UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DISH NETWORK L.L.C.,
`Petitioner,
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`v.
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`WISTARIA TRADING LTD.,
`Patent Owner
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`IPR2019-01358
`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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`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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`
`
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`IPR2019-01358
`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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`Table of Contents
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`IPR2019-01358
`U.S. Patent 7,475,246
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`1
`INTRODUCTION
`1
`THE ’246 PATENT
`1
`A. Overview of the ’246 Patent
`2
`B.
`Person of Ordinary Skill in the Art
` 2
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`
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`C.
`Claim Construction
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`
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`III. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER HAS
`RELIED ON REFERENCES ALREADY CONSIDERED BY THE
`PATENT OFFICE 4
`IV. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER HAS
`FAILED TO MEET ITS BURDEN
`CONCLUSION
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`I.
`II.
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`V.
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`8
`23
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`ii
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`IPR2019-01358
`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…………………..6
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`In re NuVasive, Inc., 841 F.3d 966 (Fed. Cir. 2016) ................................................. 9
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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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`IPR2019-01358
`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
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`1016
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`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”)
`United States Patent No. 6,345,100 by Earl Levine, entitled “Robust
`Watermark Method and Apparatus for Digital Signals” (“Levine”)
`United States Patent No. 6,311,214 by Rhoads, entitled “Linking of
`Computers Based On Optical Sensing of Digital Data” (“Rhoads”)
`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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`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
`[RESERVED]
`[RESERVED]
`[RESERVED]
`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.)
`[RESERVED]
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`1023
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`1024
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`1025
`1026
`1027
`1028
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`1029
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`1030
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`v
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`IPR2019-01358
`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 18.
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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. Patent Owner submits that the
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`proper claim construction for “Local Content Server” is “a device or software
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`application which can securely store a collection of value-added digital content,
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`wherein the LCS has a unique ID.” EX1003, 7:51-53.
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`2
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`ii.
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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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`iii.
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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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`iv.
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`“Robust Open Watermark”
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`To the extent that “Robust Open Watermark” is not expressly defined in the
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`’246 Patent, Patent Owner submits that the term “Robust Open Watermark” should
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`be interpreted under its plain and ordinary meaning.
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`v.
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`“Satellite Unit”
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`To the extent that “Satellite Unit” is not expressly defined in the ’246 Patent,
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`Patent Owner submits that the term “Satellite Unit” should be interpreted under its
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`plain and ordinary meaning. Patent Owner submits that the proper claim
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`construction for “Satellite Unit” is “a portable medium or device which can accept
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`secure digital content from an LCS through a physical, local connection and which
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`can either play or make playable the digital content, wherein the satellite unit has a
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`unique ID” EX1003, 7:63-8:3.
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`U.S. Patent 7,475,246
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`vi.
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`“LCS Storage Unit”
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`To the extent that “LCS Storage Unit” is not expressly defined in the ’246
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`Patent, Patent Owner submits that the term “LCS Storage Unit” should be
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`interpreted under its plain and ordinary meaning.
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`vii.
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`“Authorized”
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`To the extent that “Authorized” is not expressly defined in the ’246 Patent,
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`Patent Owner submits that the term “Authorized” should be interpreted under its
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`plain and ordinary meaning. Patent Owner submits that the proper claim
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`construction for “Authorized” is “conveyed official sanction, permitted access or
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`granted legal power to an entity.” EX1003, 9:45-47.
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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. Patent Owner submits that the proper claim
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`construction for “Legacy Content” is a “content format that predates the format of
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`the content data set.”
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`III. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`HAS RELIED ON REFERENCES ALREADY CONSIDERED BY THE
`PATENT OFFICE
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`Under 35 U.S.C. § 325(d), the Board need not and should not second-guess
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`issues of patentability that the Patent Office addressed before issuing the ’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”) and United States Patent No. 6,345,100 (“Levine”).
