UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In Re:
`
`U.S. Patent No. 9,104,842 B2
`
`: Attorney Docket No. 081841.0119
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`Inventors: Moskowitz, Scott A.;
`
`Filed:
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`Aug. 24, 2007
`
`Issued:
`
`Aug. 11, 2015
`
`Assignee: Wistaria Trading Ltd.
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`
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`
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`Title: Data Protection Method and Device
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`:
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`:
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`: IPR No.: 2019-01447
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`:
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`:
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Trial and Appeal Board End to End System
`PETITION FOR INTER PARTES REVIEW OF CLAIMS 1, 11, AND 13 OF
`U.S. PATENT NO. 9,104,842 UNDER 35 U.S.C. §§ 311-319 AND
`37 C.F.R. §§ 42.100 ET SEQ.
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In Re:
`
`U.S. Patent No. 9,104,842 B2
`
`: Attorney Docket No. 081841.0119
`
`Inventors: Moskowitz, Scott A.;
`
`Filed:
`
`Aug. 24, 2007
`
`Issued:
`
`Aug. 11, 2015
`
`Assignee: Wistaria Trading Ltd.
`
`
`
`
`
`Title: Data Protection Method and Device
`
`:
`
`:
`
`: IPR No.: 2019-01447
`
`:
`
`:
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Trial and Appeal Board End to End System
`PETITION FOR INTER PARTES REVIEW OF CLAIMS 1, 11, AND 13 OF
`U.S. PATENT NO. 9,104,842 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. 9,104,842
`
`I.
`II.
`
`TABLE OF CONTENTS
`MANDATORY NOTICES UNDER 37 C.F.R. §42.8 AND FEES ............ 1
`REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§42.104 ............................................................................................................ 3
`A. Grounds for Standing (37 C.F.R. §42.104(a)) ......................................... 3
`B. Publications Relied Upon ........................................................................ 3
`C.
`Identification for Challenge (37 C.F.R. §42.104(b)) ............................... 4
`III. OVERVIEW OF THE ’842 PATENT ......................................................... 4
`A. Summary of the Claimed Subject Matter ................................................ 4
`B. Prosecution History of the ’842 Patent .................................................... 6
`C. Priority ..................................................................................................... 7
`SUMMARY OF PRIOR ART AND REFERENCES RELIED UPON ... 7
`A. Brief Summary of Logan (Ex[1011]) ...................................................... 7
`B. Brief Summary of Waite (Ex[1012]) ..................................................... 10
`C. Brief Summary of Cooper (Ex[1013]) ................................................... 12
`CLAIM CONSTRUCTION UNDER 37 C.F.R. §42.104(b)(3) ............... 17
`A. Level of Ordinary Skill in the Art .......................................................... 18
`B.
`“watermark” (Claim 1) .......................................................................... 18
`C.
`“personalization information” (Claim 1) ............................................... 18
`D.
`“license code” (Claims 1 and 11) .......................................................... 19
`E.
`“license key” (Claim 13) ........................................................................ 20
`F.
`“encoded first code resource” (Claim 13) ............................................. 20
`
`IV.
`
`V.
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`i
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`
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE ..................... 22
`A. Ground 1: The ’842 Patent Claim 1 is anticipated by Logan
`(Ex[1011]) .............................................................................................. 22
`B. Ground 2: The ’842 Patent Claim 1 is obvious over Logan
`(Ex[1011]) .............................................................................................. 31
`C. Ground 3: The ’842 Patent Claims 11 and 13 are obvious over Waite
`(Ex[1012]) in view of Cooper (Ex[1013]) ............................................. 34
`VII. CONCLUSION ............................................................................................ 71
`
`ii
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
`
`LIST OF EXHIBITS
`
`Description of Document
`
`U.S. Patent No. 9,104,842 by Scott A. Moskowitz, entitled “Data
`Protection Method and Device”
`
`Declaration of Dr. Vijay K. Madisetti
`
`Curriculum Vitae of Dr. Vijay K. Madisetti
`
`File History for U.S. Patent No. 9,104,842
`
`File History for Ex Parte Reexamination of U.S. Patent No. 9,104,842
`
`File History for U.S. Patent No. 6,598,162
`
`First Amended Complaint for Patent Infringement, Blue Spike LLC v.
