UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`U.S. Patent No. 9,934,408 B2
`: Attorney Docket No. 081841.0119
`In Re:
`Inventor: Moskowitz, Scott A.;
`
`:
`Berry, Mike W.
`:
`May 30, 2017
`:
`Filed:
`Apr. 3, 2018
`: IPR No: 2019-01305
`Issued:
`
`Assignee: Wistaria Trading Ltd.
`:
`Title:
`Secure personal content server :
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`Submitted Electronically via the Patent Trial and Appeal Board End to End System
`PETITION FOR INTER PARTES REVIEW OF CLAIMS 1, 6, 8, AND 17 OF
`U.S. PATENT NO. 9,934,408 UNDER 35 U.S.C. §§311-319 AND
`37 C.F.R. §§42.100 ET SEQ.
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`I.
`II.
`
`TABLE OF CONTENTS
`MANDATORY NOTICES UNDER 37 C.F.R. §42.8 AND FEES ............ 1
`REQUIREMENTS FOR INTER PARTES REVIEW UNDER
`37 C.F.R. §42.104 ........................................................................................... 3
`A. Grounds for Standing (37 C.F.R. §42.104(a)) ......................................... 3
`B. Publications Relied Upon ........................................................................ 3
`C.
`Identification for Challenge (37 C.F.R. §42.104(b)) ............................... 4
`III. OVERVIEW OF THE ’408 PATENT ......................................................... 4
`A. Summary of the Claimed Subject Matter ................................................ 4
`B. Prosecution History of the ’408 Patent .................................................... 6
`C. Priority ..................................................................................................... 6
`SUMMARY OF PRIOR ART AND REFERENCES RELIED UPON ... 7
`A. Brief Summary of Yeung (Ex[1014]) .................................................... 11
`B. Brief Summary of Levine (Ex[1015]) ................................................... 13
`C. Brief Summary of Rhoads (Ex[1016])................................................... 14
`CLAIM CONSTRUCTION UNDER 37 C.F.R. §42.104(b)(3) ............... 15
`A. Level of Ordinary Skill in the Art .......................................................... 15
`B.
`“local content server system (LCS)” (Claims 1, 6, 8, and 17) .............. 16
`C.
`“LCS identification code” (Claims 1 and 8) .......................................... 17
`D.
`“LCS domain” (Claims 1 and 8) ............................................................ 17
`E.
`“content” (Claims 1, 6, 8, and 17) ......................................................... 18
`VI. THE ASSERTED GROUND RENDERS ALL PETITIONED
`CLAIMS INVALID ..................................................................................... 19
`A.
`Independent Claim 1 .............................................................................. 20
`
`IV.
`
`V.
`
`i
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`B. Dependent Claim 6 ................................................................................ 57
`C.
`Independent Claim 8 .............................................................................. 58
`D. Dependent Claim 17 .............................................................................. 60
`VII. CONCLUSION ............................................................................................ 61
`
`ii
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`

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`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`LIST OF EXHIBITS
`
`Description of Document
`
`U.S. Patent No. 9,934,408 by Scott A. Moskowitz and Mike W. Berry,
`entitled “Secure personal content server” (the “’408 Patent”)
`
`[RESERVED]1
`
`[RESERVED]
`
`Declaration of Dr. Sandeep Chatterjee
`
`[RESERVED]
`
`[RESERVED]
`
`Curriculum Vitae of Dr. Sandeep Chatterjee
`
`File History for U.S. Patent Application No. 15/607,820
`
`[RESERVED]
`
`File History for U.S. Patent Application No. 10/049,101
`
`[RESERVED]
`
`[RESERVED]
`
`[RESERVED]
`
`U.S. Patent No. 6,668,246 by Minerva Ming-Yee Yeung et al., entitled
`“Multimedia data delivery and playback system with multi-level
`content and privacy protection” (“Yeung”)
`
`U.S. Patent No. 6,345,100 by Earl Levine, entitled “Robust watermark
`method and apparatus for digital signals” (“Levine”)
`
`Exhibit
`No.
