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.: IPR2019-01358
`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 17 AND 31 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
`I.  MANDATORY NOTICES, STANDING, AND FEES ............................. 1 
`II.  REQUIREMENTS FOR INTER PARTES REVIEW UNDER
`37 C.F.R. §42.104 .......................................................................................... 3 
`  Grounds for Standing (37 C.F.R. §42.104(a)) ......................................... 3 
`  Publications Relied Upon ........................................................................ 3 
`  Grounds For Challenge ............................................................................ 4 
`III.  OVERVIEW OF THE ’246 PATENT ........................................................ 4 
`  Summary of the Claimed Subject Matter ................................................ 4 
`  Prosecution History of the ’246 Patent .................................................... 6 
`  Priority ..................................................................................................... 7 
`IV.  SUMMARY OF PRIOR ART AND REFERENCES RELIED ON ........ 7 
`  Summary of Yeung (Ex[1014]) ............................................................. 10 
`  Summary of Lee (Ex[1017]) .................................................................. 12 
`  Summary of Rhoads (Ex[1016]) ............................................................ 16 
`  Summary of Levine (Ex[1015]) ............................................................. 17 
`V.  CLAIM CONSTRUCTION ....................................................................... 18 
`  Level of Ordinary Skill in the Art .......................................................... 18 
`  “local content server system (LCS)” or “Local Content Server
`(LCS)” (Claims 17 and 31) ................................................................. 18 
`  “content” (Claims 17 and 31) ................................................................ 19 
`  “predetermined quality level” (Claims 17 and 31) ................................ 20 
`“robust open watermark” (Claim 17)..................................................... 21 
`“Satellite Unit” (Claim 31) .................................................................... 22 
`
` 
`
` 
`
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`  “LCS storage unit” (Claim 31) .............................................................. 23 
`  “authorized” (Claims 17 and 31) ........................................................... 24 
`“legacy content” (Claims 17 and 31) ..................................................... 24 
` 
`VI.  A REASONABLE LIKELIHOOD EXISTS THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE ............................. 25 
`  Ground 1: Claim 17 is obvious over Yeung (Ex[1014]) ....................... 25 
`  Ground 2: Claim 17 is obvious over Yeung (Ex[1014]) and Levine
`(Ex[1015]) .............................................................................................. 43 
`  Ground 3: Claim 31 is obvious over Yeung (Ex[1014]), Lee
`(Ex[1017]), Levine (Ex[1015]), and Rhoads (Ex[1016]) ...................... 51 
`VII.  CONCLUSION ........................................................................................... 76 
`
`
`
`ii
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`LIST OF EXHIBITS
`
`Exhibit No.
`1001
`1002
`1003
`
`Description of Document
`
`[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
`
`[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”
`
`1014
`
`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”)
`
`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.
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`1021
`1022
`1023
`
`1024
`
`1025
`1026
`1027
`1028
`
`Description of Document
`
`U.S. Patent No. 6,345,100 by Earl Levine, entitled “Robust
`watermark method and apparatus for digital signals” (“Levine”)
`
`U.S. Patent No. 6,311,214 by Rhoads, entitled “Linking of
`computers based on optical sensing of digital data” (“Rhoads”)
`
`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
`
`[RESERVED]
`
`[RESERVED]
`
`[RESERVED]
`
`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”)
`
`iv
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`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`Exhibit No.
`1029
`
`Description of Document
`
`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.)
`
`1030
`
`[RESERVED]
`
` 
`
`v
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`

`

`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] 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[1017],
`
`and subsequently voluntarily dismissed by Blue Spike, see Ex[1023]. Petitioner is
`
`also filing a separate IPR Petition challenging claims 1, 20, 21, 24, and 25 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 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
`Grounds for Standing (37 C.F.R. §42.104(a))
`
`Petitioner challenges claims 17 and 31 of U.S. Patent No. 7,475,246 (the “’246
`
`Patent”). Petitioner certifies that the ’246 Patent is eligible for inter partes review
`
`and certifies that Petitioner is not barred or estopped from raising grounds identified
`
`herein.
`
` 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:
`
`Ex[1014] — U.S. Patent No. 6,668,246 by Yeung et al., entitled “Multimedia
`
`data delivery and playback system with multi-level content and privacy protection”
`
`(“Yeung”), filed on March 24, 1999, and issued on December 23, 2003. Yeung is
`
`available as prior art under 35 U.S.C. §102(e).
