples include time-limited keys that enable the software to run for a
`particular number of days before requiring re-authorization to continue
`usage (id. ¶ 30), keys that require re-authorization after the defined number
`of executions of the software (id. ¶ 34), and keys that allow the computing
`device to run a version of the software with one or more features disabled
`(id. ¶¶ 35, 42).
`With respect to the unique device identifier, Richardson discloses that
`“[t]he identification information or device identifier generally comprises
`information that is expected to be unique for the computing device,” and “is
`preferably generated from non-user-configurable machine parameters of the
`computing device, such as, for example, hard disk serial number, MAC ID,
`RAM manufacturing date, etc.” Id. ¶ 21. Richardson further discloses that
`“[t]he machine parameters may relate to the platform on which a web
`browser or another application runs, such as, for example, CPU number, or
`unique parameters associated with the firmware in use.” Id. ¶ 22. “The
`machine parameters may also include system configuration information,
`such as amount of memory, type of processor, software or operating system
`serial number, etc.,” whereas “[t]he device identifier generated from the
`machine parameters may include the computing device’s IP address and/or
`
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`other geo-location code to add another layer of specificity to the computing
`device’s unique identifier.” Id.
`2. Overview of Demeyer
`Demeyer is directed to “a system and method for licensing software
`using a clearinghouse to license only the technology modules that an end
`user registers.” Ex. 1105, [57]. According to Demeyer, the “[t]echnology
`modules . . . represent intellectual property rights embodied within [a]
`software product 110 that may be needed to execute a specified software
`functionality module 106.” Id. ¶ 42. Demeyer explains that “software
`product 110 may contain functionality modules 106 that require securing
`additional licensing from one or more technology holders 120,” as well as
`“functionality modules that do not require separate license beyond that
`required to use the basic software product 110.” Id. ¶ 43. “For example, a
`technology module 107 may incorporate the technology required to decode
`Dolby Digital audio” (id. ¶ 42), for which “a license . . . is required within
`DVD playback software used to decode a DVD movie incorporating this
`audio technology” (id. ¶ 3), whereas “functionality modules 106 that allow
`playing a DVD without certain audio features or viewing the enhanced
`contents of the DVD are examples of functions that may not require separate
`technology licensing” (id. ¶ 43). Further, “[c]ertain functionality modules
`106 are protected, meaning that the functionality modules 106 are disabled
`or otherwise restricted, until all technology modules 107 needed to use the
`functionality module 106 are registered.” Id. ¶ 44.
`Figure 5 of Demeyer is reproduced below.
`
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`Patent 8,239,852 B2
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`Figure 5, above, depicts a flow diagram for use of Demeyer’s
`software licensing system. Id. ¶¶ 25, 47.
`In the event that “end user 160 requests the use of a functionality
`module 106 that uses at least one unlicensed technology module 107,”
`software product 110 may be configured either “to display an error screen
`within [a] user interface” that “may instruct the end user 160 how to register
`the technology modules 107 to unprotect and gain the use of the
`functionality module 106” (Fig. 5, step 303) or to “initiate[] an activation
`request 304 automatically, without notification to end user 160.” Id.
`¶¶ 50–51.
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`If an activation request is initiated, “registration clearinghouse 140
`requests identifying information for the technology module 107 to be
`registered” (step 306). Id. ¶ 52. According to Demeyer, the identification
`information “[p]referably . . . should individually distinguish the particular
`end user 160 or the particular copy of software product 110 such that the
`information can be used to determine if a particular software product 110
`has already been registered.” Id. “For example, the identification
`information might consist of end user 160 identification, identification of the
`technology module 107, and a serial number for the software product 110
`such as a CD key.” Id. Demeyer also discloses that, “[w]hen an end
`user 160 requests a necessary technology, he will identify himself as a
`unique and authorized recipient of this technology to the company that
`provides the technology activation service,” and that “[t]here are several
`possible mechanisms for this, including the use of a serial number (provided
`with initial purchase) or some means of uniquely identifying the computer
`system 100, such as the Service Code on a Dell personal computer.” Id.
