throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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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.
`
`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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`

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`IPR2019-01357
`U.S. Patent 7,475,246
`
`Table of Contents
`
`I.
`II.
`
`III.
`
`IV.
`
`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
`
`1
`1
`1
`2
` 2
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`8
`18
`
`ii
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`

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`IPR2019-01357
`U.S. Patent 7,475,246
`
`Table of Authorities
`
`Cases
`
`Becton, Dickinson & Co. v. Braun MeIsungen, IPR2017-01586…………………..5
`
`In re NuVasive, Inc., 841 F.3d 966 (Fed. Cir. 2016) ................................................. 8
`
`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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`
`
`iii
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`IPR2019-01357
`U.S. Patent 7,475,246
`
`Table of Exhibits
`
`1004
`1005
`1006
`
`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.
`
`1019
`
`1020
`1021
`1022
`
`iv
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`

`

`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`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”)
`
`
`v
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`IPR2019-01357
`U.S. Patent 7,475,246
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`I.
`
`INTRODUCTION
`
`Patent Owner Wistaria Trading Ltd. submits this Preliminary Response to
`
`the Petition for Inter Partes Review of United States Patent No. 7,475,246 (“the
`
`’246 Patent”) filed by Petitioner DISH Network L.L.C. (“Petitioner”) (the
`
`“Petition” or “Pet.”).
`
`The Board should dismiss the Petition in its entirety at least because, as
`
`Patent Owner shows below, dispositive claim elements are entirely missing from
`
`the combination of references asserted in each of the Grounds of the Petition.
`
`II. THE ’246 PATENT
`
`
`A. Overview of the ’246 Patent
`
`The ’246 Patent is titled “SECURE PERSONAL CONTENT SERVER.”
`
`The ʼ246 Patent describes a local content server system (LCS) for creating a secure
`
`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
`
`domain processor permits the LCS to “receive digital content from outside the LCS
`
`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
`
`is not authorized for use by the LCS, the domain processor permits the LCS to
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`IPR2019-01357
`U.S. Patent 7,475,246
`accept the digital content at a predetermined quality level set for legacy content.
`
`EX1003, 19:50-54. Legacy content corresponds to “digital content that was
`
`commercially distributed before the advent of watermarking systems.” EX1003,
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`17:57-58.
`
`B.
`
`Person of Ordinary Skill in the Art
`
`Petitioner submits that a person of ordinary skill in the art (“POSA”) would
`
`have at least a Bachelor of Science 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. See Petition, page 17.
`
`For the purposes of determining whether to institute the Petition, Patent Owner
`
`does not dispute Petitioner’s characterization of the level of ordinary skill in the
`
`art, as it is not dispositive.
`
`C. Claim Construction
`
`i.
`
`“Local Content Server System”
`
`To the extent that “Local Content Server” is not expressly defined in the
`
`
`
`’246 Patent, Patent Owner submits that the term “Local Content Server” should be
`
`interpreted under its plain and ordinary meaning.
`
`ii.
`
`“Secure Electronic Content Distributor”
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`2
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`U.S. Patent 7,475,246
`To the extent that “Secure Electronic Content Distributor” is not expressly
`
`defined in the ’246 Patent, Patent Owner submits that the term “Secure Electronic
`
`Content Distributor” should be interpreted under its plain and ordinary meaning.
`
`iii.
`
` “Content”
`
`To the extent that “Content” is not expressly defined in the ’246 Patent,
`
`Patent Owner submits that the term “Content” should be interpreted under its plain
`
`and ordinary meaning.
`
`iv.
`
`“Predetermined Quality Level”
`
`To the extent that “Predetermined Quality Level” is not expressly defined in
`
`the ’246 Patent, Patent Owner submits that the term “Predetermined Quality
`
`Level” should be interpreted under its plain and ordinary meaning.
`
`v.
`
`“Open Watermark”
`
`To the extent that “Open Watermark” is not expressly defined in the ’246
`
`Patent, Patent Owner submits that the term “Open Watermark” should be
`
`interpreted under its plain and ordinary meaning.
`
`vi.
`
`“Satellite Unit”
`
`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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`IPR2019-01357
`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.
`
`vii.
`
`“Authorized”
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`Solely for the premises of the Patent Owner’s Preliminary Response, Patent
`
`Owner does not dispute Petitioner’s claim construction for the term “authorized.”
`
`viii.
`
`“Legacy Content”
`
`To the extent that “Legacy Content” is not expressly defined in the ’246
`
`Patent, Patent Owner submits that the term “Legacy Content” should be interpreted
`
`under its plain and ordinary meaning.
`
`III. PETITION SHOULD BE DENIED BECAUSE PETITIONER HAS
`RELIED ON REFERENCES ALREADY CONSIDERED BY THE PATENT
`OFFICE
`
`
`Under 35 U.S.C. § 325(d), the Board need not and should not second-guess
`
`issues of patentability that the Patent Office addressed before issuing the ’246
`
`Patent. Specifically, the statute authorizes rejecting grounds for inter partes
`
`review that seek to reargue positions. See 35 U.S.C. § 325(d) (stating “…the
`
`Director may … reject the petition or request because … the same or
`
`substantially the same prior art or arguments were presented to the Office.”).
`
`In petitioning for inter partes review, Petitioner cites to United States Patent
`
`No. 6,668,246 (“Yeung”) as the primary reference. However, the Patent Office
`