`1001
`
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`
`1015
`
`1 Exhibits marked “RESERVED” are reserved for additional Inter Partes Review
`Petitions challenging related patents owned by the same entity.
`
`iii
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`

`

`Exhibit
`No.
`1016
`
`1017
`1018
`
`1019
`
`1020
`1021
`1022
`1023
`
`1024
`
`1025
`1026
`1027
`
`1028
`
`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`Description of Document
`
`U.S. Patent No. 6,311,214 by Geoffrey B. Rhoads, entitled “Linking of
`computers based on optical sensing of digital data” (“Rhoads”)
`
`[RESERVED]
`
`First Amended Complaint, Blue Spike LLC et al. v. DISH Network
`Corporation et al., No. 1:19-CV-00160-LPS-CJB (D. Del.)
`(“District Court Litigation”)
`
`First Amended Complaint, Blue Spike LLC v. DISH Network
`Corporation et al., Nos. 6:18-CV-00333-RWS-KNM (E.D. Tex.),
`1:18-CV-01512-LPS-CJB (D. Del.) (the “Prior Litigation”)
`
`Affidavit of Service of Complaint on DISH Network Corporation
`
`Affidavit of Service of Complaint on DISH Network L.L.C.
`
`Affidavit of Service of Complaint on Dish Network Service L.L.C.
`
`Order Granting Joint Motion to Transfer to the District of Delaware and
`Stay All Deadlines, 6:18-CV-00333-RWS-KNM, ECF No. 19, entered
`in Prior District Court Litigation
`
`Notice of Voluntary Dismissal Without Prejudice, served in Prior
`District Court Litigation
`
`[RESERVED]
`
`[RESERVED]
`
`U.S. Patent No. 5,841,991 by William C. Russell, entitled “In an
`interactive network board, a method and apparatus for storing a media
`access control address in a remotely alterable memory” (“Russell”)
`
`U.S. Patent No. 6,128,148 by Hans-Joachim Platte et al., entitled
`“Memory Device Having Multiple Memory Regions for a Recording
`device” (“Platte”)
`
`1029
`
`[RESERVED]
`
`iv
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`Exhibit
`No.
`1030
`
`[RESERVED]
`
`Description of Document
`
`v
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. §42.8 AND FEES
`Real Party in Interest Under 37 C.F.R. §42.8(b)(1): DISH Network
`
`Corporation, DISH Network L.L.C., and DISH Network Service L.L.C. (collectively,
`
`“Petitioner” or “DISH”) are the Petitioner. DISH is a provider of direct broadcast
`
`satellite services. Non-party DISH Technologies L.L.C. is a real party in interest.
`
`DISH Technologies L.L.C. provides set top boxes to DISH that are used to provide
`
`direct broadcast satellite services to customers.
`
`Related Matters Under 37 C.F.R. §42.8(b)(2): U.S. Patent No. 9,934,408 is
`
`currently involved in a pending lawsuit involving Petitioner entitled, Blue Spike LLC
`
`et al. v. DISH Network Corporation et al., United States District Court for the
`
`District of Delaware, Case No. 1:19-CV-00160-LPS-CJB (the “District Court
`
`Litigation”). See Ex[1018]. Patent Owner asserts U.S. Patent No. 9,934,408
`
`against Petitioner in the District Court Litigation. Id. 21-25. Petitioner asserted
`
`U.S. Patent No. 9,934,408 against Petitioner in an earlier lawsuit, entitled, Blue Spike
`
`LLC v. DISH Network Corporation et al., Case Nos. 6:18-CV-00333-RWS-KNM
`
`(E.D. Tex.) and 1:18-CV-01512-LPS-CJB (D. Del.) (the “Prior Litigation”). See
`
`Ex[1019] 117-125. This prior lawsuit was transferred from the United States
`
`District Court for the Eastern District of Texas to the United States District Court
`
`for the District of Delaware, see Ex[1023], and subsequently voluntarily dismissed
`
`by Blue Spike, see Ex[1024].