`DISH Network Corporation, Civil Action No. 1:19-cv-00160-LPS-CJB
`(filed Mar. 29, 2019) (“District Court Litigation”)
`
`First Amended 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”)
`
`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
`
`U.S. Patent No. 5,199,066 to Logan (“Logan”)
`
`U.S. Patent No. 5,103,476 to Waite et al. (“Waite”)
`
`U.S. Patent No. 5,757,907 to Cooper et al. (“Cooper”)
`
`Exhibit No.
`1001
`
`1002
`1003
`1004
`1005
`1006
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`1012
`1013
`
`iii
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`
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. §42.8 AND FEES
`Real Party in Interest Under 37 C.F.R. §42.8(b)(1): 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.
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`DISH Technologies L.L.C. provides set-top boxes to DISH that are used to provide
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`direct broadcast satellite services to customers.
`
`Related Matters Under 37 C.F.R. §42.8(b)(2): U.S. Patent No. 9,104,842 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[1007]. Patent Owner asserts U.S. Patent No. 9,104,842
`
`against Petitioner in the District Court Litigation. Id. 28-31. Patent Owner
`
`asserted U.S. Patent No. 9,104,842 against Petitioner in an earlier lawsuit, entitled,
`
`Blue Spike LLC v. DISH Network Corporation et al., Case Nos. 6:18-CV-00333-
`
`RWS-KNM (E.D. Tex.) and 1:18-CV-01512-LPS-CJB (D. Del.) (the “Prior
`
`Litigation”). See Ex[1008] 109-17. This prior 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[1009], and subsequently
`
`voluntarily dismissed by Blue Spike. See Ex. 1010.
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`1
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`
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`Lead Counsel and Request for Authorization Under 37 C.F.R. §42.8(b)(3):
`
`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)
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`of Baker Botts L.L.P.
`
`Service Information Under 37 C.F.R. §42.8(b)(4): Service information is as
`
`follows: Baker Botts L.L.P., 1001 Page Mill Rd., Palo Alto, CA 94304 Tel. 650 739
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`7500; Fax 650-739-7699. Petitioner consents to service by electronic mail at
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`eliot.williams@bakerbotts.com, hop.guy@bakerbotts.com, and ali.dhanani@baker
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`botts.com. A Power of Attorney is filed concurrently herewith under 37 C.F.R.
`
`§42.10(b).
`
`Certification of Grounds: Petitioner certifies that U.S. Patent No. 9,104,842 is
`
`eligible for inter partes review and that each Petitioner is not barred or estopped
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`from requesting inter partes review on the grounds set forth herein.
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`Fees: The Office is authorized to charge the fee set forth in 37 C.F.R. §42.15(b)
`
`to Deposit Account No. 02-0384 as well as any additional fees that might be due in
`
`connection with this Petition.
`
`2
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`
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`II.
`
`REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§42.104
`A. Grounds for Standing (37 C.F.R. §42.104(a))
`Petitioner challenges claims 1, 11, and 13 of U.S. Patent No. 9,104,842 (the
`
`“’842 Patent”). See Ex[1001]. Petitioner certifies that the ’842 Patent is eligible
`
`for inter partes review and certifies that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the patent claims on the grounds
`
`identified in the Petition.
`
`B. Publications Relied Upon
`The ’842 Patent is not entitled to a priority date before March 24, 1998.
`
`Petitioner relies upon the following patents:
`
`Ex[1011] — U.S. Patent No. 5,199,066 to Logan (“Logan”), entitled “Method
`
`and Apparatus for Protecting Software,” filed on April 18, 1989 and issued on March
`
`30, 1993. Logan is available as prior art under 35 U.S.C. §§ 102(a), 102(b), and 102(e).
`
`Ex[1012] — U.S. Patent No. 5,103,476 to Waite et al. (“Waite”) entitled
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`“Secure System for Activating Personal Computer Software at Remote Locations,”
`
`filed on November 7, 1990, and issued on April 7, 1992. Waite is available as prior
`
`art under 35 U.S.C. §§ 102(a), 102(b), and 102(e).
