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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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`IPR2019-01357
`PATENT 7,475,246
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2019-01357
`U.S. Patent 7,475,246
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`Table of Contents
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`I.
`II.
`
`III.
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`IV.
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`V.
`
`INTRODUCTION
`THE ’246 PATENT
`A. Overview of the ’246 Patent
`B.
`Person of Ordinary Skill in the Art
`C.
`Claim Construction
`THE PETITION SHOULD BE DENIED BECAUSE PETITIONER HAS
`RELIED ON REFERENCES ALREADY CONSIDERED BY THE
` 4
`PATENT OFFICE
`THE PETITION SHOULD BE DENIED BECAUSE PETITIONER HAS
`FAILED TO MEET ITS BURDEN
`CONCLUSION
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`1
`1
`1
`2
` 2
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`8
`18
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`ii
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`IPR2019-01357
`U.S. Patent 7,475,246
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`Table of Authorities
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`Cases
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`Becton, Dickinson & Co. v. Braun MeIsungen, IPR2017-01586…………………..5
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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)………………………………………………………………….4
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`35 U.S.C. § 103 .......................................................................................................... 8
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`35 U.S.C. § 316(e) ..................................................................................................... 8
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`
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`iii
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`IPR2019-01357
`U.S. Patent 7,475,246
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`Table of Exhibits
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`1004
`1005
`1006
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`1007
`1008
`1009
`1010
`1011
`1012
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`1013
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`1014
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`1015
`1016
`1017
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`1018
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`Exhibit Description
`1001
`[RESERVED]
`1002
`[RESERVED]
`1003
`United States Patent No. 7,475,246 by Scott A. Moskowitz and Mike
`W. Berry, entitled “Secure Personal Content Server”
`[RESERVED]
`[RESERVED]
`Declaration of Dr. Sandeep Chatterjee for United States Patent No.
`7,475,246
`Curriculum Vitae of Dr. Sandeep Chatterjee
`[RESERVED]
`[RESERVED]
`File History for United States Patent Application No. 10/049,101
`[RESERVED]
`United States Provisional Application No. 60/213,489 by Scott A.
`Moskowitz and Mike W. Berry, entitled “A Secure Personal Content
`Server”
`United States Provisional Application No. 60/147,134 by Scott A.
`Moskowitz and Mike W. Berry, entitled “A Secure Personal Content
`Server”
`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”)
`[RESERVED]
`[RESERVED]
`United States 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.
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`1019
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`1020
`1021
`1022
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`iv
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`1030
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`IPR2019-01357
`U.S. Patent 7,475,246
`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 United
`States Patent Application No. 10/049,101 and disclosure filed in
`United States Provisional Application No. 60/213,489
`Red-line view showing changes between disclosure filed in United
`States Patent Application No. 10/049,101 and disclosure filed in
`United Sates Provisional Application No. 60/147,134
`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”)
`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.)
`United States Patent No. 6,226,618 by Edgar Downs et al., entitled
`“Electronic Content Delivery System” (“Downs”)
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`v
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`U.S. Patent 7,475,246
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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. 7,475,246 (“the
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`’246 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, dispositive claim elements are entirely missing from
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`the combination of references asserted in each of the Grounds of the Petition.
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`II. THE ’246 PATENT
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`A. Overview of the ’246 Patent
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`The ’246 Patent is titled “SECURE PERSONAL CONTENT SERVER.”
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`The ʼ246 Patent describes a local content server system (LCS) for creating a secure
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`environment for digital content. EX1003, Abstract. The LCS includes a domain
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`processor that “imposes rules and procedures for content being transferred between
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`the LCS and devices outside the LCS.” EX1003, 19:41-43. For example, the
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`domain processor permits the LCS to “receive digital content from outside the LCS
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`provided the LCS first determines that the digital content being delivered to the
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`LCS is authorized for use by the LCS.” EX1003, 19:47-50. If the digital content
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`is not authorized for use by the LCS, the domain processor permits the LCS to
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`U.S. Patent 7,475,246
`accept the digital content at a predetermined quality level set for legacy content.
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`EX1003, 19:50-54. Legacy content corresponds to “digital content that was
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`commercially distributed before the advent of watermarking systems.” EX1003,
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`17:57-58.
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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 17.