`
`1
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`Lead Counsel and Request for Authorization Under 37 C.F.R. §42.8(b)(3):
`
`Pursuant to 37 C.F.R. §§42.8(b)(3) and 42.10(a), Petitioner designates the following:
`
`Lead Counsel is Eliot D. Williams (Reg. No. 50,822) of Baker Botts L.L.P.; Back-
`
`up Counsel is G. Hopkins Guy (Reg. No. 35,886) and Ali Dhanani (Reg. No. 66,233)
`
`of Baker Botts L.L.P.
`
`Service Information Under 37 C.F.R. §42.8(b)(4): Service information is as
`
`follows: Baker Botts L.L.P., 1001 Page Mill Rd., Palo Alto, CA 94304 Tel. 650 739
`
`7500; Fax 650-739-7699. Petitioner consents to service by electronic mail at
`
`eliot.williams@bakerbotts.com,
`
`hop.guy@bakerbotts.com,
`
`and
`
`ali.dhanani@bakerbotts.com. A Power of Attorney is filed concurrently herewith
`
`under 37 C.F.R. §42.10(b).
`
`Certification of Grounds: Petitioner certifies that U.S. Patent No. 9,934,408 is
`
`eligible for inter partes review and that each Petitioner is not barred or estopped
`
`from requesting inter partes review on the grounds set forth herein.
`
`Fees: The Office is authorized to charge the fee set forth in 37 C.F.R. §42.15(b)
`
`to Deposit Account No. 02-0384 as well as any additional fees that might be due in
`
`connection with this Petition.
`
`2
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`II.
`
`REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§42.104
`A. Grounds for Standing (37 C.F.R. §42.104(a))
`Petitioner challenges claims 1, 6, 8, and 17 of U.S. Patent No. 9,934,408 (the
`
`“’408 Patent”). See Ex[1001]. Petitioner certifies that the ’408 Patent is eligible
`
`for inter partes review and certifies that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the patent claims on the grounds
`
`identified in the Petition.
`
`B. Publications Relied Upon
`The ’408 Patent is not entitled to a priority date before August 4, 1999.
`
`Petitioner relies upon the following patents and publications:
`
`Ex[1014] — U.S. Patent No. 6,668,246 by Yeung et al., entitled “Multimedia
`
`data delivery and playback system with multi-level content and privacy protection”
`
`(“Yeung”), filed on March 24, 1999, and issued on December 23, 2003. Yeung is
`
`available as prior art under 35 U.S.C. §102(e).
`
`Ex[1015] — U.S. Patent No. 6,345,100 by Levine, entitled “Robust
`
`watermark method and apparatus for digital signals” (“Levine”), filed on October
`
`14, 1998, and issued on February 5, 2002. Levine is available as prior art under 35
`
`U.S.C. §102(e).
`
`Ex[1016] — U.S. Patent No. 6,311,214 by Rhoads, entitled “Linking of
`
`computers based on optical sensing of digital data” (“Rhoads”), filed on June 29,
`
`1999 and issued on October 30, 2001. Rhoads is available as prior art under 35
`
`3
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`U.S.C. §102(e).
`
`Identification for Challenge (37 C.F.R. §42.104(b))
`C.
`Petitioner requests cancellation of the claims on the ground that claims 1, 6,
`
`8, and 17 are obvious over Yeung in view of Levine and in further view of Rhoads.
`
`III. OVERVIEW OF THE ’408 PATENT
`A. Summary of the Claimed Subject Matter
`
`The ’408 Patent “relates to the secure distribution of digitized value-added
`
`information, or media content ....” Ex[1001] 1:36-37.
`
`The system includes a local content server (“LCS”) for storing content,
`
`authenticating content, enforcing export rules, and watermarking. Id. 12:23-25.
`
`FIG. 1 illustrates a “sample LCS system”:
`
`’408 Patent, Ex[1001] FIG. 1.