`
`Ex[1013] — U.S. Patent No. 5,757,907 to Cooper et al. (“Cooper”), entitled
`
`“Method and Apparatus for Enabling Trial Period Use of Software Products: Method
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`and Apparatus for Generating a Machine-Dependent Identification,” filed on April
`
`25, 1994 and issued on May 26, 1998. Cooper is available as prior art under
`
`3
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`35 U.S.C. § 102(e).
`
`Identification for Challenge (37 C.F.R. §42.104(b))
`C.
`Petitioner requests review under the following grounds:
`
`Ground
`
`’842 Patent Claims Basis for Challenge
`
`1
`
`2
`
`3
`
`1
`
`1
`
`11, 13
`
`Anticipated under 35 U.S.C. § 102 by
`Logan
`
`Obvious under 35 U.S.C. § 103 over
`Logan
`
`Obvious under 35 U.S.C. § 103 over
`Waite in view of Cooper
`
`This Petition establishes a reasonable likelihood that Petitioner will prevail on at
`
`least one petitioned claim.
`
`III. OVERVIEW OF THE ’842 PATENT
`A. Summary of the Claimed Subject Matter
`
`The ’842 Patent relates to “[a]n apparatus and method for encoding and
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`decoding additional information into a digital information in an integral manner.”
`
`Ex[1001] Abstract.
`
` Specifically, the specification discloses that “digital
`
`information, including a digital sample and format information, is protected by
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`identifying and encoding a portion of the format information.” Id. 7:8-11.
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`The’842 Patent includes “[e]ncoded digital information, including the digital sample
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`and the encoded format information” that “is generated to protect the original digital
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`information.” Id. 7:11-13. Figure 1 illustrates the encoding and decoding process:
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`4
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`Id. Fig. 1. The specification explains that “some of the header information can be
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`identified and ‘scrambled’ using the predetermined key at steps 110 to 130.” Id.
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`8:51-54.
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` Next, the specification teaches “[t]o decode the information, a
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`predetermined key is used before playing the digital information at steps 140 and
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`150.” Id. 8:63-65.
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`The specification also explains that an executable computer program is
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`comprised of a “collection of smaller, atomic (or indivisible) chunks of object code”
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`that together form “the complete executable object code or application,” and “may
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`also require the presence of certain data resources,” which are separate non-
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`executable portions of the program. Id. 11:17-21. Specifically, these portions or
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`“sub-objects can be packaged into what are referred to in certain systems as ‘code
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`5
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`resources,’ which may be stored separately from the application, or shared with other
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`applications.” Id. 11:61-65.
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`In some embodiments, the alleged invention stores certain code resources
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`separately from the application to form an “encoded code resource” and making
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`those displaced portions of code accessible only if proper licensing information is
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`provided. For example, at least one embodiment “involves hiding necessary ‘parts’
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`or code ‘resources’ in digitized sample resources.” Id. 12:25-27. In other
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`embodiments, certain code resources are marked and a “utility will ... encode them
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`into one or several data resources using a stegacipher process.” Id. 13:13-17.
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`These encoded code resources “are not accessible at run-time without [a] key” that
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`is chosen “so that it corresponds, is equal to, or is a function of, a license code or
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`license descriptive information, not just a text file, audio clip or identifying piece of
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`information.” Id. 13:19-20, 13:35-41.
`
`B. Prosecution History of the ’842 Patent
`
`The application issuing as the ’842 Patent was filed August 24, 2007 as U.S.
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`Patent Application No. 11/895,388 (the “’388 Application”). The ’842 Patent
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`and ’388 Application claim priority going back to U.S. Application No. 09/046,627
`
`(now U.S. Pat. No. 6,598,162), filed March 24, 1998. The ’842 Patent issued on
`
`August 11, 2015. On September 20, 2011, the examiner issued a Final Office
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`Action rejecting all pending claims as obvious over prior art references Holmes and
`
`Houser. Ex[1004] 1770. The applicant filed a notice of appeal on March 12,
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`6
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`2012. Id. 1795. During the appeal process, the examiner withdrew rejections of
`
`certain dependent claims. Id. 1920. The Patent Trial and Appeal Board (“PTAB”)
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`affirmed some of the examiner’s pending rejections and reversed others. Id. 1947.
