UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DISH NETWORK L.L.C.,
`Petitioner,
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`v.
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`WISTARIA TRADING LTD.,
`Patent Owner
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`IPR2019-01305
`PATENT 9,934,408
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DISH NETWORK L.L.C.,
`Petitioner,
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`v.
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`WISTARIA TRADING LTD.,
`Patent Owner
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`
`
`
`IPR2019-01305
`PATENT 9,934,408
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`Table of Contents
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`IPR2019-01305
`U.S. Patent 9,934,408
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`1
`INTRODUCTION
`1
`THE ’408 PATENT
`1
`A. Overview of the ’408 Patent
`2
`B.
`Person of Ordinary Skill in the Art
` 2
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`
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`C.
`Claim Construction
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`
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`III. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER HAS
`RELIED ON REFERENCES ALREADY CONSIDERED BY THE
`PATENT OFFICE
`IV. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER HAS
`FAILED TO MEET ITS BURDEN
`CONCLUSION
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`I.
`II.
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`V.
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`3
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`7
`19
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`ii
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`IPR2019-01305
`U.S. Patent 9,934,408
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`Table of Authorities
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`Cases
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`Becton, Dickinson & Co. v. Braun MeIsungen, IPR2017-01586…………………..4
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`In re NuVasive, Inc., 841 F.3d 966 (Fed. Cir. 2016) ................................................. 8
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`Statutes
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`35 U.S.C. § 325(d)………………………………………………………………….3
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`35 U.S.C. § 103 .......................................................................................................... 7
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`35 U.S.C. § 316(e) ..................................................................................................... 7
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`iii
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`U.S. Patent 9,934,408
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`Table of Exhibits
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`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
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`1015
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`1016
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`1017
`1018
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`1019
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`1020
`1021
`1022
`1023
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`Exhibit Description
`1001
`United States Patent No. 9,934,408 by Scott A. Moskowitz and Mike
`W. Berry, entitled “Secure Personal Content Server” (the ’408 Patent)
`[RESERVED]
`[RESERVED]
`Declaration of Dr. Sandeep Chatterjee
`[RESERVED]
`[RESERVED]
`Curriculum Vitae of Dr. Sandeep Chatterjee
`File History for United States Patent Application No. 15/607,820
`[RESERVED]
`File History for United States Patent Application No. 10/049,101
`[RESERVED]
`[RESERVED]
`[RESERVED]
`United States 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”)
`United States Patent No. 6,345,100 by Earl Levine, entitled “Robust
`Watermark Method and Apparatus for Digital Signals” (“Levine”)
`United States 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
`
`1024
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`iv
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`1025
`1026
`1027
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`1028
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`1029
`1030
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`[RESERVED]
`[RESERVED]
`United States 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”)
`United States Patent No. 6,128,148 by Hans-Joachim Platte, et al.,
`entitled “Memory Device Having Multiple Memory Regions for a
`Recording Device” (“Platte”)
`[RESERVED]
`[RESERVED]
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`U.S. Patent 9,934,408
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`I.
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`INTRODUCTION
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`Patent Owner Wistaria Trading Ltd. submits this Preliminary Response to
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`the Petition for Inter Partes Review of United States Patent No. 9,934,408 (“the
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`’408 Patent”) filed by Petitioner DISH Network L.L.C. (“Petitioner”) (the
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`“Petition” or “Pet.”).
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`The Board should dismiss the Petition in its entirety at least because, as
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`Patent Owner shows below, (1) the Petition is based on references and arguments
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`previously considered by the United States Patent Office and (2) dispositive claim
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`elements are entirely missing from the combination of references asserted in each
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`of the Grounds of the Petition.
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`II. THE ’408 PATENT
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`A. Overview of the ’408 Patent
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`The ’408 Patent is titled “SECURE PERSONAL CONTENT SERVER.”
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`The ʼ408 Patent describes a local content server system (LCS) for creating a secure
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`environment for digital content. EX1001, Abstract. The LCS requests and
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`receives content that may be encrypted or scrambled. EX1001, 19:21-22. Once
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`received by the LCS, the LCS determines whether the content includes an indicia
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`indicating that the content is authentic or indicia indicating that the content lacks
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`authenticity. EX1001, 19:27-51. If the content does not include the indicia
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`indicating that the content is authentic nor the indicia indicating that the content
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`lacks authenticity, the LCS degrades the content and stores the degraded content in
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`a storage unit. EX1001, 19:27-51.