`
`4
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`

`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`The LCS includes an LCS domain, “a logical area inside which a rule system
`
`is enforced for transfer of digital content in and out of the LCS domain.”
`
`Id. 10:62-66.
`
`One feature of the disclosed system is to embed content with a watermark,
`
`which permits the content to be authenticated and provides security for high-quality
`
`content while providing unsecured content at a degraded quality level. Id. 3:19-21,
`
`11:39-42. As depicted in FIG. 2 (reproduced below), content embedded with a
`
`watermark that matches the LCS’s watermark is stored on the LCS, content with a
`
`watermark that does not match the LCS’s watermark is denied storage access, and
`
`content with no watermark is stored but is subjected to quality degradation. Id.
`
`FIG. 2; see also id. 11:15-21.
`
`’408 Patent, Ex[1001] FIG. 2
`
`5
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`B. Prosecution History of the ’408 Patent
`
`The application issuing as the ’408 Patent was filed May 30, 2017 as U.S.
`
`Patent Application No. 15/607,820 (the “’820 Application”). Ex[1008]. During
`
`prosecution of the ’820 Application, the Applicant cancelled the independent claims
`
`and added issued system claim 1 and issued analog method claim 8. Id. 223, 225.
`
`These new claims included three conditional limitations: (i) the step of storing
`
`information determined to contain an “indicia of authenticity,” (ii) the step of not
`
`storing information determined to contain an “indicia indicating lack of authenticity,”
`
`and (iii) the step of degrading and storing information determined to contain “neither
`
`one of indicia indicating authenticity and indicia indicating lack of authenticity.”
`
`Id. 252. These amendments were part of the Examiner’s reasons for allowance.
`
`Id.
`
`The ’408 Patent and ’820 Application claim priority to a chain of applications
`
`going back to U.S. Application No. 10/049,101 (now U.S. Pat. No. 7,475,246), and
`
`to U.S. Provisional Application Nos. 60/147,134 filed August 4, 1999, and
`
`60/213,489 filed June 23, 2000. None of these parent patent applications include
`
`the claim terms “indicia indicating authenticity” or “indicia indicating lack of
`
`authenticity.”
`
`C. Priority
`
`The earliest claimed priority date for the ’408 Patent is August 4, 1999 based
`
`on the filing date of the earlier provisional.
`
`6
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`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`IV.
`
`SUMMARY OF PRIOR ART AND REFERENCES RELIED UPON
`As Dr. Chatterjee explains, the Digital Rights Management (“DRM”)
`
`concepts claimed in the ’408 Patent were well-known in the prior art. By the
`
`earliest filing date cited in the ’408 Patent, numerous electronic companies had
`
`already developed systems that protected audio and video content against
`
`unauthorized copying, use, and distribution. Ex[1004] ¶37. “These systems
`
`applied various combinations of familiar encryption and watermarking techniques
`
`to the now rapidly growing field of electronic commerce.” Id. By 1998, over 100
`
`music consumer and electronic companies formed the Secure Digital Music
`
`Initiative (“SDMI”) to consider the advantages of the numerous encryption and
`
`watermarking digital content protection techniques already in existence and agree
`
`on a common standard. Id. ¶39. Therefore, by the earliest filing date cited in
`
`the ’408 Patent, the application of various combinations of encryption and
`
`watermarking to DRM was well-developed and had already matured to a standard.
`
`Dr. Chatterjee additionally explains that systems where a plurality of versions
`
`of content were made available to a user were also well-known by the time of the
`
`alleged invention of the ’408 Patent. Ex[1004] ¶40. U.S. Patent No. 6,128,148
`
`to Platte, et. al. (“Platte”) discloses a videocassette system that is capable of playing
`
`7
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`back both high-definition (“HD”) video or standard definition (“SD”) video based
`
`on authorizations. Platte explains:
`
`In order to reduce the risk of theft for such cassettes, a special entry
`may be necessary at the position provided for the usage authorization
`so that the playback function of the reproduction device is released at
`all…. Not only is it possible to generally authorize the playback of a
`cassette by means of an appropriate entry[; f]urthermore, just certain
`functions can be authorized for the playback. With compatible
`HDTV/TV recordings, it is, for example, possible to just permit the TV
`playback with lower resolution; for recordings with stereo sound and
`surround sound, the playback of the surround sound can be blocked.
