UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`U.S. Patent No. 7,475,246
`: Attorney Docket No. 081841.0119
`In Re:
`Inventor: Moskowitz, Scott A.;
`
`:
`Berry, Mike W.
`:
`
`
`Aug. 4, 2000
`:
`
`
`Filed:
`Jan. 6, 2009
`
`
`: IPR No.: IPR2019-01357
`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, 20, 21, 24, AND
`25 OF U.S. PATENT NO. 7,475,246 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. 7,475,246
`
`TABLE OF CONTENTS
`
`Page
`I.  MANDATORY NOTICES, STANDING, AND FEES ............................. 1 
`II.  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.  Grounds For Challenge (37 C.F.R. § 42.104(b)) ..................................... 3 
`III.  OVERVIEW OF THE ’246 PATENT ........................................................ 4 
`A.  Summary of the Claimed Subject Matter ................................................ 4 
`B.  Prosecution History of the ’246 Patent .................................................... 6 
`C.  Priority ..................................................................................................... 7 
`IV.  SUMMARY OF PRIOR ART AND REFERENCES RELIED ON ........ 8 
`A.  Brief Summary of Yeung (Ex[1014]) .................................................... 11 
`B.  Brief Summary of Lee (Ex[1017]) ......................................................... 12 
`C.  Brief Summary of Downs (Ex[1030]) ................................................... 16 
`V.  CLAIM CONSTRUCTION ....................................................................... 17 
`A.  Level of Ordinary Skill in the Art .......................................................... 17 
`B.  “local content server system (LCS)” or “Local Content Server
`(LCS)” (Claims 1, 20, 24) ................................................................... 17 
`C.  “Secure Electronic Content Distributor (SECD)” (Claim 1) ................. 19 
`D.  “content” (Claims 1, 20, 21, 24, and 25) ............................................... 19 
`E. 
`“predetermined quality level” (Claims 1, 20, and 24) ........................... 20 
`F. 
`“open watermark” (Claim 21) and “robust open watermark” (Claim
`25) .......................................................................................................... 21 
`G.  “Satellite Unit” (Claims 20 and 24) ....................................................... 22 
`H.  “authorized” (Claims 1, 20, and 24) ...................................................... 23 
`VI.  A REASONABLE LIKELIHOOD EXISTS THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE ............................. 23 
`A.  Ground 1: The ’246 Patent Claims 1, 20, 21, 24, and 25 are obvious
`over Yeung (Ex[1014]) in view of Lee (Ex[1017]) ............................... 25 
`
`i
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`B.  Ground 2: The ’246 Patent Claims 1, 20, 21, 24, and 25 are obvious
`over Yeung (Ex[1014]) and Lee (Ex[1017]) in view of Downs
`(Ex[1030]) .............................................................................................. 68 
`VII.  CONCLUSION ........................................................................................... 74 
`
`
`
`
`
`ii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`Exhibit No.
`1001
`1002
`1003
`
`LIST OF EXHIBITS
`
`Description of Documents
`
`[RESERVED]1
`
`[RESERVED]
`
`U.S. Patent No. 7,475,246 by Scott A. Moskowitz and Mike W.
`Berry, entitled “Secure personal content server”
`
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`
`1013
`
`1014
`
`[RESERVED]
`
`[RESERVED]
`
`Declaration of Dr. Sandeep Chatterjee for U.S. Patent No. 7,475,246
`
`Curriculum Vitae of Dr. Sandeep Chatterjee
`
`[RESERVED]
`
`[RESERVED]
`
`File History for U.S. Patent Application No. 10/049,101
`
`[RESERVED]
`
`U.S. Provisional Application No. 60/213,489 by Scott A. Moskowitz
`and Mike W. Berry, entitled “A Secure Personal Content Server”
`
`U.S. Provisional Application No. 60/147,134 by Scott A. Moskowitz
`and Mike W. Berry, entitled “A Secure Personal Content Server”
`
`U.S. Patent No. 6,668,246 by Minerva Ming-Yee Yeung, entitled
`“Multimedia data delivery and playback system with multi-level
`content and privacy protection” (“Yeung”)
`
`1015
`
`[RESERVED]
`
`
`1 Exhibits marked “RESERVED” are reserved for additional Inter Partes Review
`Petitions challenging related patents owned by the same entity.