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`However, the Patent Office already considered Yeung and Levine and determined
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`that the claims of the ’246 Patent (i.e., the challenged claims in the Petition) are
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`patentable over Yeung. EX1003, page 3 (citing Yeung and Levine as references
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`considered by the Patent Office). Thus, under 35 U.S.C. § 325(d), the Board
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`should deny the Petition because the Petition is based on the same or
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`substantially the same prior art or arguments considered by the Patent Office in
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`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 9–10. 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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`U.S. Patent 7,475,246
`whether Petitioner has pointed out sufficiently how the Examiner erred in its
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`evaluation of the asserted prior art; and (6) the extent to which additional
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`evidence and facts presented in the Petition warrant reconsideration of the prior art
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`or arguments. Becton, Dickinson & Co. v. Braun MeIsungen, IPR2017-01586,
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`Institution Decision at 16–18 (Paper No. 8) (PTAB Dec. 15, 2017) (emphasis in
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`original). Despite Petitioner’s conclusory statements to the contrary, on balance
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`these factors weigh against institution.
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`First, Petitioner attempts to sidestep the issue by characterizing the art
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`considered during prosecution as “transforming trial versions of digital materials
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`back to their original form” (Stringer) and “monitoring user access to a shared
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`image server” (Guedalia). Patent Owner respectfully submits that these
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`characterizations sound a lot like Petitioner’s characterization of its asserted art—
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`providing various quality levels of content (Yeung, Pet. at 12) and “copy
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`protection during downloading and during uploading of the digital contents” (Lee,
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`Pet. at 13). Petitioner’s own statements belie Petitioner’s attempt to make the
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`asserted art new and shiny by describing it as focusing on “encryption and
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`watermarking techniques to control content access and use during digital content
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`distribution.” Pet. at 10. Despite Petitioner’s protestations, the asserted art is
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`cumulative of the art already considered during prosecution.
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`U.S. Patent 7,475,246
`Petitioner makes no effort to point to any error made by the Examiner during
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`prosecution. Pet. at 9–10. 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 “encryption and watermarking
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`techniques to control content access and use during digital content distribution” is
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`false, when, in fact, Stringer and Guedalia are directed to the same subject matter.
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`Petitioner attempts to overcome this history by making the conclusory and
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`unsupported statement, that the references used in the Petition were not
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`substantively evaluated with respect to the ’246 Patent claims and thus each of
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`these references is not cumulative. Pet. at 9. That is Petitioner’s position—that
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`because the references were not used as a basis for rejection during prosecution,
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`the references are “not cumulative.” Id. at 9. Petitioner’s position is contrary to law
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`U.S. Patent 7,475,246
`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. Pet. at 10. As the Board has noted, the mere existence of expert
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`testimony is not enough. Becton Dickinson, Institution Decision at 27–28.
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`The Board should reject Petitioner’s argument that the asserted art—already
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`considered by the Examiner during prosecution—should be reconsidered.
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`Petitioner’s argument boils down to the fact that the asserted art was never
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`explicitly considered as a basis for rejection during prosecution. However, as
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`detailed above, the arguments made during prosecution and those made in the
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`Petition are substantively identical. The Examiner has already rejected these
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`arguments and the Board should exercise its discretion to not waste the Board’s
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`resources reconsidering rejected arguments. See also 35 U.S.C. § 37 C.F.R.
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`§ 42.108(a).
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`IV. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`HAS FAILED TO MEET ITS BURDEN
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`
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`Petitioner has the burden to show that the challenged claims are
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`unpatentable. 35 U.S.C. § 316(e). When a Petitioner argues that a claim is
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`unpatentable as obvious under 35 U.S.C. § 103, the Petitioner must show that each
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`and every element of the challenged claims is rendered obvious by the specific
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`U.S. Patent 7,475,246
`asserted combination of Petitioner’s cited art. 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).
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`Petitioner challenges independent claim 17 of the ’246 Patent as being
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`obvious over Yeung. See Petition, page 25. Petitioner also challenges independent
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`claim 17 of the ’246 Patent as being obvious over Yeung and Levine. See Petition,
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`page 43. Petitioner additionally challenges independent claim 31 of the ’246
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`Patent as being obvious over Yeung, United States Patent No. 6,950,941 (“Lee”),
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`Levine, and United States Patent No. 6,311,214 (“Rhoads”). See Petition, page 51.