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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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`’246 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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`“Secure Electronic Content Distributor”
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`To the extent that “Secure Electronic Content Distributor” is not expressly
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`defined in the ’246 Patent, Patent Owner submits that the term “Secure Electronic
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`Content Distributor” should be interpreted under its plain and ordinary meaning.
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`iii.
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` “Content”
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`To the extent that “Content” is not expressly defined in the ’246 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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`iv.
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`“Predetermined Quality Level”
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`To the extent that “Predetermined Quality Level” is not expressly defined in
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`the ’246 Patent, Patent Owner submits that the term “Predetermined Quality
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`Level” should be interpreted under its plain and ordinary meaning.
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`v.
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`“Open Watermark”
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`To the extent that “Open Watermark” is not expressly defined in the ’246
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`Patent, Patent Owner submits that the term “Open Watermark” should be
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`interpreted under its plain and ordinary meaning.
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`vi.
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`“Satellite Unit”
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`Patent Owner respectfully submits that the claim construction for the term
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`“satellite unit” should be “a portable medium or device which can accept secure
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`digital content from an LCS through a physical, local connection and which can
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`U.S. Patent 7,475,246
`either play or make playable the digital content, wherein the satellite unit has a
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`unique ID.” See EX1003, 7:63-8:3.
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`vii.
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`“Authorized”
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`Solely for the premises of the Patent Owner’s Preliminary Response, Patent
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`Owner does not dispute Petitioner’s claim construction for the term “authorized.”
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`viii.
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`“Legacy Content”
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`To the extent that “Legacy Content” is not expressly defined in the ’246
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`Patent, Patent Owner submits that the term “Legacy Content” should be interpreted
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`under its plain and ordinary meaning.
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`III. 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 ’246
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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”) as the primary reference. However, the Patent Office
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`already considered Yeung determined that the claims of the ’246 Patent (i.e., the
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`U.S. Patent 7,475,246
`challenged claims in the Petition) are patentable over Yeung. EX1003, page 3
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`(citing Yeung as a reference considered by the Patent Office). Thus, under 35
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`U.S.C. § 325(d), the Board should deny the Petition because the Petition is based
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`on the same or substantially the same prior art or arguments considered by the
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`Patent Office in granting the ’246 Patent.
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`Petitioner acknowledges that the Examiner already considered Petitioner’s
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`cited art during prosecution. Pet. at 9–11. 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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`U.S. Patent 7,475,246
`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 12), “copy protection
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`during downloading and during uploading of the digital contents” (Lee, Pet. at
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`13), and “secure delivery and rights management of Digital Content and digital
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`content-related content” (Downs, Pet. at 17). Petitioner’s own statements belie
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`Petitioner’s attempt to make the asserted art new and shiny by describing it as
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`focusing on “the use of encryption and/or watermarking to control content access
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`and use during digital content distribution.” Pet. at 10-11. Despite Petitioner’s
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`protestations, the asserted art is cumulative of the art already considered during
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`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 9–11. 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 of the ʼ246
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`Patent. For example, similar to the asserted art in the Petition, United States Patent
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`No. 5,341,429 (“Stringer”) and United States Patent No. 6,148,333 (“Guedalia”),
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`which were used as the basis for rejections during prosecution of the ʼ295 Patent,
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`are both directed to watermarking original content for content distribution. See
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`Stringer, 7:48-58; see also Guedalia, 9:27-37. Thus, Petitioner’s conclusion that
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`only the asserted art in the Petition focuses “on the use of encryption and/or
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`watermarking to control content access and use during digital content distribution”
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`is false, when, in fact, Stringer and Guedalia are directed to the same subject
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`matter.
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`Petitioner attempts to overcome this history by making the conclusory and
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`unsupported statement, that Yeung, Lee, and Downs were not substantively
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`evaluated with respect to the ’246 Patent claims and thus each of these references
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`is not cumulative. Pet. at 9-10. That is Petitioner’s position—that because Yeung,
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`Downs, and Lee were not used as a basis for rejection during prosecution, the
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`references are “not cumulative.” Id. at 9–10. Petitioner’s position is contrary to law
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`and precedent. Even though Petitioner’s asserted art did serve as the basis for a
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`rejection during prosecution, the arguments made during prosecution have a high
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`degree of overlap with those Petitioner presents in the current Petition.