`
`Ex[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).
`
`Ex[1016] — U.S. Patent No. 6,311,214 by Rhoads, entitled “Linking of
`
`computers based on optical sensing of digital data” (“Rhoads”), filed on June 29,
`
`1999 and issued on October 30, 2001. Rhoads is available as prior art under 35
`
`U.S.C. §102(e).
`
`Ex[1015] — U.S. Patent No. 6,345,100 by Levine, entitled “Robust
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`watermark method and apparatus for digital signals” (“Levine”), filed on October
`
`14, 1998, and issued on February 5, 2002. Levine is available as prior art under 35
`
`U.S.C. §102(e).
`
`Grounds For Challenge
`
`Petitioner requests cancellation of the claims on the following grounds:
`
`1.
`
`2.
`
`3.
`
`Claim 17 is obvious over Yeung.
`
`Claim 17 is obvious over Yeung in view of Levine.
`
`Claim 31 is obvious over Yeung in view of Lee, Levine, and Rhoads.
`
`III. OVERVIEW OF THE ’246 PATENT
` 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’246 Patent discloses a local content server (“LCS”) for storing content,
`
`authentication of content, enforcement of export rules and watermarking. Id.
`
`11:40-42.
`
`4
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
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`’246 Patent, Ex[1003] FIG. 1.
`
`
`
`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 either play or make playable the content. Id. 7:63-
`
`66, FIG. 1.
`
`The LCS provides a level of security for high-quality content while providing
`
`unsecured content at a degraded quality level. Id. 10:62-64. As depicted in FIG.
`
`2, 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 but be subjected to quality degradation. Id. 10:39-
`
`5
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
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`46, 10:62-11:9. If a watermark is absent, the LCS may read the content as “legacy”
`
`content. Id. 17:17-19. The ’246 Patent describes “legacy” digital content as
`
`content already in the hands of consumer and that was commercially distributed
`
`before the advent of watermarking systems. Id. 17:55-59.
`
`’246 Patent, Ex[1003] FIG. 2
`
`
`
`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
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`(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
`
`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 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.
`
`
`
`Priority
`
`The earliest claimed priority date for the ’246 Patent is August 4, 1999 based
`
`on the filing date of the earlier provisional.
`
`IV. SUMMARY OF PRIOR ART AND REFERENCES RELIED ON
`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 filing date
`
`cited in the ’246 Patent, numerous electronic companies had developed systems that
`
`protected audio and video content against unauthorized copying, use, and
`
`distribution. Id. ¶38. “These systems applied various combinations of familiar
`
`encryption and watermarking techniques to the now rapidly growing field of
`
`7
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`electronic commerce.” Id. ¶40. In 1998, over 100 music consumer and electronic
`
`companies formed the Secure Digital Music Initiative (SDMI) to consider the
`
`advantages of the numerous encryption and watermarking digital content protection
`
`techniques already in existence and agree on a common standard. Id. ¶42.
`
`Therefore, by the earliest filing date cited in the ’246 Patent, the application of
`
`various combinations of encryption and watermarking to DRM was 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 also well-known by the time of the alleged invention
`
`of the ’246 Patent. Ex[1006] ¶44. U.S. Patent No. 6,128,148 to Platte, et al.
`
`(“Platte”) discloses a videocassette system capable of playing back 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.
`
`8
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`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.
`
`The ’246 Patent claims what was well-known in the prior art, as illustrated by
`
`prior art references Yeung, Lee, Levine, and Rhoads. 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). See Becton, Dickinson & Co. v. Braun Melsungen AG, IPR2017-01586,
`
`slip op. at 16-18 (Paper 8) (PTAB Dec. 15, 2017) (informative).
`
`First, although the Applicant cited Yeung and Levine in an Information
`
`Disclosure Statement during the prosecution of the ’246 Patent, they were listed
`
`together with over 300 other references, and neither reference was substantively
`
`evaluated with respect to the ’246 Patent claims and are therefore not cumulative.
`
`Ex[1010] 280, 1318.