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`Petitioner has failed to meet its burden to demonstrate that the challenged claims
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`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 claim 17 is obvious over Yeung
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`Ground 1: Claim 17 Is Not Obvious Over Yeung
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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 fails to disclose or suggest each and
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`every element of independent claim 17 of the ’246 Patent. Therefore, there is no
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`likelihood that independent claim 17 of the ’246 Patent is obvious over Yeung.
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`Claim 17 of the ’246 Patent recites (emphasis added for missing element):
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`A method for creating a secure environment for digital content for a
`consumer, comprising the following steps:
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`U.S. Patent 7,475,246
`sending a message indicating that a user is requesting a copy of a content
`data set;
`retrieving a copy of the requested content data set;
`embedding at least one robust open watermark into the copy of the
`requested content data set, said watermark indicating that the copy is
`authenticated;
`embedding a second watermark into the copy of the requested content data
`set, said second watermark being created based upon information
`transmitted by the requesting user;
`transmitting the watermarked content data set to the requesting consumer
`via an electronic network;
`receiving the transmitted watermarked content data set into a Local Content
`Server (LCS) of the user;
`extracting at least one watermark from the transmitted watermarked content
`data set;
`permitting use of the content data set if the LCS determines that use is
`authorized; and
`permitting use of the content data set at a predetermined quality level, said
`predetermined quality level having been set for legacy content if the
`LCS determines that use is not authorized.
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`Yeung fails to disclose or suggest permitting use of the content data set at a
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`predetermined quality level, said predetermined quality level having been set for
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`legacy content if the local content server (LCS) determines that use is not
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`authorized, as in claim 17.
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`10
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`U.S. Patent 7,475,246
`In determining whether to grant the ’246 Patent, the Patent Office
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`considered Yeung and determined that the independent claims are not rendered
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`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
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`unit 410, a data descrambling unit 420, a visual/perceptual descrambling unit 430,
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`a watermark extraction unit 440, a mapping function 472, and a content player 450.
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`EX1014, FIG. 4. A diagram of the client platform 120 is illustrated below.
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`According to Yeung, a server platform 110 delivers content 290 to the client
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`platform 120, and the client platform 120 stores the content 290 in the memory unit
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`410. EX1014, 3:57-63, 7:36-37. In the form of data blocks, the content 290 is
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`provided from the memory unit 410 to the data descrambling unit 420, the
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`visual/perceptual descrambling unit 430, and the watermark extraction unit 440
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`(collectively referred to as “content protection mechanisms”). EX1014, 7:44-49.
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`11
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`A serial number 155 (of a processor of the client platform 120) and auxiliary
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`information associated with the processor are input into the mapping function 472
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`to produce respective keys 471. EX1014, 7:55-62. If the keys 471 are replicates
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`of keys produced by the server platform 110, one key 471 enables the data
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`descrambling unit 420 to perform a data descrambling scheme on the data blocks
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`(i.e., the content 290) and the other key 471 enables the visual/perceptual
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`descrambling unit 471 to perform a visual/perceptual descrambling scheme on the
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`data blocks. EX1014, 7:41-67.
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`Yeung fails to disclose or suggest that the client platform 120 permits the
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`use of the content 290 at a quality level having been set for legacy content if the
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`keys 471 are not replicas of keys produced by the server platform 110. The ’246
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`Patent defines “legacy content” as “digital content that was commercially
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`distributed before the advent of watermarking systems.” EX1003, 17:57-58.
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`Petitioner acknowledges this definition of “legacy content.” See Petition, pages
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`24-25. Petitioner further adopted Patent Owner’s construction of “legacy content”
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`as a “content format that predates the format of the [content data set].” See
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`Petition, page 24. As described below, Yeung fails to disclose or suggest that the
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`client platform 120 permits the use of the content 290 at a predetermined quality
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`level having been set “before the advent of watermarking systems” if the keys
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`471 are not replicas of keys produced by the server platform 110. Additionally,
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`U.S. Patent 7,475,246
`Yeung fails to disclose or suggest that the client platform 120 permits the use of
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`the content 290 at a predetermined quality level having been set in a “content
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`format that predates the format of” the content 290” if the keys 471 are not
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`replicates of keys produced by the server platform 110.