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`Finally, Petitioner argues that the mere existence of its expert’s testimony is
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`sufficient to constitute the “additional evidence and facts” necessary to warrant
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`U.S. Patent 7,475,246
`reconsideration of the cumulative asserted art. Pet. at 10. As the Board has noted,
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`the mere existence of expert testimony is not enough. Becton Dickinson, Institution
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`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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`U.S. Patent 7,475,246
`Petitioner challenges claims independent claims 1, 20, and 24 of the ’246
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`Patent and dependent claims 21 and 25 of the ’246 Patent as being obvious over
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`Yeung in view of United States Patent No. 6,950,941 (“Lee”). See Petition, page
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`25. Petitioner also challenges claims 1, 20, 21, 24, and 25 of the ’246 Patent as
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`being obvious over Yeung in view of Lee in view of United States Patent No.
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`6,226,618 (“Downs). See Petition, page 68. Petitioner has failed to meet its
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`burden to demonstrate that the challenged independent claims (i.e., claims 1, 20,
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`and 24) are obvious under 35 U.S.C. § 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 Lee
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`Ground 1: Claim 1 Is Not Obvious Over Yeung in view of Lee
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`Patent Owner respectfully submits that an inter partes review of the ’246
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`Patent should not be instituted because Yeung and Lee, individually or in
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`combination, fail to disclose or suggest each and every element of independent
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`claim 1 of the ’246 Patent. Therefore, there is no likelihood that independent claim
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`1 of the ’246 Patent is obvious over Yeung in view of Lee. Claim 1 of the ’246
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`Patent recites (emphasis added for missing element):
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`A local content server system (LCS) for creating a secure environment for
`digital content, said LCS comprising:
`a) a communications port for connecting the system via a network to at least
`one Secure Electronic Content Distributor (SECD), said SECD
`storing a plurality of data sets, receiving a request to transfer at least
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`U.S. Patent 7,475,246
`one content data set, and transmitting the at least one content data set
`in a secured transmission;
`b) a rewritable storage medium whereby content received from outside the
`LCS is stored and retrieved;
`c) a domain processor that imposes rules and procedures for content being
`transferred between the LCS and devices outside the LCS; and
`d) a programmable address module programmed with an identification code
`uniquely associated with the LCS; and
`said domain processor permitting the LCS to receive digital content from
`outside the LCS provided the LCS first determines that the digital
`content being delivered to the LCS is authorized for use by the LCS
`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.
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`Yeung and Lee, individually or in combination, fail to disclose or suggest
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`that if digital content is not authorized for use by a local content server system
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`(LCS), accepting the digital content at a predetermined quality level, said
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`predetermined quality level having been set for legacy content, as in claim 1.
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`As explained above, in determining whether to grant the ’246 Patent, the
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`Patent Office considered Yeung and determined that the independent claims are
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`not rendered obvious over Yeung. EX1003, page 3 (citing Yeung as a reference
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`considered by the Patent Office). Yeung describes a client platform 120 that
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`includes a memory unit 410, a data descrambling unit 420, a visual/perceptual
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`descrambling unit 430, a watermark extraction unit 440, a mapping function 472,
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`and a content player 450. EX1014, FIG. 4. A diagram of the client platform 120 is
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`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 that the LCS receives unauthorized digital content at
`
`a legacy quality level; rather, Young discloses at most that the LCS plays
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`unauthorized content at a lesser quality level. Petitioner cites to Yeung as
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`disclosing that “lesser quality content” or “full quality content” can be provided to
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`the content player 450 for playback. See Petition, page 46-47 (citing EX1014,
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`8:39-53). This choice presupposes that the client platform 120 stores the content
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`290 in the memory unit 410 in such a way that playback of “full quality content” is
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`possible. Indeed, the content protection mechanisms (i.e., 420, 430, and 440)
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`responsible for performing this function act on data already received into the
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`memory unit 410 of the client platform 120. See Pet. At 27; Ex 1014 at Fig. 4.
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`But the ’246 Patent discloses the opposite: that the LCS (which Petitioner maps to
`
`the client platform 120) receives the content data (which petitioner maps to 290) at
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`the legacy quality level. In other words, Yeung’s quality differentiation occurs
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`between the receipt of memory and playback based on the function of the content
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`protection mechanisms within the client platform, while the ’246 Patent’s quality
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`differentiation occurs when determining what is stored in memory at all.
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`Yeung also fails to disclose that the content 290 accepted by the client
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`platform 120 is in a content format that predates the format of the content 290.