`
`iii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`Exhibit No.
`1016
`1017
`
`1018
`
`1019
`
`1020
`1021
`1022
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`Description of Documents
`
`[RESERVED]
`
`U.S. Patent No. 6,950,941 by Chang-hyi Lee et al., entitled “Copy
`protection system for portable storage media” (“Lee”)
`
`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”)
`
`Original 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
`
`Red-line view showing changes between disclosure filed in U.S.
`Patent Application No. 10/049,101 and disclosure filed in U.S.
`Provisional Application No. 60/213,489
`
`Red-line view showing changes between disclosure filed in U.S.
`Patent Application No. 10/049,101 and disclosure filed in U.S.
`Provisional Application No. 60/147,134
`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”
`
`iv
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`Exhibit No.
`1028
`
`1029
`
`1030
`
`Description of Documents
`
`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”)
`
`Blue Spike Opening Claim Construction Brief, Blue Spike LLC et al.
`v. Vizio et al., No. 8:17-CV-1172-DOC-KES (C.D. Cal.)
`
`U.S. Patent No. 6,226,618 by Edgar Downs et al., entitled
`“Electronic content delivery system” (“Downs”)
`
`v
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`I. MANDATORY NOTICES, STANDING, AND FEES
`
`Real Party in Interest: 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: U.S. Patent No. 7,475,246 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. 7,475,246 against Petitioner in the District
`
`Court Litigation. Id. 10-15. Petitioner asserted U.S. Patent No. 7,475,246 against
`
`Petitioner in an earlier lawsuit, entitled, Blue Spike LLC v. DISH Network
`
`Corporation et al., Case Nos. 6:18-CV-00333-RWS-KNM and 1:18-
`
`CV-01512-LPS-CJB (the “Prior Litigation”). See Ex. 1019, at 85-93. This
`
`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.
`
`Petitioner is also filing a separate IPR Petition challenging claims 17 and 31 of
`
`the ’246 Patent in parallel with this petition.
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`Lead Counsel and Request for Authorization: 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: Service information is as follows: Baker Botts L.L.P.,
`
`1001 Page Mill Rd., Palo Alto, CA 94304-1007 Tel. 650 739 7500; Fax 650-736-
`
`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).
`
`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
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`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, 20, 21, 24, and 25 of U.S. Patent No. 7,475,246
`
`(the “’246 Patent”). Petitioner certifies that the ’246 Patent is eligible for inter
`
`partes review and that Petitioner is not barred or estopped from raising grounds
`
`identified herein.
`
`B.
`Publications Relied Upon
`The ’246 Patent is not entitled to a priority date before August 4, 1999.
`
`Petitioner relies upon the following patents and publications:
`
`Exhibit 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).
`
`Exhibit 1017 — U.S. Patent No. 6,950,941 by Lee et al., entitled “Copy
`
`protection system for portable storage media” (“Lee”), filed on April 30,1999 and
`
`issued on September 27, 2005. Lee is available as prior art under 35 U.S.C. §102(e).
`
`Exhibit 1030 — U.S. Patent No. 6,226,618 by Downs et al., entitled
`
`“Electronic content delivery system” (“Downs”), filed on August 13, 1998, and
`
`issued on May 1, 2001. Downs is available as prior art under 35 U.S.C. §102(e).
`
`C. Grounds For Challenge (37 C.F.R. § 42.104(b))
`Petitioner requests cancellation of the claims on the following grounds:
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`1.
`
`2.
`
`Claims 1, 20, 21, 24, and 25 are obvious over Yeung in view of Lee.
`
`Claims 1, 20, 21, 24, and 25 are obvious over Yeung in view of Lee
`
`and Downs.
`
`III. OVERVIEW OF THE ’246 PATENT
`
`A.