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`B.
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`Person of Ordinary Skill in the Art
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`Petitioner submits that a person of ordinary skill in the art (“POSA”) would
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`have at least a Bachelor of Science in Computer Science, and at least two to three
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`years of experience related to secure distribution of digitized information or a
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`related technology field, such as data integrity and security. See Petition, page 15.
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`For the purposes of determining whether to institute the Petition, Patent Owner
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`does not dispute Petitioner’s characterization of the level of ordinary skill in the
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`art, as it is not dispositive.
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`C. Claim Construction
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`i.
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`“Local Content Server System”
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`To the extent that “Local Content Server” is not expressly defined in the
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`’408 Patent, Patent Owner submits that the term “Local Content Server” should be
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`interpreted under its plain and ordinary meaning.
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`ii.
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`“LCS Identification Code”
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`To the extent that “LCS Identification Code” is not expressly defined in the
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`’408 Patent, Patent Owner submits that the term “LCS Identification Code” should
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`be interpreted under its plain and ordinary meaning.
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`iii.
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`“LCS Domain”
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`To the extent that “LCS Domain” is not expressly defined in the ’408 Patent,
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`Patent Owner submits that the term “LCS Domain” should be interpreted under its
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`plain and ordinary meaning.
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`iv.
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`“Content”
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`To the extent that “Content” is not expressly defined in the ’408 Patent,
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`Patent Owner submits that the term “Content” should be interpreted under its plain
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`and ordinary meaning.
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`III. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`HAS RELIED ON REFERENCES ALREADY CONSIDERED BY THE
`PATENT OFFICE
`
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`Under 35 U.S.C. § 325(d), the Board need not and should not second-guess
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`issues of patentability that the Patent Office addressed before issuing the ’295
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`Patent. Specifically, the statute authorizes rejecting grounds for inter partes
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`review that seek to reargue positions. See 35 U.S.C. § 325(d) (stating “…the
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`Director may … reject the petition or request because … the same or
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`substantially the same prior art or arguments were presented to the Office.”).
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`In petitioning for inter partes review, Petitioner cites to United States Patent
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`No. 6,668,246 (“Yeung”) and United States Patent No. 6,345,100 (“Levine”). See
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`Petition, page 3. However, the Patent Office already considered Yeung and Levine
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`and determined that the claims of the ’408 Patent (i.e., the challenged claims in the
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`Petition) are patentable over Yeung and Levine. EX1001, pages 3-4 (citing Yeung
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`and Levine as references considered by the Patent Office). Thus, under 35 U.S.C.
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`§ 325(d), the Board should deny the Petition because the Petition is based on the
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`same or substantially the same prior art or arguments considered by the Patent
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`Office in granting the ’408 Patent.
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`Petitioner acknowledges that the Examiner already considered Petitioner’s
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`cited art during prosecution. Pet. at 8–11. When determining whether to institute
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`under § 325(d), the Board considers “some common non-exclusive factors,”
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`including (1) similarities and material differences between the asserted art and the
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`art involved in examination; (2) the cumulative nature of the asserted art; (3) the
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`extent to which the asserted art was evaluated during examination; (4) the overlap
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`between the arguments made during examination and those made during IPR; (5)
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`whether Petitioner has pointed out sufficiently how the Examiner erred in its
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`evaluation of the asserted prior art; and (6) the extent to which additional
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`evidence and facts presented in the Petition warrant reconsideration of the prior art
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`or arguments. Becton, Dickinson & Co. v. Braun MeIsungen, IPR2017-01586,
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`Institution Decision at 16–18 (Paper No. 8) (PTAB Dec. 15, 2017) (emphasis in
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`original). Despite Petitioner’s conclusory statements to the contrary, on balance
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`these factors weigh against institution.