`already considered Yeung determined that the claims of the ’246 Patent (i.e., the
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`IPR2019-01357
`U.S. Patent 7,475,246
`challenged claims in the Petition) are patentable over Yeung. EX1003, page 3
`
`(citing Yeung as a reference considered by the Patent Office). Thus, under 35
`
`U.S.C. § 325(d), the Board should deny the Petition because the Petition is based
`
`on the same or substantially the same prior art or arguments considered by the
`
`Patent Office in granting the ’246 Patent.
`
`Petitioner acknowledges that the Examiner already considered Petitioner’s
`
`cited art during prosecution. Pet. at 9–11. When determining whether to institute
`
`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
`
`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
`
`evaluation of the asserted prior art; and (6) the extent to which additional
`
`evidence and facts presented in the Petition warrant reconsideration of the prior art
`
`or arguments. Becton, Dickinson & Co. v. Braun MeIsungen, IPR2017-01586,
`
`Institution Decision at 16–18 (Paper No. 8) (PTAB Dec. 15, 2017) (emphasis in
`
`original). Despite Petitioner’s conclusory statements to the contrary, on balance
`
`these factors weigh against institution.
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`IPR2019-01357
`U.S. Patent 7,475,246
`First, Petitioner attempts to sidestep the issue by characterizing the art
`
`considered during prosecution as “transforming trial versions of digital materials
`
`back to their original form” (Stringer) and “monitoring user access to a shared
`
`image server” (Guedalia). Patent Owner respectfully submits that these
`
`characterizations sound a lot like Petitioner’s characterization of its asserted art—
`
`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
`
`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
`
`focusing on “the use of encryption and/or watermarking to control content access
`
`and use during digital content distribution.” Pet. at 10-11. Despite Petitioner’s
`
`protestations, the asserted art is cumulative of the art already considered during
`
`prosecution.
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`Petitioner makes no effort to point to any error made by the Examiner during
`
`prosecution. Pet. at 9–11. Petitioner does not point to any error made by the
`
`Examiner in any part of prosecution, whether with respect to the asserted art or the
`
`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,
`
`and cumulative of, art considered by the Examiner during prosecution of the ʼ246
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`U.S. Patent 7,475,246
`Patent. For example, similar to the asserted art in the Petition, United States Patent
`
`No. 5,341,429 (“Stringer”) and United States Patent No. 6,148,333 (“Guedalia”),
`
`which were used as the basis for rejections during prosecution of the ʼ295 Patent,
`
`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
`
`only the asserted art in the Petition focuses “on the use of encryption and/or
`
`watermarking to control content access and use during digital content distribution”
`
`is false, when, in fact, Stringer and Guedalia are directed to the same subject
`
`matter.
`
`Petitioner attempts to overcome this history by making the conclusory and
`
`unsupported statement, that Yeung, Lee, and Downs were not substantively
`
`evaluated with respect to the ’246 Patent claims and thus each of these references
`
`is not cumulative. Pet. at 9-10. That is Petitioner’s position—that because Yeung,
`
`Downs, and Lee were not used as a basis for rejection during prosecution, the
`
`references are “not cumulative.” Id. at 9–10. Petitioner’s position is contrary to law
`
`and precedent. Even though Petitioner’s asserted art did serve as the basis for a
`
`rejection during prosecution, the arguments made during prosecution have a high
`
`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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`7
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`IPR2019-01357
`U.S. Patent 7,475,246
`reconsideration of the cumulative asserted art. Pet. at 10. As the Board has noted,
`
`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
`
`considered by the Examiner during prosecution—should be reconsidered.
`
`Petitioner’s argument boils down to the fact that the asserted art was never
`
`explicitly considered as a basis for rejection during prosecution. However, as
`
`detailed above, the arguments made during prosecution and those made in the
`
`Petition are substantively identical. The Examiner has already rejected these
`
`arguments and the Board should exercise its discretion to not waste the Board’s
`
`resources reconsidering rejected arguments. See also 35 U.S.C. § 37 C.F.R.
`
`§ 42.108(a).
`
`IV. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`HAS FAILED TO MEET ITS BURDEN
`
`
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`Petitioner has the burden to show that the challenged claims are
`
`unpatentable. 35 U.S.C. § 316(e). When a Petitioner argues that a claim is
`
`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
`
`of Petitioner’s cited art. The Board may not craft new grounds of unpatentability
`
`not advanced by the petitioner. In re NuVasive, Inc., 841 F.3d 966, 971-72 (Fed.
`
`Cir. 2016).
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`8
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`IPR2019-01357
`U.S. Patent 7,475,246
`Petitioner challenges claims independent claims 1, 20, and 24 of the ’246
`
`Patent and dependent claims 21 and 25 of the ’246 Patent as being obvious over
`
`Yeung in view of United States Patent No. 6,950,941 (“Lee”). See Petition, page
`
`25. Petitioner also challenges claims 1, 20, 21, 24, and 25 of the ’246 Patent as
`
`being obvious over Yeung in view of Lee in view of United States Patent No.
`
`6,226,618 (“Downs). See Petition, page 68. Petitioner has failed to meet its
`
`burden to demonstrate that the challenged independent claims (i.e., claims 1, 20,
`
`and 24) are obvious under 35 U.S.C. § 103.
`
`A. Petitioner has failed to show that a reasonable likelihood exists that
`the challenged claims are obvious over Yeung in view of Lee
`
`Ground 1: Claim 1 Is Not Obvious Over Yeung in view of Lee
`