`
`Summary of the Claimed Subject Matter
`
`The ’246 Patent “relates to the secure distribution of digitized value-added
`
`information, or media content ...” Ex[1003] 1:48-49.
`
`The system of the ’246 Patent includes a local content server (“LCS”) for
`
`storing content, authentication of content, enforcement of export rules and
`
`watermarking. Id. 11:40-42. FIG. 1 illustrates a sample LCS system:
`
`’246 Patent, Ex[1003] FIG. 1.
`
`
`
`4
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`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. 10:19-26.
`
`The system may include a Satellite Unit (SU), a portable device that can accept
`
`digital content from an LCS and that can play or make playable the content. Id.
`
`7:63-66, FIG. 1.
`
`One feature of the system is a level of security for high-quality content while
`
`providing unsecured content at a degraded quality level. Id. 10:62-64. FIG. 2
`
`reproduced below illustrates that content that can be validated (e.g., by a watermark)
`
`can enter the LCS domain, content that can be validated but belongs to a different
`
`LCS domain is excluded, and unvalidatable content will enter subject to quality
`
`degradation. Id. 10:39-46, 10:62-11:9. If a watermark is absent, the LCS may
`
`read the content as “legacy” content. Id. 17:17-19.
`
`5
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`’246 Patent, Ex[1003] FIG. 2
`
`B.
`
`Prosecution History of the ’246 Patent
`
`
`
`The application issuing as the ’246 Patent was filed July 23, 2002 as U.S.
`
`Patent Application No. 10/049,101 (the “101 Application”), a U.S. National Stage
`
`Entry of PCT Application No. PCT/US00/21189, filed August 4, 2000. The ’101
`
`Application and the ’246 Patent claim priority to U.S. Provisional Application Nos.
`
`60/147,134 (the ’134 Provisional) filed August 4, 1999, Ex[1013], and 60/213,489
`
`(the ’489 Provisional) filed June 23, 2000, Ex[1012].
`
`During prosecution of the ’101 Application, Applicant amended the claims to
`
`recite “if the digital content is not authorized for use by the LCS, accepting the digital
`
`content at a predetermined quality level, said predetermined quality level having
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`been set for legacy content.” Ex[1010] 189-201. In response to a rejection,
`
`Applicant argued that the prior art fails to disclose how to identify, differentiate, or
`
`authorize legacy content—e.g., material already possessed by users. The Examiner
`
`allowed the claims, purportedly because the prior art lacked the element “and if the
`
`digital content is not authorized for use by the LCS, accepting the digital content at
`
`a predetermined quality level, said predetermined quality level having been set for
`
`legacy content.” Ex[1010] 2499.
`
`C.
`
`Priority
`
`The earliest claimed priority date for the ’246 Patent is August 4, 1999 based
`
`on the filing date of the ‘134 Provisional. At least claim 1 of the ’246 Patent is
`
`entitled to a priority date of no earlier than August 4, 2000, because that claim
`
`includes at least one limitation directed to subject matter not disclosed in the ’134
`
`and ’489 Provisionals.
`
`The ’101 Application added significant subject matter not disclosed in
`
`the ’134 and ’489 Provisionals. Exhibits 1025 and 1026 are comparisons between
`
`the ’101 Application and the ’489 and ‘134 Provisionals, respectively. New
`
`portions are double underlined and deletions are struck-through. The comparison
`
`shows that claim 1 recites at least one element disclosed no earlier than the ’101
`
`Application. For example, there is no disclosure of an “LCS communications port,”
`
`and “programmable address module,” which are elements of claim 1. See, e.g.,
`
`Ex[1025] 3; Ex[1026] 2.
`
`7
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`Petitioner’s expert agrees that claim 1 is entitled to a priority date no earlier
`
`than August 4, 2000, and that claims 20, 21, 24, and 25 are entitled to a priority date
`
`no earlier than August 4, 1999. Ex[1006] ¶¶52-56.