`¶ 39. “In response to the request for identification, . . . software product 110
`prepares the identifying information for transmission to registration
`clearinghouse 140” (step 307). Id. ¶ 53. Registration clearinghouse 140
`then “verifies that the identifying information relates to at least one
`technology module 107 for which the registration clearinghouse is
`authorized to register” (step 309), and if so, “records technology module 107
`as registered” in a registration database (step 310) and then “provides a
`relieving mechanism 130 to software product 110, thereby enabling the
`previously protected technology modules 107 associated with the relieving
`mechanism 130” (step 311). Id. ¶¶ 53–55. According to Demeyer,
`“relieving mechanism 130” can be in the form of either a “key code” that is
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`automatically entered into software product 110 or missing source code that
`is automatically supplied to enable the technology module. Id. ¶ 56.
`3. Independent Claims 1 and 18
`Independent claims 1 and 18 each recite, inter alia:
`a computer program . . . which, when executed by [a] processor,
`(i) performs physical device recognition on [a] 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, [and] (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.
`Ex. 1101, 12:4–17, 14:1–14. Petitioner contends Richardson and Demeyer
`render obvious these recited limitations. Pet. 18–23, 33.
`First, according to Petitioner, “Richardson discloses that the processor
`of the client device executes a program to perform physical device
`recognition on the client device to determine ‘machine parameters of the
`computing device,’” and “[t]he machine parameters determined by
`Richardson are identical or similar to those disclosed by the ’852 Patent.”
`Pet. 18. In particular, Petitioner contends, “[e]xamples of the determined
`machine parameters [in Richardson] include ‘hard disk serial number, MAC
`ID, RAM manufacturing date,’ ‘CPU number,’ ‘amount of memory, type of
`processor, software or operating system serial number,’ and ‘the computing
`device’s IP address and/or other geo-location code.’” Id. at 18 (citing
`Ex. 1104, ¶¶ 21–22, Fig. 2). Petitioner points to common disclosure in both
`Richardson and the ’852 patent that “the process for generating a device
`identifier may include measuring physical, non-user-configurable
`characteristics of disk drives and solid state memory devices” (id. (quoting
`Ex. 1101, 7:62–65; Ex. 1104 ¶ 21)), as well as disclosure in the ’852 patent
`
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`of “machine serial number,” “machine ROM release date,” “CPU ID,”
`“memory total,” and “geo-location codes.” (id. at 18–19 (quoting Ex. 1101,
`8:11–9:15, 10:1–5)). Petitioner further contends, “[b]ecause the broadest
`reasonable interpretation of ‘physical device recognition’ must encompass
`the examples provided in the ’852 Patent, Richardson discloses performing
`physical device recognition on the client device to determine machine
`parameters.” Id. at 19 (citing Ex. 1103 ¶ 51).
`Second, regarding the claims’ recitation of 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,” Petitioner
`argues “Richardson’s disclosed machine parameters include information
`relating to the device user’s location . . . as well as information relating to
`the device’s software configuration.” Id. (citing Ex. 1104 ¶ 22). Petitioner
`contends that “[a] POSITA would have recognized that a user’s location is
`user-specific information that may be considered an example of ‘account
`information’” and that “data relating to the client device’s software
`configuration can contain information regarding features of software that the
`user of the client device is entitled to use.” Id. (citing Ex. 1103 ¶ 52; 1104
`¶ 22).
`“At a minimum,” Petitioner asserts, “Richardson discloses elements
`closely related to determining 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,” and “[m]oreover, these
`limitations are obvious in view of Demeyer.” Id. (citing Ex. 1103 ¶¶ 52,
`58). First, Petitioner contends, “Demeyer discloses the client device
`recognizing and gathering ‘identification information [that] should
`individually distinguish the particular end user 160 or the particular copy of
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`software product 110,’” where “the gathered ‘identification information’
`includes information regarding ‘end user 160 identification.’” Id. at 20
`(citing Ex. 1105 ¶ 52). Such identification information is used by
`registration clearinghouse 140 to track “licensing information and/or
`purchase records relating to the user,” Petitioner argues, and “[t]hus, a
`[person of ordinary skill in the art] would have understood that ‘end user 160
`identification’ represents account information for a user of the client
`device.” Id. (citing Ex. 1103 ¶ 59; Ex. 1105 ¶¶ 45, 60). Second, Petitioner
`contends, “Demeyer discloses that the ‘identification information’ gathered
`by the client device also includes ‘identification of the technology
`module 107,” which, Petitioner further contends, “a POSITA would have
`understood . . . would identify a feature of the software that the user of the
`client device is entitled to use (e.g., the licensed feature of playing back a
`Dolby Digital audio track of a DVD).” Id. at 20–21 (citing Ex. 1103 ¶ 60;
`Ex. 1105 ¶¶ 3, 4, 41–44, 52, 65, 75); see also id. at 21 n.5 (“Demeyer
`discloses registering licensed features that the user is entitled to use to track
`their usage.” (citing Ex. 1105 ¶¶ 3–5, 44)). A person of ordinary skill in the
`art would have been motivated to modify Richardson based on Demeyer for
`various reasons, according to Petitioner, including to improve security of the
`system and to apply Demeyer’s teaching of using source code to control
`functionality to the Richardson system. Id. at 13–16, 22 (citing Ex. 1103
`¶¶ 54–57, 61).