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`Yeung describes that if none of the keys 471 are able to decrypt the
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`delivered content, the client platform 120 generates a warning window 500.
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`EX1014, 8:1-4. The warning window 500 indicates that the content 290 is in an
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`invalid format or that no key for decrypting the content 290 has been found.
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`EX1014, 8:4-6. Yeung fails to disclose or suggest that the invalid format
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`corresponds to a format “before the advent of watermarking systems.” In fact, this
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`cannot be the case in Yeung because the content 290, when delivered to the client
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`platform 120, is watermarked by the content server 110. EX1014, 6:54-56. Thus,
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`in Yeung, the content is always watermarked. Id. Yeung also fails to disclose or
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`suggest that the invalid format corresponds to a “content format that predates the
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`format of” the content 290.
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`Therefore, Yeung fails to disclose or suggest permitting use of the content
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`data set at a predetermined quality level, said predetermined quality level having
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`been set for legacy content if the local content server (LCS) determines that use is
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`not authorized, as in claim 17. This claim element is completely missing in Yeung.
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`This conclusion is consistent with the view of the Patent Office, as the Patent
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`U.S. Patent 7,475,246
`Office has already determined that claims of the ’246 Patent are not obvious over
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`Yeung. EX1003, page 3 (citing Yeung as a reference considered by the Patent
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`Office).
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`Petitioner failed to point to any portion of Yeung as disclosing or suggesting
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`permitting use of the content data set at a predetermined quality level, said
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`predetermined quality level having been set for legacy content if the local content
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`server (LCS) determines that use is not authorized, 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. 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 claim
`
`17 of the ’246 Patent is obvious over Yeung. Therefore, the Board should deny the
`
`Petition.
`
`B. Petitioner has failed to show that a reasonable likelihood exists that
`the claim 17 is obvious over Yeung and Levine
`
`Ground 2: Claim 17 Is Not Obvious Over Yeung and Levine
`
`As explained above, Yeung fails to disclose or suggest permitting use of the
`
`content data set at a predetermined quality level, said predetermined quality level
`
`having been set for legacy content if the local content server (LCS) determines that
`
`use is not authorized, as in claim 17. This conclusion is consistent with the view of
`
`the Patent Office, as the Patent Office has already determined that claims of the
`
`14
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`IPR2019-01358
`U.S. Patent 7,475,246
`’246 Patent are not obvious over Yeung and Levine. EX1003, page 3 (citing
`
`Yeung and Levine as references considered by the Patent Office).
`
`Petitioner does not assert that Levine, individually or in combination with
`
`Yeung, discloses or suggests the above-described feature. Petitioner cites to
`
`Levine “as an alternative” reference to the extent Yeung does 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 “advance” how
`
`Levine teaches the above-recited element, the Board may not craft new grounds to
`
`assert how Levine teaches the above-recited element. Id.
`
`Thus, based on the above analysis of Yeung, in conjunction with the
`
`previous analysis and consideration of Yeung and Levine by the Patent Office
`
`during prosecution of the ’246 Patent, and based on Petitioner’s failure to assert
`
`that Levine discloses or suggests the above-described feature, there is no likelihood
`
`that the claim 17 of the ’246 Patent is obvious over Yeung and Levine. Therefore,
`
`the Board should deny the Petition.
`
`C. Petitioner has failed to show that a reasonable likelihood exists that
`the claim 31 is obvious over Yeung, Lee, Levine, and Rhoads
`
`Ground 3: Claim 31 Is Not Obvious Over Yeung, Lee, Levine, and Rhoads
`
`15
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`IPR2019-01358
`U.S. Patent 7,475,246
`Patent Owner respectfully submits that an inter partes review of the ’246
`
`Patent should not be instituted because Yeung, Lee, Levine, and Rhoads,
`
`individually or in combination, fail to disclose or suggest each and every element
`
`of independent claim 31 of the ’246 Patent. Therefore, there is no likelihood that
`
`independent claim 31 of the ’246 Patent is obvious over Yeung, Lee, Levine, and
`
`Rhoads. Claim 31 of the ’246 Patent recites (emphasis added for missing
`
`element):
`
`A method for creating a secure environment for digital content for a
`consumer, comprising the following steps:
`connecting a satellite unit (SU) to a local content server (LCS),
`sending a message indicating that the SU is requesting to store a copy of a
`content data on the LCS, said message including information about
`the identity of the SU;
`analyzing the message to confirm that the SU is authorized to use the LCS;
`and
`receiving a copy of the content data set;
`assessing whether the content data set is authenticated;
`if the content data is unauthenticated, denying access to the LCS storage
`unit; and
`if the content data is not capable of authentication, accepting the data at a
`predetermined quality level, said predetermined quality level having
`been set for legacy content.