`
`IV. SUMMARY OF PRIOR ART AND REFERENCES RELIED ON
`
`As Dr. Chatterjee explains, the Digital Rights Management (DRM) concepts
`
`claimed in the ’246 Patent were well-known in the prior art. Ex[1006] ¶¶28-44.
`
`By the earliest claimed priority date of the ’246 Patent, numerous electronic
`
`companies had developed systems that protected audio and video content against
`
`unauthorized copying, use, and distribution. Id. ¶40. “These systems applied
`
`various combinations of familiar encryption and watermarking techniques to the
`
`now rapidly growing field of electronic commerce.” Id. In 1998, over 100
`
`consumer and electronic companies formed the Secure Digital Music Initiative
`
`(SDMI) to consider the advantages of encryption and watermarking digital content
`
`protection techniques already in existence and agree on a common standard. Id.
`
`¶42. Therefore, by the earliest filing date cited in the ’246 Patent, combinations of
`
`encryption and watermarking for DRM were well-developed and had matured to a
`
`standard.
`
`Dr. Chatterjee explains that systems that made a plurality of versions of
`
`content available to a user were well-known prior to the alleged invention of the ’246
`
`Patent. Id. ¶44. U.S. Patent No. 6,128,148 to Platte, et. al. (“Platte”) discloses a
`
`8
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`videocassette system capable of playing 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.
`Ex[1028] 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 ’246
`
`Patent. Ex[1006] ¶44.
`
`Prior art references Yeung, Lee, and Downs illustrate that the ’246 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) for the
`
`following reasons. See Becton, Dickinson & Co. v. Braun Melsungen AG,
`
`IPR203101586, slip op. at 16-18 (Paper 8) (PTAB Dec. 15, 2017) (informative).
`
`First, although the Applicant cited Yeung in an Information Disclosure
`
`Statement during the prosecution of the ’246 Patent, it was listed together with over
`
`9
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`300 references, and was not substantively evaluated with respect to the ’246 Patent
`
`claims and is therefore not cumulative. Ex[1010] 16-18, 177.
`
`Second, expert testimony (Ex[1006]) has been submitted with this Petition,
`
`which was not available to the Examiner, explaining how a POSA would understand
`
`Yeung, Lee, and Downs and how and why a POSA would combine them.
`
`Therefore, this Petition presents additional evidence and facts that are not cumulative
`
`of the arguments considered during ex parte persecution. Becton, Dickinson,
`
`IPR2017-01586, at 17-18.
`
`Finally, there are material differences between these references and the prior
`
`art involved during examination: U.S. Patent No. 6,522,769 to Rhoads et al. (“’769
`
`Patent”), U.S. Patent No. 6,493,457 to Quackenbush et al. (“’457 Patent”), 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[1010] 149-175. The ’769 Patent is
`
`directed to reconfiguring a watermark detector and the ’457 Patent is directed to
`
`insertion of an imperceptible watermark in the compressed domain that can be
`
`detected without a reference. Id. 206-207. Stringer is directed to transforming
`
`trial versions of digital materials to their original form upon purchase and Guedalia
`
`is directed to monitoring user access to a shared image server. Id. 318-325. As
`
`shown below, Yeung, Lee, and Downs focus on the use of encryption and/or
`
`10
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`watermarking to control content access and use during digital content distribution.
`
`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 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 the platforms.
`
`Yeung, Ex[1014] FIG. 1
`
`
`
`11
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`FIG. 4 illustrates the flow of content 290 between the client platform 120 and
`
`the content player 450.
`
`
`
`Yeung, Ex[1014] FIG. 4
`Yeung’s client platform distributes and protects content through the
`
`implementation of “content protection mechanisms,”
`
`including watermark
`
`extraction 440 and watermark insertion 280. Ex[1014] 1:53-54, FIG. 4. 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 Lee (Ex[1017])
`
`Lee is entitled “Copy Protection System for Portable Storage Media” and is
`
`“generally related to encryption processes and apparatus.” Ex[1017] 1:16-17.
`
`Lee explains “[T]here is a need for a technique to preserve transmission security of
`
`12
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`revenue bearing information while restricting access to the information by
`
`unauthorized entities ….” Ex[1017] 1:4-6.