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`On June 4, 2015, the examiner issued a notice of allowance including an examiner’s
`
`amendment focusing the claims on the allowable subject matter. Id. 2024-32.
`
`The ’842 Patent underwent ex parte reexamination pursuant to a request for
`
`reexamination made on May 16, 2018. See Ex[1005] 1. The examiner rejected
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`claims 12 and 14 of the ’842 Patent but confirmed claims 11 and 13 of the ’842
`
`Patent. Id. 1606-07. On July 17, 2019, the USPTO issued a reexamination
`
`certificate. Id. 1710.
`
`C. Priority
`
`The earliest priority date on the face of the ’842 Patent is March 24, 1998.
`
`During an ex parte reexamination of the ’842 Patent, the Patent Owner alleged a
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`priority date of January 17, 1996. Ex[1005]. Petitioner does not agree with this
`
`assertion, but even if the claims challenged in this petition are entitled to the earlier
`
`priority date, the prior art references relied on herein are still prior art under at least
`
`35 U.S.C. §§ 102(a), 102(b), or 102(e).
`
`IV.
`
`SUMMARY OF PRIOR ART AND REFERENCES RELIED UPON
`A. Brief Summary of Logan (Ex[1011])
`
`Logan teaches methods and systems for protecting software programs.
`
`Ex[1011] Abstract. Figure 1 of Logan includes “a typical personal computer 10 of
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`7
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`a type well-known in the art” that “includes a standard keyboard 12, a standard
`
`cathode ray tube (CRT) or screen 14 and a pair of floppy disk drives 16.”
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`Id. 3:33-38, Fig. 1. Logan explains that “[t]he disk drives 16 are employed in a
`
`manner well known in the computer art for receiving one or more floppy disks to
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`facilitate the loading or entry of computer software or programs stored within a
`
`floppy disk into the computer 10.” Id. 3:45-50.
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`Logan discloses “a second software code which is stored within the software
`
`at a hidden location.” Id. 4:32-34. Figure 2 shows a process for validating and
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`incrementing the second software code:
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`8
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`Id. Fig. 2. Specifically, the second software code “is unique for each original copy
`
`of the software and may have a predetermined relationship with the first software
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`code or serial number” such that the “software supplier is able to identify the second
`
`software code for each particular embodiment of the software by reference to the
`
`first software code or serial number.” Id. 4:19-25, 4:32-40. Further, “[t]he
`
`computer program automatically changes or increments the second software code in
`
`a predetermined manner each time the software is copied.” Id. 4:50-52.
`
`Logan explains that “[w]hen a user wishes to use a program protected by the
`
`present invention, the software program is installed into the hardware being
`
`employed by the user.” Id. 4:65-67. At the completion of the installation, the
`
`program “requests that the user input a hardware code uniquely associated with the
`
`particular hardware with which the software is to be employed” and “also requests
`
`that the user input the first software code or serial number for the particular software.”
`
`Id. 5:6-15.
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`9
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`Logan was not used as a basis for rejection or even identified during the
`
`prosecution of the ’842 Patent or parent applications and, therefore, does not appear
`
`on the face of the ’842 Patent or parent applications.
`
`B. Brief Summary of Waite (Ex[1012])
`
`Waite relates to “[a] process and system for activating various programs are
`
`provided in a personal computer.” Ex[1012] Abstract. For example, Waite
`
`discloses a process wherein “[b]y providing the registration computer with various
`
`information, a potential licensee can register to utilize the program.” Id.
`
`Waite explains that “a particular program which does not contain a critical or
`
`essential segment is provided in a personal computer or other device on a magnetic
`
`disc, firmware, hardware, or other means.” Id. 2:36-39. During installation, a
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`“registration shell program 11 would provide a data entry form which would be
`
`displayed on the licensee PC, requesting the licensee to provide identification
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`information, such as a billing address, an account number and the term of the license,
`
`etc.” Id. 3:9-13. Waite then explains that “[t]he user identification data is then
`
`used to build a unique tamperproof overlay file generated by merging the user
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`identification data with critical segment program instructions 36.” Id. 3:43-46.
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`Specifically, “the registration process ... produces a tamperproof overlay file which
`
`includes critical portions or segments of a main program file and license control data.”