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`First, Petitioner attempts to sidestep the issue by characterizing the art
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`considered during prosecution as “transforming trial versions of digital materials
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`back to their original form” (Stringer) and “monitoring user access to a shared
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`image server” (Guedalia). Patent Owner respectfully submits that these
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`characterizations sound a lot like Petitioner’s characterization of its asserted art—
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`providing various quality levels of content (Yeung, Pet. at 13) and “using
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`watermarks to control content access” (Rhoads, Pet. at 15). Petitioner’s own
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`statements belie Petitioner’s attempt to make the asserted art new and shiny by
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`describing it as focusing on “encryption and watermarking techniques to control
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`content access and use during digital content distribution.” Pet. at 11. Despite
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`Petitioner’s protestations, the asserted art is cumulative of the art already
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`considered during prosecution.
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`Petitioner makes no effort to point to any error made by the Examiner during
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`prosecution. Pet. at 8–11. Petitioner does not point to any error made by the
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`Examiner in any part of prosecution, whether with respect to the asserted art or the
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`art that formed the express basis for rejections during prosecution. Id.
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`Contrary to Petitioner’s argument, the asserted art is substantially similar to,
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`and cumulative of, art considered by the Examiner during prosecution. For
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`example, similar to the asserted art in the Petition, United States Patent No.
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`5,341,429 (“Stringer”) and United States Patent No. 6,148,333 (“Guedalia”), which
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`were used as the basis for rejections during prosecution, are both directed to
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`watermarking original content for content distribution. See Stringer, 7:48-58; see
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`also Guedalia, 9:27-37. Thus, Petitioner’s conclusion that only the asserted art in
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`the Petition focuses “encryption and watermarking to control content access and
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`use during digital content distribution” is false, when, in fact, Stringer and
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`Guedalia are directed to the same subject matter.
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`Petitioner attempts to overcome this history by making the conclusory and
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`unsupported statement, that Yeung and Levine were not substantively evaluated
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`with respect to the ’408 Patent claims and thus each of these references is not
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`cumulative.” Pet. at 9. That is Petitioner’s position—that because Yeung and
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`Levine were not used as a basis for rejection during prosecution, the references are
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`“not cumulative.” Id. Petitioner’s position is contrary to law and precedent. Even
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`though Petitioner’s asserted art did serve as the basis for a rejection during
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`prosecution, the arguments made during prosecution have a high degree of overlap
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`with those Petitioner presents in the current Petition.
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`Petitioner admits that “the Examiner used a patent with a similar disclosure
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`to Rhoads…as a basis for rejection during the prosecution…” Id. at 9. However,
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`Petitioner states that the patent similar to Rhoads was not used in combination with
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`Yeung and Levine. Id. As stated above, Yeung and Levine are cumulative to the
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`art used by the Examiner during prosecution. Thus, Petitioner’s argument has no
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`merit.
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`Finally, Petitioner argues that the mere existence of its expert’s testimony is
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`sufficient to warrant reconsideration of the cumulative asserted art. Pet. at 9. As the
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`Board has noted, the mere existence of expert testimony is not enough. Becton
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`Dickinson, Institution Decision at 27–28.
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`The Board should reject Petitioner’s argument that the asserted art—already
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`considered by the Examiner during prosecution—should be reconsidered.
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`Petitioner’s argument boils down to the fact that the asserted art was never
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`explicitly considered as a basis for rejection during prosecution. However, as
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`detailed above, the arguments made during prosecution and those made in the
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`Petition are substantively identical. The Examiner has already rejected these
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`arguments and the Board should exercise its discretion to not waste the Board’s
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`resources reconsidering rejected arguments. See also 35 U.S.C. § 37 C.F.R.
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`§ 42.108(a).
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`IV. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`HAS FAILED TO MEET ITS BURDEN
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`
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`Petitioner has the burden to show that the challenged claims are
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`unpatentable. 35 U.S.C. § 316(e). When a Petitioner argues that a claim is
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`unpatentable as obvious under 35 U.S.C. § 103, the Petitioner must show that each
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`and every element of the challenged claims is rendered obvious by the combination
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`of Petitioner’s cited art. The Board may not craft new grounds of unpatentability
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`not advanced by the petitioner. In re NuVasive, Inc., 841 F.3d 966, 971-72 (Fed.
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`Cir. 2016).
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`Petitioner challenges independent claims 1 and 8 of the ’408 Patent and
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`dependent claims 6 and 17 of the ’408 Patent as being obvious Yeung, in view of
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`Levine, and in further view of United States Patent No. 6,311,214 (“Rhoads”). See
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`Petition, page 19. Petitioner has failed to meet its burden to demonstrate that the
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`challenged independent claims (i.e., claims 1 and 8) are obvious under 35 U.S.C. §
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`103.