`Further, it is also possible to design a memory position within the
`memory device as a counter for the number of playbacks permitted.
`Platte, Ex[1028], at 3:54-4:10. Therefore, providing HD or SD video based on user
`
`authorizations was well-known by the time of the alleged invention of the ’408
`
`Patent. Ex[1004] ¶40.
`
`Prior art references Yeung, Levine, and Rhoads illustrate that the ’408 Patent
`
`claims what was well-known in the prior art. This Petition does not present “the
`
`same or substantially the same prior art or arguments previously [] presented to the
`
`Office” and the Board should not deny institution under 35 U.S.C. §325(d). Becton,
`
`Dickinson & Co. v. Braun Melsungen AG, IPR2017-01586, slip op. at 16-18 (Paper
`
`8) (PTAB Dec. 15, 2017) (informative).
`
`First, although the Applicant cited Yeung and Levine in an Information
`
`Disclosure Statement during the prosecution of the ’408 Patent, they were listed
`
`together with 315 other references, and neither reference was substantively
`
`8
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`evaluated with respect to the ’408 Patent claims (nor any parent) and are therefore
`
`not cumulative. Ex[1008] 144, 145, 151.
`
`Second, while the Examiner used a patent with a similar disclosure to Rhoads,
`
`U.S. Patent No. 6,522,769 (the “’769 Patent”), as a basis for rejection during the
`
`prosecution of parent U.S. Application No. 10/049,101 (the “’101 Application”),
`
`Ex[1010] 203, the teachings of that disclosure were never considered in a
`
`combination with Yeung or Levine. Therefore, this petition presents the Rhoads
`
`disclosure in a new light that is not cumulative of the arguments considered during
`
`ex parte prosecution. Becton, Dickinson, IPR2017-01586, at 17-18. Furthermore,
`
`expert testimony (Ex[1004]) has been submitted with this Petition, which was not
`
`available to the Examiner, explaining how a person of ordinary skill in the art would
`
`understand these references and how and why a person of ordinary skill in the art
`
`would combine them with a reasonable expectation of success.
`
`Third, the ’769 Patent disclosure was not relied upon for a rejection during
`
`examination of the ’408 Patent. Instead, that disclosure was applied only during
`
`prosecution of the ’101 Application, to claims that were subsequently amended to
`
`include a claim limitation that is absent from the ’408 Patent. In particular, the
`
`Applicant attempted to overcome the rejection based on the ’769 Patent by amending
`
`the independent claims to include “legacy content.” The applicant added this
`
`language on April 3, 2006: “and if the digital content is not authorized for use by the
`
`LCS, accepting the digital content at a predetermined quality level, said
`
`9
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`predetermined quality level having been set for legacy content.” Ex[1010] 189
`
`(emphasis added). In support of this amendment, the Applicant argued, “Rhoads
`
`predicates content use on ‘pre-authorization’ . . . . This inherently prevents use of
`
`legacy content and content in existence prior to Rhoads’ alleged LCS being
`
`deployed.” Id. at 203. “‘[L]egacy content’ is denied access to Rhoads’ alleged
`
`LCS.”
`
` Id.
`
` “The instant invention[s] can handle legacy content and
`
`unwatermarked content in a seamless manner. On the other hand, Rhoads’
`
`assumption necessarily excludes access to unwatermarked content (from his alleged
`
`LCS), limiting the availability of media under his proposed scheme.” Id. at 203-
`
`04. “[T]he Applicants’ invention represents an advantageous means to handle
`
`legacy content . . . . Rhoads teaches that [legacy content] should be rejected
`
`without exception.” Id. at 204 (emphasis in original). All of these arguments
`
`hinge on the idea that the ’769 Patent does not disclose handling of “legacy content,”
`
`which is not claimed in the ’408 Patent. Because the Applicant’s arguments relied
`
`on a term that does not appear in the ’408 Patent to distinguish the claims of the ’101
`
`Application from the ’769, this Petition does not present the same or substantially
`
`the same arguments previously presented to the Office.