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`Id. 4:55-59.
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`10
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`Waite continues that “[t]he tamperproof overlay is the key device that
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`prevents license abuse after activation because the critical segment of program
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`instructions may not be separated from the unique licensee identification data and
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`license control data without detection, nor may the licensee identification and license
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`control data be changed without detection.” Id. 4:62-68. For example, Figure 2
`
`shows how the program looks for the tamperproof overlay before operation:
`
`Id. Fig. 2.
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`Waite’s program generates “[a] unique set of encryption and decryption keys”
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`wherein “the entire contents of the tamperproof overlay file is encrypted using the
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`encryption key.” Id. 3:49-52. The decryption key is “[b]ased upon the encryption
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`11
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`key.” Id. 3:52-53. Waite teaches that “when the personal computer user
`
`commands the operating system to run the product application program, the
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`operating system will load the main program and the loader segment.” Id. 4:15-18.
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`Once the user runs the program, “[t]he loader segment will execute before any other
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`program instructions,” and it “executes the activation of the product application
`
`program starting with a test for the presence of the tamperproof overlay.” Id. 4:18-
`
`22. Waite discloses that “[i]f no tamperproof overlay has been installed, the loader
`
`segment exits to the operating system, thus preempting the execution of the main
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`program files.” Id. 4:22-25. In contrast, if “a tamperproof overlay has been
`
`installed, the loader segment finds the decryption key and proceeds to decrypt and
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`load the tamperproof overlay, overlaying the main program files with the missing
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`critical segment program instructions as well as the unique identification and license
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`control data.” Id. 4:25-31.
`
`Waite was not used as a basis for rejection or even identified during the
`
`prosecution of the ’842 Patent or parent applications and, therefore, does not appear
`
`on the face of the ’842 Patent or parent applications.
`
`C. Brief Summary of Cooper (Ex[1013])
`
`Cooper relates to “[a] method and apparatus ... for distributing a software
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`object from a source to a user.” Ex[1013] Abstract. Specifically, Cooper
`
`discloses a process wherein “[a] software object is encrypted with an encryption
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`operation utilizing a long-lived encryption key.” Id. Cooper teaches that this
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`12
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`process “would provide ... a means to try the program before obtaining (by
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`purchasing) a license for it.” Id. 8:8-11. Cooper includes several examples of
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`software products
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`including
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`the “file management program,” “Lotus,”
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`“WordPerfect,” “DrawPerfect,” and “Norton Utilities.” Id. 2:31-33, Figs. 8 and
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`10A.
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`Cooper discloses that the “software object is encrypted with an encryption
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`operation utilizing a long-lived encryption key” and “loaded onto a user-controlled
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`data processing system having a particular configuration.” Id. 3:10-13. Figure 1
`
`shows the “data processing system 10:”
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`Id. 7:11-13, Fig. 1. Cooper teaches that after loading, “[t]he file management
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`program is executed by the user-controlled data processing system.” Id. 2:43-45.
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`Cooper discloses a “real key” that is utilized to “decrypt encrypted software
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`13
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`products.” Id. 16:24-25. Cooper provides interface screens that prompt the user
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`for “information about the customer” including the user’s zip code as well as a
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`“product key.” Id. 13:11-12, Figs. 10A, 10B. Cooper explains that “[t]he product
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`key allows the product contained in the memory media to be temporarily accessed
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`for a prescribed and predefined interval.” Id. 9:21-23. Specifically, Cooper
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`teaches that a “real key generator” uses “product key 377, customer number 369,
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`control block text 373, machine identification 357 and trial interval data 374” to
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`“produce[] as an output the derived real key,” as depicted in FIG. 15:
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`Id. 15:28-34, Fig. 15 (highlighting in figures throughout added unless otherwise
`
`noted). As shown in Figure 23, Cooper then provides “a decryption operation
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`utilizing a validated real key:”
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`14
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`Id. 6:38-39, Fig. 23.