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`A. Petitioner has failed to show that a reasonable likelihood exists that
`the challenged claims are obvious over Yeung in view of Levine and in further
`view of Rhoads
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`Ground 1: Claims 1 and 6 Are Not Obvious Over Yeung in view of Levine
`and in further view of Rhoads
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`Patent Owner respectfully submits that an inter partes review of the ’408
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`Patent should not be instituted because Yeung, Levine, and Rhoads, individually or
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`in combination, fail to disclose or suggest each and every element of independent
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`claim 1 of the ’408 Patent. Therefore, there is no likelihood that independent claim
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`1 of the ’408 Patent is obvious over Yeung in view of Levine and in further view
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`of Rhoads. Claim 1 of the ’408 Patent recites (emphasis added for missing
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`element):
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`U.S. Patent 9,934,408
`A local content server system (LCS) for providing conditional access to
`content, said LCS comprising:
`an LCS address module storing an LCS identification code;
`an LCS storage unit for storing content in encrypted or scrambled digital
`form in non-transient memory;
`an LCS communications port designed to receive content in the form of
`digital data;
`an LCS domain processor for processing digital data, wherein said LCS
`domain processor is configured to:
`(1) determine if encrypted or scrambled first content received by said LCS
`communications port contains indicia indicating authenticity and
`store said first content in said LCS storage unit in encrypted or
`scrambled digital form when said LCS domain processor determines
`that said encrypted or scrambled first content received by said LCS
`communications port contains indicia indicating authenticity;
`(2) determine if encrypted or scrambled first content received by said LCS
`communications port contains indicia indicating lack of authenticity
`and to not store said first content in said LCS storage unit when said
`LCS domain processor determines that said encrypted or scrambled
`first content received by said LCS communications port contains
`indicia indicating lack of authenticity; and
`(3) determine if encrypted or scrambled first content received by said LCS
`communications port contains neither one or indicia indicating
`authenticity and indicia indicating lack of authenticity and degrade
`said first content and store the degraded first content in said LCS
`storage unit when said LCS domain processor determines that said
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`first content contains neither one of indicia indicating authenticity
`and indicia indicating lack of authenticity.
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`Yeung, Levine, and Rhoads, individually or in combination, fail to disclose
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`or suggest a local content server system (LCS) domain processor that is configured
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`to degrade said first content and store the degraded first content in said LCS
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`storage unit when said LCS domain processor determines that said first content
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`contains neither one of indicia indicating authenticity and indicia indicating lack of
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`authenticity, as in claim 1.
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`As explained above, in determining whether to grant the ’408 Patent, the
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`Patent Office considered Yeung and Levine and determined that the independent
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`claims are not rendered obvious over Yeung and Levine. EX1001, pages 3-4
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`(citing Yeung and Levine as references considered by the Patent Office).
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`Therefore, two of Petitioner’s three cited references have previously been
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`considered and rejected by the Patent Office as rendering the claims of the ’408
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`Patent obvious.
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`Yeung describes a client platform 120 that includes a memory unit 410, a
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`data descrambling unit 420, a visual/perceptual descrambling unit 430, a
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`watermark extraction unit 440, a mapping function 472, and a content player 450.
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`EX1014, FIG. 4. A diagram of the client platform 120 is illustrated below.
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`According to Yeung, a server platform 110 delivers content 290 to the client
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`platform 120, and the client platform 120 stores the content 290 in the memory unit
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`410. EX1014, 3:57-63, 7:36-37. In the form of data blocks, the content 290 is
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`provided from the memory unit 410 to the data descrambling unit 420, the
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`visual/perceptual descrambling unit 430, and the watermark extraction unit 440
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`(collectively referred to as “content protection mechanisms”). EX1014, 7:44-49.
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`A serial number 155 (of a processor of the client platform 120) and auxiliary
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`information associated with the processor are input into the mapping function 472
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`to produce respective keys 471. EX1014, 7:55-62. If the keys 471 are replicates
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`of keys produced by the server platform 110, one key 471 enables the data
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`descrambling unit 420 to perform a data descrambling scheme on the data blocks
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`(i.e., the content 290) and the other key 471 enables the visual/perceptual
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`descrambling unit 471 to perform a visual/perceptual descrambling scheme on the
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`data blocks. EX1014, 7:41-67.