`Patent Owner respectfully submits that an inter partes review of the ’246
`
`Patent should not be instituted because Yeung and Lee, individually or in
`
`combination, fail to disclose or suggest each and every element of independent
`
`claim 1 of the ’246 Patent. Therefore, there is no likelihood that independent claim
`
`1 of the ’246 Patent is obvious over Yeung in view of Lee. Claim 1 of the ’246
`
`Patent recites (emphasis added for missing element):
`
`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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`IPR2019-01357
`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.
`
`Yeung and Lee, individually or in combination, fail to 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, said
`
`predetermined quality level having been set for legacy content, as in claim 1.
`
`As explained above, in determining whether to grant the ’246 Patent, the
`
`Patent Office considered Yeung and determined that the independent claims are
`
`not rendered obvious over Yeung. EX1003, page 3 (citing Yeung as a reference
`
`considered by the Patent Office). Yeung describes a client platform 120 that
`
`includes a memory unit 410, a data descrambling unit 420, a visual/perceptual
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`IPR2019-01357
`U.S. Patent 7,475,246
`descrambling unit 430, a watermark extraction unit 440, a mapping function 472,
`
`and a content player 450. EX1014, FIG. 4. A diagram of the client platform 120 is
`
`illustrated below.
`
`
`According to Yeung, a server platform 110 delivers content 290 to the client
`
`platform 120, and the client platform 120 stores the content 290 in the memory unit
`
`410. EX1014, 3:57-63, 7:36-37. In the form of data blocks, the content 290 is
`
`provided from the memory unit 410 to the data descrambling unit 420, the
`
`visual/perceptual descrambling unit 430, and the watermark extraction unit 440
`
`(collectively referred to as “content protection mechanisms”). EX1014, 7:44-49.
`
`A serial number 155 (of a processor of the client platform 120) and auxiliary
`
`information associated with the processor are input into the mapping function 472
`
`to produce respective keys 471. EX1014, 7:55-62. If the keys 471 are replicates
`
`of keys produced by the server platform 110, one key 471 enables the data
`
`11
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`IPR2019-01357
`U.S. Patent 7,475,246
`descrambling unit 420 to 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.
`
`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
`
`unauthorized content at a lesser quality level. Petitioner cites to Yeung as
`
`disclosing that “lesser quality content” or “full quality content” can be provided to
`
`the content player 450 for playback. See Petition, page 46-47 (citing EX1014,
`
`8:39-53). This choice presupposes that the client platform 120 stores the content
`
`290 in the memory unit 410 in such a way that playback of “full quality content” is
`
`possible. Indeed, the content protection mechanisms (i.e., 420, 430, and 440)
`
`responsible for performing this function act on data already received into the
`
`memory unit 410 of the client platform 120. See Pet. At 27; Ex 1014 at Fig. 4.
`
`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
`
`the legacy quality level. In other words, Yeung’s quality differentiation occurs
`
`between the receipt of memory and playback based on the function of the content
`
`protection mechanisms within the client platform, while the ’246 Patent’s quality
`
`differentiation occurs when determining what is stored in memory at all.
`
`12
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`IPR2019-01357
`U.S. Patent 7,475,246
`Yeung also fails to disclose that the content 290 accepted by the client
`
`platform 120 is in a content format that predates the format of the content 290.
`
`That would not make sense. As discussed above, Yeung fails to disclose any
`
`conditions on which the content 290 is accepted by the client platform 190.
`
`Therefore, Yeung fails to 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, said predetermined quality level having
`
`been set for legacy content, as in claim 1.
`
`Lee describes a licensed secure digital music initiative (SDMI) compliant
`
`module (LCM) 140 that downloads digital content from an internet service
`
`provider 130. EX1017, 7:8-12. The LCM 140 can transfer the digital content to a
`
`portable device 150. EX1017, 12:38-41. After the LCM 140 transfers the digital
`
`content to the portable device 150, the digital content can no longer be played in
`
`the LCM 140 until it is uploaded to the LCM 140 again. EX1017, 12:41-46. Thus,
`
`Lee teaches transferring a file from one device (e.g., the LCM 140) to a second
`
`device (e.g., the portable device 150). Lee is silent with regards to the LCM 140
`
`accepting digital content at a predetermined quality level having been set for
`
`legacy content. For example, Lee describes that the LCM 140 determines whether
`
`a device identifier in the header of the content matches the ID of the LCM 140.
`
`EX1017, 11:19-22. However, Lee fails to disclose that if the device identifier does
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`IPR2019-01357
`U.S. Patent 7,475,246
`not match the ID of the LCM 140, that the content is accepted by the LCM at a
`
`predetermined quality level having been set for legacy content. Rather, Lee
`
`discloses that the content cannot be played. EX1017, 11:31-33. Therefore, Lee
`
`fails to 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, said predetermined quality level having been set for legacy content,
`
`as in claim 1.
`
`Therefore, Yeung and Lee, individually or in combination, fail to 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, said
`
`predetermined quality level having been set for legacy content, 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 ’246 Patent are not obvious over Yeung.
`
`EX1003, page 3 (citing Yeung as a reference considered by the Patent Office).
`
`Petitioner failed to point to any portion of Yeung and Lee as disclosing or
`
`suggesting 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, said
`
`predetermined quality level having been set for legacy content, 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.
`
`14
`
`