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`That would not make sense. As discussed above, Yeung fails to disclose any
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`conditions on which the content 290 is accepted by the client platform 190.
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`Therefore, Yeung fails to disclose or suggest that if digital content is not
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`authorized for use by a local content server system (LCS), accepting the digital
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`content at a predetermined quality level, said predetermined quality level having
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`been set for legacy content, as in claim 1.
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`Lee describes a licensed secure digital music initiative (SDMI) compliant
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`module (LCM) 140 that downloads digital content from an internet service
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`provider 130. EX1017, 7:8-12. The LCM 140 can transfer the digital content to a
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`portable device 150. EX1017, 12:38-41. After the LCM 140 transfers the digital
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`content to the portable device 150, the digital content can no longer be played in
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`the LCM 140 until it is uploaded to the LCM 140 again. EX1017, 12:41-46. Thus,
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`Lee teaches transferring a file from one device (e.g., the LCM 140) to a second
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`device (e.g., the portable device 150). Lee is silent with regards to the LCM 140
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`accepting digital content at a predetermined quality level having been set for
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`legacy content. For example, Lee describes that the LCM 140 determines whether
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`a device identifier in the header of the content matches the ID of the LCM 140.
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`EX1017, 11:19-22. However, Lee fails to disclose that if the device identifier does
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`U.S. Patent 7,475,246
`not match the ID of the LCM 140, that the content is accepted by the LCM at a
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`predetermined quality level having been set for legacy content. Rather, Lee
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`discloses that the content cannot be played. EX1017, 11:31-33. Therefore, Lee
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`fails to disclose or suggest that if digital content is not authorized for use by a local
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`content server system (LCS), accepting the digital content at a predetermined
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`quality level, said predetermined quality level having been set for legacy content,
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`as in claim 1.
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`Therefore, Yeung and Lee, individually or in combination, fail to disclose or
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`suggest that if digital content is not authorized for use by a local content server
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`system (LCS), accepting the digital content at a predetermined quality level, said
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`predetermined quality level having been set for legacy content, as in claim 1. This
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`conclusion is consistent with the view of the Patent Office, as the Patent Office has
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`already determined that claims of the ’246 Patent are not obvious over Yeung.
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`EX1003, page 3 (citing Yeung as a reference considered by the Patent Office).
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`Petitioner failed to point to any portion of Yeung and Lee as disclosing or
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`suggesting that if digital content is not authorized for use by a local content server
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`system (LCS), accepting the digital content at a predetermined quality level, said
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`predetermined quality level having been set for legacy content, as recited by claim
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`1. Petitioner has therefore failed to meet its burden to demonstrate a prima facie
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`case of obviousness for independent claim 1.
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`Based on the above analysis, in conjunction with the previous analysis and
`
`consideration of Yeung by the Patent Office during prosecution of the ’246 Patent,
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`there is no likelihood that the challenged claims of the ’246 Patent are obvious
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`over Yeung in view of Lee. Therefore, the Board should deny the Petition.
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`Ground 1: Claims 20 and 21 Are Not Obvious Over Yeung in view of Lee
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`Independent claim 20 includes features that are analogous to the features of
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`independent claim 1. Petitioner has therefore failed to meet its burden to
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`demonstrate a prima facie case of obviousness for independent claim 20. Claim 21
`
`depends from independent claim 20. Petitioner has failed to meet its burden to
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`demonstrate a prima facie case of obviousness for claims 21, at least based on its
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`dependence from independent claim 20.
`
`Based on the above analysis, in conjunction with the previous analysis and
`
`consideration of Yeung by the Patent Office during prosecution of the ’246 Patent,
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`there is no likelihood that the challenged claims of the ’246 Patent are obvious
`
`over Yeung in view of Lee. Therefore, the Board should deny the Petition.
`
`Ground 1: Claims 24 and 25 Are Not Obvious Over Yeung in view of Lee
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`Independent claim 24 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 24. Claim 25
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`depends from independent claim 24. Petitioner has failed to meet its burden to
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`U.S. Patent 7,475,246
`demonstrate a prima facie case of obviousness for claims 25, at least based on its
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`dependence from independent claim 24.
`
`Based on the above analysis, in conjunction with the previous analysis and
`
`consideration of Yeung by the Patent Office during prosecution of the ’246 Patent,
`
`there is no likelihood that the challenged claims of the ’246 Patent are obvious
`
`over Yeung in view of Lee. Therefore, the Board should deny the Petition.