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`Yeung fails to disclose or suggest determining that the content 290
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`includes neither one of indicia indicating authenticity and indicia indicating
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`lack of authenticity. Additionally, Yeung fails to disclose or suggest degrading
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`the content 290. Rather, Yeung teaches away from degrading the content 290.
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`For example, Yeung teaches extracting watermarks from the content 290 and
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`descrambling the content 290. EX1014, 7:41-67 and 8:58-59. Patent Owner
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`respectfully submits that extracting watermarks from the content 290 and
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`descrambling the content 290 is the opposite of degrading the content 290. Thus,
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`because Yeung fails to disclose the above-identified features and teaches away
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`from degrading the content 290, it would be obvious to a POSITA that Yeung fails
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`to disclose or suggest degrading the content 290 in response to a determination
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`that the content 290 includes neither one of indicia indicating authenticity and
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`indicia indicating lack of authenticity. Therefore, Yeung fails to disclose or
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`suggest a local content server system (LCS) domain processor that is configured to
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`degrade said first content and store the degraded first content in said LCS storage
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`unit when said LCS domain processor determines that said first content contains
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`neither one of indicia indicating authenticity and indicia indicating lack of
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`authenticity, as in claim 1.
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`Levine describes a watermark decoder 1300 that “processes [a] watermarked
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`audio signal 1310 to decode a watermark candidate 1314” from the watermarked
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`audio signal 1310 to verify if the watermarked candidate 1314 is “equivalent to [a]
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`preselected watermark data of interest.” EX1015, 19:21-25. A diagram of the
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`watermark decoder 1300 is illustrated below.
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`
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`According to Levine, to determine whether the watermark candidate 1314 is
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`the equivalent to the preselected watermark of interest, the watermark decoder
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`1300 compares the watermark candidate 1314 to expected watermark data 1514.
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`EX1015, 23:34-54. Based on the comparison, the watermark decoder 1300 can
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`determine a source of the watermarked audio signal 1310 and identify whether the
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`watermarked audio signal 1310 is an unauthorized copy of a watermark signal 120.
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`EX1015, 23:34-54. Thus, in Levine, an active comparison process is performed on
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`the watermark candidate 1314 at the watermark decoder 1300 to determine
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`whether the watermark audio signal 1310 is an unauthorized copy of the
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`watermark signal 120. EX1015, 23:34-54.
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`However, Levine fails to disclose or suggest that the watermark decoder
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`1300 degrades the watermark audio signal 1310. Further, Levine fails to disclose
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`or suggest that the watermark decoder 1300 degrades the watermark audio
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`signal 1310 in response to a determination that the watermark signal 1310
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`includes neither one of indicia indicating authenticity and indicia indicating
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`lack of authenticity. Therefore, Levine fails to disclose or suggest a local content
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`server system (LCS) domain processor that is configured to degrade said first
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`content and store the degraded first content in said LCS storage unit when said
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`LCS domain processor determines that said first content contains neither one of
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`indicia indicating authenticity and indicia indicating lack of authenticity, as in
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`claim 1.
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`Petitioner relies on a hired expert witness to inaccurately interpret Rhoads as
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`teaching the claimed feature of “degrad[ing] said first content.” See Petition, page
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`52. Rhoads describes watermarked music that includes embedded watermark data
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`that indicates the types of devices on which the watermarked music can be played.
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`EX1016, 51:12-26. For example, the embedded watermark data can indicate
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`particular units that are authorized to play the watermarked music. EX1016,
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`51:30-33. Additionally, the watermarked music can “identify particular
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`performance quality criteria (e.g., two channel, 16-bit audio at 44.1 kHz sample
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`rate, or lower quality)” for playback of the watermarked music. EX1016, 51:35-
`
`39.