`
`To address this need, Lee discloses an “encryption processes and apparatus”
`
`with three main components: (1) an internet service provider (ISP) 130 as a content
`
`supplier, (2) a licensed SDMI (secure digital music initiative) compliant module
`
`(LCM) 140 as a first content output unit, and (3) a portable device (PD) 150 as a
`
`second content output unit. See, e.g., Ex[1017] FIG. 1. The encryption processes
`
`and apparatus “employ user information in the generation and use of multiple
`
`cryptographic keys during the transmission of digital content to the user.” Ex[1017]
`
`2:53-56. It also “provid[es] copy protection during downloading and during
`
`uploading of the digital contents.” Ex[1017] 3:37-38. FIG. 1 illustrates the
`
`architecture and the flow of content between the ISP, LCM, and PD:
`
`13
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`Lee, Ex[1017] FIG. 1
`
`
`
`Lee discloses two right management components for implementation of right
`
`management rules, a Right Management System Database (RMS-DB) 143
`
`maintained by the LCM and an “SDMI compliant file format.”
`
`FIG. 5 illustrates LCM maintenance of the Right Management System
`
`Database 143 (RMS-DB) in the LCM 140.
`
`14
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`Lee, Ex[1017] FIG. 5
`
`
`
`
`15
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`FIG. 6 illustrates an SDMI compliant file format:
`
`
`
`Lee, Ex[1017] FIG. 6
`FIG. 6 illustrates how the information contained in the header of the SDMI
`
`compliant file format manages the rights and usage of the accompanying encrypted
`
`content contained in the file body 630.
`
`Together, the RMS-DB of the LCM and the file format provide “rules to
`
`transfer contents securely” between the ISP, LCM, and PD and manage playback.
`
`Ex[1017] 11:8.
`
`C.
`
`Brief Summary of Downs (Ex[1030])
`
`Downs is entitled “Electronic content delivery system” and is related to “a
`
`method and apparatus of securely providing data to a user’s system.” Ex[1030]
`
`Abstract. Downs' system “is a technical platform that encompasses the technology,
`
`16
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`specifications, tools, and software needed for the secure delivery and rights
`
`management of Digital Content and digital content-related content to an end-user,
`
`client device.” Ex[1030] 6:37-43. Downs’ “End-User Devices” include PCs, set
`
`top boxes (IRDs), and Internet appliances. Id. Upon receiving content, “the End-
`
`User Device(s) 109 watermarks the copy of the Content 113 with the content
`
`purchaser’s name and the Transaction ID 535 … and with other information such as
`
`date of license and Usage Conditions 517.” Id. 22:15-24.
`
`V. CLAIM CONSTRUCTION
`
`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)” (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
`
`distribution of digitized information or a related technology field, such as data
`
`integrity and security. Ex[1006] ¶¶107-109.
`
`B.
`
`“local content server system (LCS)” or “Local Content Server (LCS)”
`(Claims 1, 20, 24)
`“Local Content Server (LCS)” is expressly defined by the patentee as:
`
`
`2 Petitioner reserves the right to seek different claim constructions in the District
`Court Action.
`
`17
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`A device or software application which can securely store a collection
`of value-added digital content. The LCS has a unique ID.
`Ex[1003] 7:51-53.
`“Value-added” is further 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[1003] 9:1-12.
`
`A POSA would not find that the “value-added digital content” portion of the
`
`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[1006] ¶116. 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 (LCS)” to mean
`
`“digital content for which there is any demand.”
`
`The ’246 Patent describes the “local content server system (LCS)” as
`
`“creating a secure environment for digital content,” and further describes “a content
`
`data set that is stored on the LCS.” Ex[1003] 2:24-25, 3:1-3.
`
`Therefore, a POSA would understand “LCS” to mean “a device or software
`
`18
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`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[1006] ¶120.
`
`C.
`“Secure Electronic Content Distributor (SECD)” (Claim 1)
`The “DEFINITIONS” section defines “Secure Electronic Content
`
`Distributor”:
`
`An entity, device or software application which can validate a
`transaction with a LCS, process a payment, and deliver digital content
`securely to a LCS.