`
`Finally, there are material differences between the references applied in the
`
`Petition and those applied during examination. During ex parte examination, the
`
`Examiner applied U.S. Patent No. 5,341,429 to Stringer et al. (“Stringer”) and U.S.
`
`Patent No. 6,148, 333 to Guedalia et al. (“Guedalia”). See, e.g., Ex[1008] 318.
`
`10
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`

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`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`Stringer is directed to transforming trial versions of digital materials back to their
`
`original form upon purchase, and Guedalia is directed to monitoring user access to
`
`a shared image server. Id. 318-25. As shown below, the combination of Yeung,
`
`Levine, and Rhoads invoke encryption and watermarking techniques to control
`
`content access and use during digital content distribution, including degrading
`
`content quality when certain authorization conditions occur.
`
` Thus, these
`
`references are materially different than those applied during prosecution.
`
`A. Brief Summary of Yeung (Ex[1014])
`
`Yeung is entitled “Multimedia data delivery and playback system with
`
`multi-level content and privacy protection.” Yeung teaches a generalized three-tier
`
`architecture for the secure distribution and storage of digital content, a server
`
`platform 110, a client platform 120, and a content player 450. Ex[1014] 7:34-62,
`
`2:29-33.
`
`FIG. 1 illustrates the relationship between the server platform 110, the client
`
`platform 120, and the transfer of content 160 between platforms, and FIG. 4
`
`illustrates the flow of content 290 between the client platform 120 and the content
`
`player 450.
`
`11
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`

`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`Yeung, Ex[1014] FIG. 1
`
`Yeung, Ex[1014] FIG. 4
`Yeung’s client platform distributes and protects content through the
`
`implementation of “content protection mechanisms,”
`
`including watermark
`
`12
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`

`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
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`extraction 440 and watermark insertion 280. Ex[1014] 1:53-54, FIG. 4. For
`
`example, the descrambling mechanisms 420 and 430 determine whether the client
`
`platform 120 provides “lesser quality content” to the content player 450 or
`
`“full-quality content.” Ex[1014] 8:39-48.
`
`B. Brief Summary of Levine (Ex[1015])
`
`Levine is entitled “Robust Watermark Method and Apparatus for Digital
`
`Signals” and generally discloses a “robust watermark mechanism by which
`
`identifying data can be encoded into digital signals such as audio or video signals
`
`such that the identifying data are not perceptible to a human viewer of the substantive
`
`content of the digital signals yet are retrievable and are sufficiently robust to survive
`
`other digital signal processing.” Ex[1015] 1:24-30.
`
`Levine discloses a computer system that executes a watermarker 100 and a
`
`watermark decoder 1300. Id. 28:18-21. “Watermark decoder 1300 … includes a
`
`bit-wise evaluator 1306 which determines whether watermark candidate 1314
`
`represents watermark data at all and can determine whether watermark candidate
`
`1314 is equivalent to expected watermark data 1512.” Id. 21:58-63. Specifically,
`
`the bit-wise evaluator 1306 includes a comparison logic 1520 that determines
`
`whether a watermark is present in the received content, see Ex[1015] 22:40-47, and
`
`another comparison logic 1506 that determines whether the watermark embedded in
`
`the received content is equivalent to an expected watermark, see id. 23:34-49.