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`Cooper was not used as a basis for rejection or even identified during the
`
`prosecution of the ’842 Patent or parent applications and, therefore, does not appear
`
`on the face of the ’842 Patent or parent applications. However, for purposes of
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`completeness, Petitioners have discovered an attenuated and indirect connection
`
`between Cooper and the ’842 Patent, but it is not enough to support denying
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`institution under 35 U.S.C. § 325(d). See Becton, Dickinson & Co. v. Braun
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`Melsungen AG, IPR2017-01586, slip op. at 16-18 (Paper 8) (PTAB Dec. 15, 2017)
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`(informative).
`
`More specifically, an application by an overlapping but different set of
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`inventors that shares the same specification as Cooper, namely U.S. Patent No.
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`5,737,416 (“Cooper ’416”), was applied as a basis for rejecting certain claims of U.S.
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`Application No. 09/046,627, which issued as U.S. Patent No. 6,598,162 (“’162
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`Patent”) and is a grandparent to the ’842 Patent. According to the ’842 Patent
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`Reexamination Certificate, the ’162 Patent is related to the ’842 Patent as
`
`represented in the model below.
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`See Ex[1005] 1710 (listing Related U.S. Application Data in Field [60]).
`
`Cooper ’416 was applied as a basis for rejection as to claims 6, 13, 14-17, 19-21,
`
`and 25 of the ’162 Patent. However, despite the ’162 Patent and ’842 Patent being
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`related, none of the ’162 Patent claims are related to access restriction or restricting
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`access to software.
`
`The prosecution history of the ’162 Patent reveals this basic difference
`
`between the claims and purported inventions of the ’162 Patent and those of the ’602
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`Patent. For example, the Applicant argued with respect to the ’162 Patent that
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`“information access restriction” is “contrary to an object of the present invention.
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`The present invention does not encourage access restriction, but rather encourages
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`information distribution which can have a quality parameter encourage purchase of
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`a ‘partner’ or associated key.” Ex[1006] 78. Based on this characterization, the
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`Applicant argued for the ’162 Patent that “Cooper [’416] is repeatedly directed to
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`access restriction, which is contrary to an object of the present invention.” Id. 79.
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`That statement about the ’162 Patent contrasts with the claims of the ’842 Patent,
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`which recite a “method for modifying software” to restrict access to the software by
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`“encod[ing] at least one first license code” into the software. Ex[1001] Claim 1;
`
`see also id. Claim 11 (“[a] method for licensed software use”); Claim 13 (“[a]
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`method for encoding software code ... wherein [the software] is configured to
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`decode ... upon receipt of said first license key”). Thus, while Cooper’s disclosure
`
`has been applied (via Cooper ’416) to a patent that is related to the challenged ’842
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`Patent, Cooper’s disclosure was only considered in a context that was “contrary” to
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`the claims of the ’842 Patent.
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`As such, Cooper has never been applied to claims that expressly recite
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`elements of access restriction, such as those which are challenged in this Petition.
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`Accordingly, Cooper is new and relevant to the ’842 Patent for the same reason that
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`Cooper ’416 was irrelevant to the ’162 Patent—“because it is directed to access
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`restriction.” Ex[1006] 79.
`
`V.
`
`CLAIM CONSTRUCTION UNDER 37 C.F.R. §42.104(b)(3)
`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)” (hereinafter the “Phillips standard”).
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`A. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art (“POSITA”) would have a bachelor’s
`
`degree in computer science, and at least one to two years of experience related to
`
`secure distribution of digitized information or a related technology field, such as data
`
`integrity and security. Ex[1002] ¶49.
`
`“watermark” (Claim 1)
`B.
`The ’842 Patent discloses “digital ‘watermark’ techniques” that “give creators
`
`and publishers of digitized multimedia content localized, secured identification and
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`authentication of that content.” Ex[1001] 3:54-57. Specifically, the specification
`
`explains that it is “desirable to embed copyright, ownership or purchaser information,
`
`or some combination of these and related data, into the content in a way that will
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`damage the content if the watermark is removed without authorization.” Id. 3:63-
`
`67. The ’842 Patent explains that “[t]o achieve these goals, digital watermark
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`systems insert ownership information in a way that causes little or no noticeable
`
`effects, or ‘artifacts,’ in the underlying content signal.” Id. 4:1-3.
`
`Therefore, a POSITA would understand that “watermark” means “ownership
`
`information inserted into content, such as software, in a way that causes little or no
`
`noticeable effects, or artifacts, in the underlying content.” Ex[1002] ¶56.