`
`Petitioner’s hired expert incorrectly opines that because the Rhoads
`
`discloses different performance quality criteria, such as different sampling or
`
`playback rates, that Rhoads teaches degrading the watermarked music. Patent
`
`Owner respectfully submits that Rhoads fails to disclose or suggest degrading the
`
`watermarked music and merely states that the embedded watermark data indicates
`
`a playback rate, some playback rates having lesser quality than others. EX1016,
`
`51:35-39. This is no different from Rhoads teaching that the embedded watermark
`
`data indicates the types of devices on which the watermarked music can be played.
`
`EX1016, 51:12-26. If the logic of Petitioner’s hired expert were true, Rhoads
`
`would also teach degrading the watermarked music so it couldn’t be played on a
`
`device not identified by the embedded watermark data. Of course, Rhoads does
`
`not teach this. Similarly, Rhoads does not teach degrading the watermarked
`
`music. Rhoads merely teaches that the embedded watermark data indicates the
`
`playback rate.
`
`15
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`IPR2019-01305
`U.S. Patent 9,934,408
`Furthermore, Rhoads fails to disclose or suggest that the watermarked music
`
`is degraded in response to a determination that the watermarked music
`
`includes neither one of indicia indicating authenticity and indicia indicating
`
`lack of authenticity. Therefore, Rhoads fails to disclose or suggest a local content
`
`server system (LCS) domain processor that is configured to degrade said first
`
`content and store the degraded first content in said LCS storage unit when said
`
`LCS domain processor determines that said first content contains neither one of
`
`indicia indicating authenticity and indicia indicating lack of authenticity, as in
`
`claim 1.
`
`Petitioner attempts one final “Hail Mary” by arguing that Yeung discloses
`
`“degrad[ing] said first content.” See Petition, pages 52-53. However, as
`
`determined by the Patent Office when considering Yeung before granting the ’408
`
`Patent, Petitioner’s argument has zero merit. In particular, Petitioner incorrectly
`
`argues that because Yeung discloses “[i]n the event that the key for decryption
`
`(key 471) is properly generated but a key to visually descramble content 290 (key
`
`472) cannot be properly generated, a lesser quality of content 290 is played back,”
`
`that Yeung teaches degrading the content 290. See Petition, page 53 (citing
`
`EX1014, 8:6-9). As shown, below, this is simply incorrect.
`
`Yeung describes that if the keys 471 are replicates of keys produced by the
`
`server platform 110, one key 471 enables the data descrambling unit 420 to
`
`16
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`IPR2019-01305
`U.S. Patent 9,934,408
`perform a data descrambling scheme on the data blocks (i.e., the content 290) and
`
`the other key 471 enables the visual/perceptual descrambling unit 471 to perform a
`
`visual/perceptual descrambling scheme on the data blocks. EX1014, 7:41-67.
`
`Thus, in Yeung, the client platform 120 decrypts and descrambles the content 290
`
`if the keys 471 are replicates of the keys produced by the server platform 110.
`
`EX1014, 7:41-67. The client platform 120 does not degrade the content 290 if the
`
`keys 471 are not replicates. Rather, decryption and descrambling is merely
`
`bypassed. Thus, the data descrambling unit 420 and the visual/perceptual
`
`descrambling unit 471 do not degrade the content 290 in any scenario, the content
`
`290 just remains unchanged if the keys 471 are not replicates.
`
`Therefore, as explained above, Yeung, Levine, and Rhoads, individually or
`
`in combination, fail to disclose or suggest a local content server system (LCS)
`
`domain processor that is configured to degrade said first content and store the
`
`degraded first content in said LCS storage unit when said LCS domain processor
`
`determines that said first content contains neither one of indicia indicating
`
`authenticity and indicia indicating lack of authenticity, as in claim 1. This
`
`conclusion is consistent with the view of the Patent Office, as the Patent Office has
`
`already determined that claims of the ’408 Patent are not obvious over Yeung in
`
`view of Levine. EX1001, pages 3-4 (citing Yeung and Levine as references
`
`considered by the Patent Office).
`
`17
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`
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`IPR2019-01305
`U.S. Patent 9,934,408
`Petitioner failed to point to any portion of Yeung, Levine, and Rhoads as
`
`disclosing or suggesting a local content server system (LCS) domain processor that
`
`is configured to degrade said first content and store the degraded first content in
`
`said LCS storage unit when said LCS domain processor determines that said first
`
`content contains neither one of indicia indicating authenticity and indicia
`
`indicating lack of authenticity, as recited by claim 1. Petitioner has therefore failed
`
`to meet its burden to demonstrate a prima facie case of obviousness for
`
`independent claim 1. Claim 6 depends from claim 1. Petitioner has therefore
`
`failed to meet its burden to demonstrate a prima facie case of obviousness for
`
`claim 6, at least based on its dependence from claim 1.