`
`13
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`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
`
`Levine, Ex[1015] FIG. 15
`
`C. Brief Summary of Rhoads (Ex[1016])
`Rhoads is entitled “Linking of computers based on optical sensing of digital
`
`data” and is generally directed to “optical user interfaces that sense digital-encoded
`
`objects.” Ex[1016] 1:20-21. Rhoads explains, “These objects have been …
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`marked with digital information, using any of the broad ranges of printing and
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`processing techniques which are available on the market and which are widely
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`described in the open literature and patent literature surrounding digital
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`watermarking.” Id. 2:4-6.
`
`Rhoads notes, “There are nearly as many techniques for digital watermarking
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`(steganographic data encoding) as there are applications for it. The reader is
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`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
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`presumed to be familiar with a great variety of methods.”
`
` Id. 33:33-37.
`
`Throughout the application, Rhoads provides multiple examples of these
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`well-known watermarking techniques and applications, for example, using
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`watermarks to control content access on a music appliance:
`
`To illustrate, consider watermarked music. The media owner would be
`best served if the watermark serves dual purposes: permissive and
`restrictive. Permissively, music appliances can be designed to play (or
`record) only music that includes an embedded watermark signaling that
`such activity is authorized. By this arrangement, if music is obtained
`from an unauthorized source and does not include the necessary
`watermark, the appliance will recognize that it does not have
`permission to use the music, so will refuse requests to play (or record).
`
`Id. 51:13-21.
`V.
`CLAIM CONSTRUCTION UNDER 37 C.F.R. §42.104(b)(3)
`Under 37 CFR §42.100, claims should be construed “using the same claim
`
`construction standard that would be used to construe the claim in a civil action under
`
`35 U.S.C. §282(b)” (hereinafter the “Phillips standard”).2
`
`A. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art (“POSA”) would have a bachelor’s degree
`
`in computer science, and at least two to three years of experience related to secure
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`distribution of digitized information or a related technology field, such as data
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`integrity and security. Ex[1004] ¶83.
`
`2 Petitioner reserves the right to seek different claim constructions in the District
`Court Action.
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`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
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`“local content server system (LCS)” (Claims 1, 6, 8, and 17)
`B.
`“Local Content Server (LCS)” is expressly defined by the patentee as:
`
`A device or software application which can securely store a collection
`of value-added digital content. The LCS has a unique ID.
`Ex[1001] 8:25-27.
`As to the “value-added digital content,” “Value-added” is defined:
`
`Value-added information is differentiated from non-commoditized
`information in terms of its marketability or demand, which can vary,
`obviously, from each market that is created for the information. By
`way of example, information in the abstract has no value until a market
`is created for the information (i.e., the information becomes a
`commodity). The same information can be packaged in many
`different forms, each of which may have different values. Because
`information is easily digitized, one way to package the “same”
`information differently is by different levels of fidelity and discreteness.
`Value is typically bounded by context and consideration.
`Ex[1001] 9:43-54.
`
`A POSA would not find that the “value-added digital content” portion of the
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`LCS definition is patentably distinct (i.e., there is no structural difference between a
`
`system storing value-less digital information versus one storing value-added digital
`
`information).
`
` Ex[1004] ¶90.
`
` However, the patentee explicitly defined
`
`“value-added” as content for which a market exists, thus a POSA would understand
`
`“value-added digital content” in the definition of “local content server system (LCS)”
`
`to mean “digital content for which there is any demand.”
`
`The ’408 Patent describes the “local content server system (LCS)” as
`
`“creating a secure environment for digital content,” and further describes “a content
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`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
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`data set that is stored on the LCS.” Ex[1001] 2:55-56, 3:34-35.
`
`Therefore, a POSA would understand “LCS” to mean “a device or software
`
`application which can securely store a collection of value-added digital content,
`
`where value-added digital content is digital content for which there is any demand.”
`
`Ex[1004] ¶94.
`
`C.