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`“personalization information” (Claim 1)
`C.
`The term “personalization information” appears in claim 1 of the ’842 Patent.
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`Ex[1001] Claim 1. The claim language reads “wherein said first license code
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`encoded watermarked software is configured to query a user for personalization
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`information during its installation.” Id. The claim language thus requires that
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`personalization information is obtained from a user in response to a query from the
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`watermarked software. Id.; Ex[1002] ¶58. The ’842 Patent further explains that
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`the software “asks the user for personalization information, which includes the
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`license code.” Ex[1001] 13:59-62.
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`Therefore, a POSITA would understand that “personalization information”
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`means “information that uniquely identifies the user, including a license code.”
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`Ex[1002] ¶59.
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`“license code” (Claims 1 and 11)
`D.
`The term “license code” appears in claims 1 and 11 of the ’842 Patent.
`
`Ex[1001] Claims 1, 11. The ’842 Patent specification teaches that the program
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`“must contain the license code issued to the licensed owner, to access its essential
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`code resources.” Ex[1001] 14:1-3. During prosecution, the applicant defined the
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`term “license code” by stating that “our specification, consistent with common
`
`understanding in the art, defines a license code for a software application to be a
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`code required to be entered into the software application to activate the application,
`
`to enable the application to provide its specified functionality.” Ex[1004] 1858.
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`Therefore, a POSITA would understand that “license code” means a “code
`
`required to be entered into the software application to activate the application, to
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`enable the application to provide its specified functionality.” Ex[1002] ¶62.
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`“license key” (Claim 13)
`E.
`The term “license key” appears twice in claim 13 of the ’842 Patent.
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`Ex[1001] Claim 13. The claim first requires “modifying, by said computer, using
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`a first license key and an encoding algorithm, said software code, to form a modified
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`software code.” Id. The claim then includes a “decode resource [that] is
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`configured to decode said encoded first code resource upon receipt of said first
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`license key.” Id. The ’842 Patent teaches that a key “corresponds, is equal to, or
`
`is a function of, a license code or license descriptive information.” Id. 13:36-38.
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`Further, “[t]he key is necessary to access the underlying code, i.e., what the user
`
`understands to be the application program.” Id. 13:41-43. During prosecution,
`
`the applicant further explained that a key “is used to find the watermark and therefore
`
`access the information the watermark encodes.” Ex[1004] 1876. Specifically,
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`the applicant clarified that the key “enables identification of the watermark bits, so
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`the watermark and any data it encodes is ‘accessible.’” Id.
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`Therefore, a POSITA would understand that “license key” means a “key that
`
`corresponds to, is equal to, or is a function of a license code that is necessary to
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`access the encoded first code resource.” Ex[1002] ¶65.
`
`“encoded first code resource” (Claim 13)
`F.
`Claim 13 recites a software “first code resource” that is modified by an
`
`encoding process to form an “encoded first code resource.”
`
`The ’842 Patent discloses an “executable computer program” that may be
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`Petition for Inter Partes Review of U.S. Patent No. 9,104,842
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`“executable object code from the point of view of the engineer.” Ex[1001] 11:15-
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`17. The specification explains that “[a] collection of smaller, atomic (or indivisible)
`
`chunks of object code typically comprise the complete executable object code or
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`application.” Id. 11:17-20. Specifically, “[t]hese indivisible portions of object
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`code correspond with the programmers’ function or procedure implementations in
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`higher level languages, such as C.” Id. 11:21-23. These functions, after being
`
`compiled into object code become “sub-objects, whose exact order or arrangement
`
`in memory is not important, so long as any sub-object which uses another sub-object
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`knows where in memory it can be found.” Id. 11:50-54. The specification
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`concludes that “[t]hese sub-objects can be packaged into what are referred to in
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`certain systems as ‘code resources,’ which may be stored separately from the
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`application.” Id. 11:62-65. For example, an “essential code resource” that is
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`critical to the operation of the program can be encoded and made “not accessible at
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`run-time without the key.” Id. 13:14-20.
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`Therefore, a POSITA would understand the term “encoded first code
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`resource” to mean a “first portion of executable code that has been removed and
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`stored separately from the
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