`
`Yeung, Lee, Levine, and Rhoads, individually or in combination, fail to
`
`disclose or suggest that if the content data is not capable of authentication,
`
`16
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`IPR2019-01358
`U.S. Patent 7,475,246
`accepting the data at a predetermined quality level, said predetermined quality
`
`level having been set for legacy content, as in claim 31.
`
` In determining whether to grant the ’246 Patent, the Patent Office
`
`considered Yeung and Levine and determined that the independent claims are not
`
`rendered obvious over Yeung and Levine. EX1003, page 3 (citing Yeung and
`
`Levine as references considered by the Patent Office).
`
`As described above, in Yeung, if the keys 471 are replicates of keys
`
`produced by the server platform 110, one key 471 enables the data 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 client platform 120 accepts the
`
`content 290 at a predetermined level having been set for legacy content if the
`
`keys 471 are not replicates of keys produced by the server platform 110. For
`
`example, 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 72 (citing EX1014, 8:17-21). This position by Petitioner has no
`
`merit because of above-described missing element is directed to accepting digital
`
`content at predetermined quality level, not playing digital content back at a
`
`predetermined quality level. For example, Yeung does not disclose that the client
`
`17
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`IPR2019-01358
`U.S. Patent 7,475,246
`platform 120 accepts the content 290 from the server platform 110 at a
`
`predetermined quality level having been set for legacy content. Yeung is
`
`disclosing playing back the content 290 (that has already been accepted) at
`
`different quality levels. EX1014, 8:39-53.
`
`Additionally, as explained above, Yeung fails to disclose that the content
`
`290 accepted by the client platform 120 is digital content that was “commercially
`
`distributed before the advent of watermarking systems” (i.e., “legacy content”). In
`
`fact, this cannot be the case in Yeung because the content 290, when delivered to
`
`the client platform 120, is watermarked by the content server 110. EX1014, 6:54-
`
`56. 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. Therefore, Yeung fails to disclose or suggest that if
`
`the content data is not capable of authentication, accepting the data at a
`
`predetermined quality level, said predetermined quality level having been set for
`
`legacy content, as in claim 31.
`
`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
`
`18
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`IPR2019-01358
`U.S. Patent 7,475,246
`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. Lee fails to disclose any conditions on which the digital content is
`
`accepted by the LCM 140. Therefore, Lee fails to disclose or suggest that if the
`
`content data is not capable of authentication, accepting the data at a predetermined
`
`quality level, said predetermined quality level having been set for legacy content,
`
`as in claim 31.
`
`Levine describes a watermark decoder 1300 that “processes [a] watermarked
`
`audio signal 1310 to decode a watermark candidate 1314” from the watermarked
`
`audio signal 1310 to verify if the watermarked candidate 1314 is “equivalent to [a]
`
`preselected watermark data of interest.” EX1015, 19:21-25. A diagram of the
`
`watermark decoder 1300 is illustrated below.
`
`19
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`
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`IPR2019-01358
`U.S. Patent 7,475,246
`
`
`
`According to Levine, to determine whether the watermark candidate 1314 is
`
`the equivalent to the preselected watermark of interest, the watermark decoder
`
`1300 compares the watermark candidate 1314 to expected watermark data 1514.
`
`EX1015, 23:34-54. Based on the comparison, the watermark decoder 1300 can
`
`determine a source of the watermarked audio signal 1310 and identify whether the
`
`watermarked audio signal 1310 is an unauthorized copy of a watermark signal 120.
`
`EX1015, 23:34-54. Th
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