`

`IPR2019-01357
`U.S. Patent 7,475,246
`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.
`
`Ground 1: Claims 20 and 21 Are Not Obvious Over Yeung in view of Lee
`
`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.
`
`Ground 1: Claims 24 and 25 Are Not Obvious Over Yeung in view of Lee
`
`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
`
`15
`
`

`

`IPR2019-01357
`U.S. Patent 7,475,246
`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.
`
`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
`
`As explained above, Yeung and Lee, individually or in combination, fail to
`
`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,
`
`said predetermined quality level having been set for legacy content, as in claim 1.
`
`Petitioner does not assert that Downs, individually or in combination with
`
`Yeung and Lee, discloses or suggests the above-described feature. Petitioner cites
`
`to Downs “as an alternative” reference to the extent Yeung and Lee do not
`
`sufficiently disclose three elements, none of which include, or are related to, the
`
`above-described feature. As explained above, the Board may not craft new
`
`grounds of unpatentability not advanced by the petitioner. In re NuVasive, Inc.,
`
`841 F.3d 966, 971-72 (Fed. Cir. 2016). Because Petitioner fails to assert or
`
`16
`
`

`

`IPR2019-01357
`U.S. Patent 7,475,246
`“advance” how Downs teaches the above-recited element, the Board may not craft
`
`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.
`
`17
`
`

`

`IPR2019-01357
`U.S. Patent 7,475,246
`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.
`
`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 30, 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.
`
`18
`
`

`

`IPR2019-01357
`U.S. Patent 7,475,246
`300 South Wacker Drive
`Chicago, Illinois 60606
`Telephone: (312) 913-0001
`Facsimile: (312) 913-0002
`
`Attorneys for Patent Owner
`
`
`
`
`
`19
`
`

`

`IPR2019-01357
`U.S. Patent 7,475,246
`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 30, 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
`
`

`

`IPR2019-01357
`U.S. Patent 7,475,246
`
`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
`
`

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