`
`Based on the above analysis, in conjunction with the previous analysis and
`
`consideration of Yeung and Levine by the Patent Office during prosecution of the
`
`’408 Patent, there is no likelihood that the challenged claims of the ’408 Patent are
`
`obvious over Yeung in view of Levine and in further view of Rhoads. Therefore,
`
`the Board should deny the Petition.
`
`Ground 1: Claims 8 and 17 Are Not Obvious Over Yeung in view of Levine
`and in further view of Rhoads
`
`Independent claim 8 includes features that are analogous to the features of
`
`independent claim 1. Petitioner has therefore failed to meet its burden to
`
`demonstrate a prima facie case of obviousness for independent claim 8. Claim 17
`
`depends from claim 8. Petitioner has failed to meet its burden to demonstrate a
`
`18
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`IPR2019-01305
`U.S. Patent 9,934,408
`prima facie case of obviousness for claim 17, at least based on its dependence from
`
`independent claim 13.
`
`Based on the above analysis, in conjunction with the previous analysis and
`
`consideration of Yeung and Levine by the Patent Office during prosecution of the
`
`’408 Patent, there is no likelihood that the challenged claims of the ’408 Patent are
`
`obvious over Yeung in view of Levine and in further view of Rhoads. Therefore,
`
`the Board should deny the Petition.
`
`V. CONCLUSION
`
`For at least the reasons set forth above, Patent Owner respectfully requests
`
`that all challenges in the present IPR be dismissed.
`
`Date: October 28, 2019
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Christopher M. Scurry
`Christopher M. Scurry
`Reg. No. 66,870
`Kenton R. Mullins
`Reg. No. 36,331
`MCDONNELL, BOEHNEN, HULBERT, &
`BERGHOFF, L.L.P.
`300 South Wacker Drive
`Chicago, Illinois 60606
`Telephone: (312) 913-0001
`Facsimile: (312) 913-0002
`
`Attorneys for Patent Owner
`
`
`
`19
`
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`
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`IPR2019-01305
`U.S. Patent 9,934,408
`CERTIFICATE OF COMPLIANCE
`
`
`
`Pursuant to 37 C.F.R. § 42.24(d), we certify that this Preliminary Response
`
`to Petition complies with the type-volume limitation of 37 C.F.R. § 42.24(b)
`
`because it contains fewer than the limit of 14,000 words, as determined by the
`
`word-processing program used to prepare the brief, excluding the parts of the brief
`
`exempted by 37 C.F.R. § 42.24(a)(1).
`
`Date: October 28, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Christopher M. Scurry
`Christopher M. Scurry
`Reg. No. 66,870
`MCDONNELL, BOEHNEN,
`HULBERT, & BERGHOFF, L.L.P.
`300 South Wacker Drive
`Chicago, Illinois 60606
`Telephone: (312) 913-0001
`Facsimile: (312) 913-0002
`
`
`
`
`
`
`i
`
`
`
`IPR2019-01305
`U.S. Patent 9,934,408
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that an electronic copy of the
`
`foregoing PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO 37
`
`C.F.R. § 42.107(a) along with any accompanying exhibits was served on Petitioner’
`
`counsel of record at the following address:
`
`Eliot D. Williams
`G. Hopkins Guy III
`Baker Botts L.L.P.
`1001 Page Mill Road, Bld. 1, Suite 200
`Palo Alto, California 94304-1007
`650.739.7500
`
`Ali Dhanani
`Baker Botts L.L.P.
`910 Louisiana St.
`Houston, TX 77002
`713.229.1108
`
`Date: October 28, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Christopher M. Scurry
`Christopher M. Scurry
`MCDONNELL, BOEHNEN,
`HULBERT, & BERGHOFF, L.L.P.
`300 South Wacker Drive
`Chicago, Illinois 60606
`Telephone: (312) 913-0001
`Facsimile: (312) 913-0002
`
`
`
`ii
`
`
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