`
`Second, while the Examiner used a patent with a similar disclosure to Rhoads,
`
`U.S. Patent No. 6,522,769 (the “’769 Patent”), as a basis for rejection during the
`
`prosecution of the ’101 Application, Ex[1010] 203, the teachings of that disclosure
`
`were never considered in a combination with Yeung or Levine. Therefore, this
`
`petition presents the Rhoads disclosure in a new light that is not cumulative of the
`
`9
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`arguments considered during ex parte prosecution. Becton, Dickinson, IPR2017-
`
`01586, at 17-18. Furthermore, expert testimony (Ex[1006]) has been submitted
`
`with this Petition which was not available to the Examiner, explaining how a POSA
`
`would understand these references and how and why a POSA would combine them
`
`with a reasonable expectation of success. For these reasons, this Petition does not
`
`present the same or substantially the same arguments previously presented to the
`
`Office.
`
`Finally, there are material differences between the references applied in the
`
`Petition and those applied during examination. During ex parte examination, the
`
`Examiner applied U.S. Patent No. 5,341,429 to Stringer et al. (“Stringer”) and U.S.
`
`Patent No. 6,148,333 to Guedalia et al. (“Guedalia”). See, e.g., Ex[1010] 1027,
`
`1246. Stringer is directed to transforming trial versions of digital materials back to
`
`their original form upon purchase, and Guedalia is directed to monitoring user access
`
`to a shared image server. Id. 1087-1088, 1313-1314. As shown below, Yeung,
`
`Lee, Levine, and Rhoads invoke encryption and watermarking techniques to control
`
`content access and use during digital content distribution, including degrading
`
`content quality when certain authorization conditions occur.
`
` Thus, these
`
`references are materially different than those applied during prosecution.
`
` 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
`
`10
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`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`architecture for 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
`FIG. 4 illustrates the flow of content 290 between the client platform 120 and
`
`
`
`the content player 450.
`
`
`
`11
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
`
`Yeung, Ex[1014] FIG. 4
`Yeung explains that the client platform 120 may provide “lesser quality
`
`content” to the content player 450 or “full-quality content” to the content player 450
`
`for playback. Ex[1014] 8:39-48.
`
`Yeung’s system distributes and protects content through the implementation
`
`of “multiple content protection mechanisms,” including watermark extraction 440
`
`and watermark insertion 280. Ex[1014] 1:36; 1:53-54.
`
` 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
`
`revenue bearing information while restricting access to the information by
`
`unauthorized entities ....” Ex[1017] 2:4-6.
`
`12
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`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
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`To address this need, Lee discloses an “encryption processes and apparatus”
`
`with three 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. Ex[1017] FIG. 1. The disclosed architecture
`
`“provide[s] digital encryption processes and apparatus that 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 content flow between the
`
`ISP, LCM, and PD:
`
`13
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`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) 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
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`

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

`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
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`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.
`
`Together, the RMS-DB of the LCM and the file format provide the “rules to
`
`transfer contents securely” between the ISP, LCM, and PD and manage playback.
`
`Ex[1017] 11:8.
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` Summary of Rhoads (Ex[1016])
`Rhoads is entitled “Linking of computers based on optical sensing of digital
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`data” and is generally directed to “optical user interfaces that sense digital-encoded
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`objects.” Ex[1016] 1:20-21. Rhoads explains, “These objects have been …
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`marked with digital information, using any of the broad ranges of printing and
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`processing techniques which are available on the market and which are widely
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`described in the open literature and patent literature surrounding digital
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`watermarking.” Id. 1:54-59.
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`Rhoads notes, “There are nearly as many
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`techniques for digital
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`watermarking . . . as there are applications for it. The reader is presumed to be
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`familiar with a great variety of methods.” Id. 33:33-37. Rhoads provides
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`examples of these well-known watermarking techniques and applications, including
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`using watermarks to control content access on a music appliance:
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`[C]onsider watermarked music. The media owner would be best served
`if the watermark serves dual purposes: permissive and restrictive.
`Permissively, music appliances can be designed to play (or record) only
`music that includes an embedded watermark signaling that such activity
`is authorized. By this arrangement, if music is obtained from an
`unauthorized source and does not include the necessary watermark, the
`appliance will recognize that it does not have permission to use the
`music, so will refuse requests to play (or record).
`
`Id. 51:13-21.
` Summary of Levine (Ex[1015])
`
`Levine is entitled “Robust Watermark Method and Apparatus for Digital
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`Signals” and is related to a “robust watermark mechanism by which identifying data
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`can be encoded into digital signals such as audio or video signals such that the
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`identifying data are not perceptible to a human viewer of the substantive content of
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`the digital signals yet are retrievable and are sufficiently robust to survive other
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`digital signal processing.” Ex[1015] 1:24-30.