`
`B. Petitioner has failed to show that a reasonable likelihood exists that
`the challenged claims are obvious over Yeung in view of Lee in view of Downs
`
`Ground 2: Claim 1 Is Not Obvious Over Yeung in view of Lee in view of
`Downs
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`As explained above, Yeung and Lee, individually or in combination, fail to
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`disclose or suggest that if digital content is not authorized for use by a local content
`
`server system (LCS), accepting the digital content at a predetermined quality level,
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`said predetermined quality level having been set for legacy content, as in claim 1.
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`Petitioner does not assert that Downs, individually or in combination with
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`Yeung and Lee, discloses or suggests the above-described feature. Petitioner cites
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`to Downs “as an alternative” reference to the extent Yeung and Lee do not
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`sufficiently disclose three elements, none of which include, or are related to, the
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`above-described feature. As explained above, the Board may not craft new
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`grounds of unpatentability not advanced by the petitioner. In re NuVasive, Inc.,
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`841 F.3d 966, 971-72 (Fed. Cir. 2016). Because Petitioner fails to assert or
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`U.S. Patent 7,475,246
`“advance” how Downs teaches the above-recited element, the Board may not craft
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`new grounds to assert how Downs teaches the above-recited element. Id.
`
`Thus, based on the above analysis of Yeung and Lee, in conjunction with the
`
`previous analysis and consideration of Yeung by the Patent Office during
`
`prosecution of the ’246 Patent, and based on Petitioner’s failure to assert that
`
`Downs discloses or suggests the above-described feature, there is no likelihood
`
`that the challenged claims of the ’246 Patent are obvious over Yeung in view of
`
`Lee in view of Downs. Therefore, the Board should deny the Petition.
`
`Ground 2: Claims 20 and 21 Are Not Obvious Over Yeung in view of Lee in
`view of Downs
`
`Independent claim 20 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 20. Claim 21
`
`depends from independent claim 20. Petitioner has failed to meet its burden to
`
`demonstrate a prima facie case of obviousness for claims 21, at least based on its
`
`dependence from independent claim 20.
`
`Based on the above analysis, in conjunction with the previous analysis and
`
`consideration of Yeung by the Patent Office during prosecution of the ’246 Patent,
`
`there is no likelihood that the challenged claims of the ’246 Patent are obvious
`
`over Yeung in view of Lee. Therefore, the Board should deny the Petition.
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`Ground 2: Claims 24 and 25 Are Not Obvious Over Yeung in view of Lee in
`view of Downs
`
`Independent claim 24 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 24. Claim 25
`
`depends from independent claim 24. Petitioner has failed to meet its burden to
`
`demonstrate a prima facie case of obviousness for claims 25, at least based on its
`
`dependence from independent claim 24.
`
`Based on the above analysis, in conjunction with the previous analysis and
`
`consideration of Yeung by the Patent Office during prosecution of the ’246 Patent,
`
`there is no likelihood that the challenged claims of the ’246 Patent are obvious
`
`over Yeung in view of Lee. Therefore, the Board should deny the Petition.
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`V. CONCLUSION
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`For at least the reasons set forth above, Patent Owner respectfully requests
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`that all challenges in the present IPR be dismissed.
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`Date: October 30, 2019
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`
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`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.
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`300 South Wacker Drive
`Chicago, Illinois 60606
`Telephone: (312) 913-0001
`Facsimile: (312) 913-0002
`
`Attorneys for Patent Owner
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`CERTIFICATE OF COMPLIANCE
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`
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`Pursuant to 37 C.F.R. § 42.24(d), we certify that this Preliminary Response
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`to Petition complies with the type-volume limitation of 37 C.F.R. § 42.24(b)
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`because it contains fewer than the limit of 14,000 words, as determined by the
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`word-processing program used to prepare the brief, excluding the parts of the brief
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`exempted by 37 C.F.R. § 42.24(a)(1).
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`Date: October 30, 2019
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`
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`
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`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
`
`
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`i
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`IPR2019-01357
`U.S. Patent 7,475,246
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that an electronic copy of the
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`foregoing PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO 37
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`C.F.R. § 42.107(a) along with any accompanying exhibits was served on Petitioner’
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`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
`
`