`On the record before us, Petitioner has not established sufficiently that
`the combination of Richardson and Demeyer would have taught or
`suggested “perform[ing] physical device recognition . . . to determine
`machine parameters including account information for a user of [a] client
`device and features of software that the user of the client device is entitled to
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`use,” as recited in claims 1 and 18. Despite Petitioner’s identification of
`some overlap between Richardson’s and the ’852 patent’s disclosures of
`certain examples of determined machine parameters (see Pet. 18), those
`overlapping examples do not include machine parameters “including
`account information for a user of [a] client device” or “features of software
`that the user of the client device is entitled to use,” as recited in claims 1 and
`18.
`
`First, contrary to Petitioner’s assertion that “Richardson’s disclosed
`machine parameters include information relating to the device user’s
`location (e.g., ‘the computing device’s IP address and/or other geo-location
`code’)” (id. at 19), we find that Richardson does not disclose “the computing
`device’s IP address and/or geo-location code” to be “machine parameters,”
`but rather that those are disclosed by Richardson as potentially being
`included in a “device identifier generated from the machine parameters”
`(Ex. 1104 ¶ 22). As stated above, claims 1 and 18 recite “machine
`parameters” as a separate element from “a unique device identifier . . .
`generated based at least in part on the determined machine parameters.”
`Thus, disclosure that an IP address or geo-location code may be included in
`a device identifier that is merely generated based at least in part on
`determined machine parameters is insufficient to establish a teaching or
`suggestion that an IP address or geo-location code is a machine parameter
`determined by physical device recognition as recited in claims 1 and 18. But
`even assuming arguendo that Richardson had taught an IP address or a
`geo-location code to be such a “machine parameter,” we are not persuaded
`by Petitioner’s contention that “[a] POSITA would have recognized that a
`user’s location is user-specific information that may be considered an
`example of ‘account information.’” Pet. 19. Petitioner’s evidentiary support
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`for that contention consists only of an unsupported verbatim statement in the
`Declaration of Mr. Geier. See Ex. 1103 ¶ 52; see also 37 C.F.R. § 42.65(a)
`(“Expert testimony that does not disclose the underlying facts or data on
`which the opinion is based is entitled to little or no weight.”).
`Second, whereas Petitioner contends that “Richardson’s disclosed
`machine parameters include . . . information relating to the device’s software
`configuration” and that “[a] POSITA . . . would have recognized that data
`relating to the client device’s software configuration can contain information
`regarding features of software that the user of the client device is entitled to
`use” (Pet. 19 (emphasis added)), Petitioner has not provided evidence that
`any of the specific types of information actually disclosed by Richardson as
`examples of machine parameters would contain information regarding
`features of software that a user of a client device is entitled to use. As with
`Petitioner’s contention regarding “account information,” Petitioner’s
`contention regarding the understanding of a person of ordinary skill in the
`art with regard to “features of software that the user . . . is entitled to use” is
`supported only by a verbatim statement in Mr. Geier’s Declaration and
`similarly is entitled to little or no weight. See Ex. 1103 ¶ 52. Moreover, we
`discern no information regarding “features of software that [a] user is
`entitled to use” in any of Richardson’s machine parameters cited by
`Petitioner as examples of “information relating to the device’s software
`configuration,” namely, “the platform on which a web browser or another
`application runs,” “unique parameters associated with the firmware in use,”
`and “software or operating system serial number.” Pet. 19. 3
`
`
`3 Indeed, Mr. Geier concedes that “Richardson does not expressly disclose
`that the determined machine parameters include ‘account information for a
`17
`
`
`
`
`
`IPR2017-02202
`Patent 8,239,852 B2
`Nor are we persuaded that Demeyer cures the deficiencies of
`Richardson. Although we agree with Petitioner that Demeyer’s “identifying
`information [that] should individually distinguish the particular end
`user 160 . . . such that the information can be used to determine if a
`particular software product 110 has already been registered” may be deemed
`to represent account information for a user of a client device (see Pet. 20
`(citing Ex. 1103 ¶ 59; Ex. 1105 ¶ 52)), we do not find any teaching or
`suggestion in the combined teachings of Richardson and Demeyer that such
`identifying information would be present as a “machine parameter” that
`could be determined by performing “physical device recognition on [a]
`client device,” as recited in claims 1 and 18. Indeed, Petitioner refers to the
`same “identification information” as rendering obvious the separate “unique
`software identifier” element recited elsewhere in claims 1 and 18. See
`Pet. 26.