`Ex[1003] 7:54-57.
`The Summary of the Invention explains:
`
`[The] SECD is capable of storing a plurality of data sets, is capable of
`receiving a request to transfer at least one content data set, and is
`capable of transmitting the at least one content data set in a secured
`transmission.
`Ex[1003] 7:28-32. This is consistent with the patentee’s explicit definition of
`
`“Secure Electronic Content Distributor.”
`
`Therefore, a POSA would understand that “Secure Electronic Content
`
`Distributor (SECD)” means “an entity, device or software application which can
`
`validate a transaction with a LCS, process a payment, and deliver digital content
`
`securely to a LCS.” Ex[1006] ¶¶121-124.
`
`D.
`“content” (Claims 1, 20, 21, 24, and 25)
`The term “content” appears in claims 1, 20, 21, 24, and 25, in some cases
`
`multiple times within a claim.
`
`19
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`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[1003] 7:60-62. Numerous other phrases are defined in terms of their
`
`interaction with “content” or “digital content” See Ex[1003] 7:51-8:12, 8:28-49
`
`(defining, e.g., “Local Content Server” and “Secure Electronic Content Distributor”).
`
`The Background of the Invention states “a need exists for a new and improved
`
`system for protecting digital content against unauthorized copying and distribution.”
`
`Ex[1003] 2:18-20. The LCS is described as “creating a secure environment for
`
`digital content.” Ex[1003] 2:24-25, 2:51-52. These descriptions are consistent
`
`with the patentee’s explicit definition of “content.”
`
`Thus, a POSA would understand the term “content” to mean “data in digital
`
`format.” Ex[1006] ¶¶125-129.
`
`E.
`“predetermined quality level” (Claims 1, 20, and 24)
`Independent claim 1 recites accepting digital content under certain conditions
`
`at “a predetermined quality level.” Ex[1003] 19:30-54. Independent claims 20
`
`and 24 refer to “delivering the content data set … at a predetermined quality level”
`
`and “delivering the watermarked content data set … at a predetermined quality
`
`level,” respectively. Ex[1003] 24:12-33, 24:26-67.
`
`While the patentee defines the terms “Standard Quality,” “Low Quality,” and
`
`“High Quality,” none of these definitions address the term under construction:
`
`“predetermined quality level.” Thus, a POSA would understand the term
`
`20
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`“predetermined quality level” to have its plain and ordinary meaning. Ex[1006]
`
`¶¶130-133.
`
`F. “open watermark” (Claim 21) and “robust open watermark” (Claim
`25)
`Claim 21 refers to “embedding an open watermark into [] content data.” A
`
`POSA would understand “open watermark” to mean “a watermark readable by
`
`multiple devices.” This understanding is consistent with how the term “open
`
`watermark” is used in the ’246 Patent. The Detailed Description of The Invention
`
`refers to “open watermark” as a “watermark that relies on a secret which is shared
`
`by an entire class of devices, as opposed to a secure watermark—which is readable
`
`only by a single member of a class of devices.” Ex[1003] 16:64-17:3. A POSA
`
`would understand “entire class of devices” to mean multiple devices. Ex[1006]
`
`¶137. A POSA would understand the “secret” shared by the devices as multiple
`
`devices being aware of how to access the watermark. Id. Thus, a POSA would
`
`understand the term “open watermark” to mean “a watermark readable by multiple
`
`devices.” Ex[1006] ¶138.
`
`A POSA would understand “robust open watermark” to mean “a watermark
`
`that can withstand encryption or decryption and that is readable by multiple devices.”
`
`A POSA would understand a “robust watermark” to be a watermark that can
`
`withstand manipulation of the watermarked content (e.g., encryption or decryption),
`
`as opposed to a fragile watermark that is affected by manipulation of the
`
`21
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`watermarked content. Ex[1006] ¶¶140-141. This is consistent with how the term
`
`robust watermark is used in the ’246 Pate