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`V. CLAIM CONSTRUCTION
`Under 37 CFR §42.100, claims should be construed “using the same claim
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`construction standard that would be used to construe the claim in a civil action under
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`35 U.S.C. 282(b)” (the “Phillips standard”).2
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`Level of Ordinary Skill in the Art
`
`A person of ordinary skill in the art (“POSA”) would have a bachelor’s degree
`
`in computer science, and at least two to three years of experience related to secure
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`distribution of digitized information or a related technology field, such as data
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`integrity and security. Ex[1006] ¶109.
`
`
`
`“local content server system (LCS)” or “Local Content Server
`(LCS)” (Claims 17 and 31)
`“Local Content Server (LCS)” is expressly defined by the patentee as:
`
`A device or software application which can securely store a collection
`of value-added digital content. The LCS has a unique ID.
`Ex[1003] 7:51-53.
`As to the “value-added digital content,” “Value-added” is defined:
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`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
`
`
`2 Petitioner reserves the right to seek different claim constructions in the District
`Court Action.
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`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
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`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 consider the “value-added digital content” portion of the
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`LCS definition patentably distinct (i.e., there is no structural difference between a
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`system storing value-less digital information versus one storing value-added digital
`
`information). Ex[1006] ¶116. However, because the patentee explicitly defined
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`“value-added” as content for which a market exists, a POSA would understand
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`“value-added digital content” in the definition of “local content server system (LCS)”
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`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
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`data set that is stored on the LCS.” Ex[1003] 2:24-25, 3:1-3.
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`Therefore, a POSA would understand “LCS” to mean “a device or software
`
`application which can securely store a collection of value-added digital content,
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`where value-added digital content is digital content for which there is any demand.”
`
`Ex[1006] ¶¶114-120.
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`“content” (Claims 17 and 31)
`
`The term “content” appears multiple times in claims 17 and 31.
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`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
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`The DEFINITIONS section defines “content” to “refer generally to digital
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`data, and may comprise video, audio, or any other data that is stored in a digital
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`format.” Ex[1003] 7:60-62. Other phrases are defined in terms of their
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`interaction with “content” or “digital content.” See Ex[1003] 7:51-8:12, 8:28-49
`
`(defining “Local Content Server,” “Secure Electronic Content Distributor,”
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`“Satellite Unit (SU),” “LCS Domain,” etc.).
`
`The Background of the Invention describes “a need exists for a new and
`
`improved system for protecting digital content against unauthorized copying and
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`distribution.” Ex[1003] 2:18-20. The “local content server system (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.
`
` “predetermined quality level” (Claims 17 and 31)
`Independent claim 31 recites accepting digital content under certain
`
`conditions at “a predetermined quality level.” Ex[1003] 26:17-20. Independent
`
`claim 17 refers to “permitting use of the content data set at a predetermined quality
`
`level.” Ex[1003] 23:36-59.
`
`While the patentee defines the terms “Standard Quality,” “Low Quality,” and
`
`“High Quality,” none of these definitions address the term under construction:
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`Petition for Inter Partes Review of U.S. Patent No. 7,475,246
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`“predetermined quality level.” Thus, a POSA would understand the term
`
`“predetermined quality level” to have its plain and ordinary meaning. Ex[1006]
`
`¶133.
`
`“robust open watermark” (Claim 17)
`
`
`Claim 17 refers to “embedding at least one robust open watermark into the
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`copy of the requested content data set.” A POSA would understand “robust open
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`watermark” to mean “a watermark that can withstand encryption or decryption and
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`that is readable by multiple devices.”
`
`A POSA would understand “robust watermark” to mean 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
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`watermarked content. Ex[1006] ¶141. This understanding is consistent with how
`
`the term robust watermark is used in the ‘246 Patent:
`
`The system can flexibly support one or more “robust” watermarks as a
`method for screening content to speed processing. Final validation,
`however, relies upon the fragile, secure watermark and its hash or
`digital signature (a secure time stamp may also be incorporated).
`Fragile watermarks, meaning that signal manipulations would affect the
`watermark, may be included as a means to affect the quality of the
`content or any additional attributes intended to be delivered to the
`consumer.
`Ex[1003] 11:30-38.
`
`A POSA would understand “open watermark” to mean “a watermark readable
`
`by multiple devices,” as opposed to a secure watermark that is only readable by a
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`single device. Ex[1006] ¶135. This understanding is consistent with how the
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`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. Accordingly,
`
`this statemen