`Similarly, whereas we agree with Petitioner that Demeyer’s
`identification of a technology module such as the “Dolby Digital audio”
`module might be deemed to identify a software feature that a user of a client
`device is entitled to use (see id. at 21 (citing Ex. 1103 ¶ 60; Ex. 1105 ¶¶ 3, 4,
`41, 52), we likewise discern no teaching or suggestion in Richardson and
`Demeyer that such identification would be present in a machine parameter,
`as recited in claims 1 and 18. Demeyer’s technology modules 107 are
`disclosed as components of software product 110 (see, e.g., Ex. 1105 ¶ 48),
`whereas the only potential machine parameter in Demeyer identified by
`Petitioner is a “means of uniquely identifying the computer system 100, such
`
`
`user of the client device and features of software that the user of the client
`device is entitled to use . . . .’” Ex. 1103 ¶ 53.
`18
`
`
`
`
`
`IPR2017-02202
`Patent 8,239,852 B2
`as the Service Code on a Dell personal computer” (id. ¶ 39). We find in
`Demeyer no suggestion that identification of a technology module could
`potentially be utilized to uniquely identify computer system 100.
`For the reasons given, we are not persuaded by Petitioner’s evidence
`that the combination of Richardson and Demeyer would have taught or
`suggested “perform[ing] physical device recognition . . . to determine
`machine parameters including account information for a user of [a] client
`device and features of software that the user of the client device is entitled to
`use,” as recited in claims 1 and 18. Accordingly, we conclude that Petitioner
`has not established a reasonable likelihood that it would prevail in showing
`that claim 1 or claim 18 is unpatentable over the proffered combination.
`4. Dependent Claims 5–8
`Claims 5–8 depend, directly or indirectly, from independent claim 1.
`
`Ex. 1101, 12:49–63. Accordingly, the deficiencies in Petitioner’s
`obviousness showing for independent claim 1, discussed above, also apply
`to these claims. Petitioner’s arguments directed to the additional limitations
`of these dependent claims do not cure the deficiencies. See Pet. 36–38.
`5. Conclusion
`For the reasons given, we determine that the Petition does not show a
`
`reasonable likelihood that Petitioner would prevail in demonstrating that
`Richardson and Demeyer render obvious claims 1, 5–8, and 18 of the
`’852 patent.
`
`D. Remaining Grounds
`
`Petitioner alleges obviousness grounds based on Richardson and
`Demeyer in combination with other references to challenge claims 2–4, 16,
`and 17, which each depend directly or indirectly from independent claim 1.
`
`
`
`19
`
`
`
`IPR2017-02202
`Patent 8,239,852 B2
`See Pet. 38–45; Ex. 1101, 12:41–48, 13:23–30. Specifically, Petitioner adds
`Villela to challenge claims 2–4 (Pet. 39–41); Shakkarwar to challenge
`claim 16 (id. at 41–43); and Hughes to challenge claim 17 (id. at 43–45).
`The Petition’s analysis of each of these alleged grounds of
`unpatentability relies on its analysis of the asserted ground of obviousness
`over Richardson and Demeyer for the limitations of independent claim 1 and
`discusses the respective additional references (Villela, Shakkarwar, or
`Hughes) onl
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