`
`“LCS identification code” (Claims 1 and 8)
`Claims 1 and 8 recite “a local content server system (LCS)” comprising
`
`“an LCS address module storing an LCS identification code.” The Abstract and
`
`Summary of the Invention describe a local content server that includes “a
`
`programmable address module which can be programmed with an identification
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`code uniquely associated with the LCS.” Ex[1001] Abstract, 2-67-3:2. These
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`passages do not narrow the meaning of the LCS identification code or LCS address
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`module, other than to say that the LCS identification code is a code that identifies
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`the LCS and the LCS address module is a location on the LCS where the LCS
`
`identification code is programmed (i.e., stored). Ex[1004] ¶96. Based on these
`
`descriptions, a POSA would therefore understand the term “LCS identification code”
`
`to mean “a code that identifies the LCS.” Id. ¶97.
`
`“LCS domain” (Claims 1 and 8)
`D.
`The “DEFINITIONS” section defines “LCS Domain”:
`
`A secure medium or area where digital content can be stored, with an
`accompanying rule system for transfer of digital content in and out of
`the LCS Domain. The domain may be a single device or multiple
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`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
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`devices—all of which have some common ownership or control.
`Preferably, a LCS domain is linked to a single purchasing account.
`Inside the domain, one can enjoy music or other digital data without
`substantial limitations—as typically a license extends to all personal
`use.
`Ex[1001] 8:46-54.
`
`The Detailed Discussion of Invention explains as follows:
`
`The LCS Domain is a logical area inside which a set of rules governing
`content use can be strictly enforced. The exact rules can vary between
`implementations, but in general, unrestricted access to the content
`inside the LCS Domain is disallowed. The LCS Domain has a set of
`paths which allow content to enter the domain under different
`circumstances. The LCS Domain also has paths which allow the
`content to exit the domain.
`Ex[1001] 10:62-11:2.
`The LCS of FIG. 1 has a Rewritable media (such as a hard drive), a
`Read-Only media (such as a CD-ROM drive), and software to control
`access (which software, in effect, defines the “LCS Domain”).
`Ex[1001] 13:56-59.
`These descriptions are consistent with the patentee’s explicit definition of
`
`“LCS Domain.” Ex[1004] ¶101.
`
`Therefore, a POSA would understand that “LCS domain” means “a secure
`
`medium or area where digital content can be stored, with an accompanying rule
`
`system for transfer of digital content in and out of the [secure medium or area].”
`
`Ex[1004] ¶102.
`
`E. “content” (Claims 1, 6, 8, and 17)
`The term “content” appears in all challenged claims, in some cases multiple
`
`times within a claim.
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`Petition for Inter Partes Review of U.S. Patent No. 9,934,408
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`The “DEFINITIONS” section defines “content” to “refer generally to digital
`
`data, and may comprise video, audio, or any other data that is stored in a digital
`
`format.” Ex[1001] 8:34-37. And numerous other phrases are defined in terms of
`
`their interaction with “digital content.” See Ex[1001] 8:25-54, 9:3-24 (defining,
`
`“Local Content Server,” “Secure Electronic Content Distributor,” “Satellite Unit
`
`(SU),” “LCS Domain,” “Standard Quality,” “Low Quality,” and “High Quality”).
`
`The Background of the Invention describes that “a need exists for a new and
`
`improved system for protecting digital content against unauthorized copying and
`
`distribution.” Ex[1001] 2:49-51. The “local content server system (LCS)” is
`
`described as “creating a secure environment for digital content,” and that “[a]
`
`method for creating a secure environment for digital content for a consumer is
`
`disclosed.” Ex[1001] 2:55-56, 3:16-17. These descriptions are consistent with
`
`the patentee’s explicit definition of “content.” Ex[1004] ¶106.
`
`Thus, a POSA would understand the term “content” to mean “data in digital
`
`format.” Ex[1004] ¶107.
`
`VI. THE ASSERTED GROUND RENDERS ALL PETITIONED
`CLAIMS INVALID
`Claims 1, 6, 8, and 17 of the ’408 Patent are obvious over Yeung (Ex[1014])
`
`in view of Levine (Ex[1015]) and in further view of Rhoads (Ex[1016]). Therefore,
`
`a reasonable likelihood exists that the challenged claims are unpatentable.
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