UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`U.S. Patent No. 9,021,602 B2
`: Attorney Docket No. 081841.0119
`In Re:
`Inventor: Moskowitz, Scott A.
`:
`Filed:
`Mar. 11, 2013
`:
`Issued:
`Apr. 28, 2015
`: IPR No.: 2019-01449
`Assignee: Wistaria Trading Ltd.
`:
`Title:
`Data Protection Method
`and Device
`
`:
`
`
`
`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, 5, 8, AND 10 OF
`U.S. PATENT NO. 9,021,602 UNDER 35 U.S.C. §§ 311-319 AND
`37 C.F.R. §§ 42.100 ET SEQ.
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`U.S. Patent No. 9,021,602 B2
`: Attorney Docket No. 081841.0119
`In Re:
`Inventor: Moskowitz, Scott A.
`:
`Filed:
`Mar. 11, 2013
`:
`Issued:
`Apr. 28, 2015
`: IPR No.: 2019-01449
`Assignee: Wistaria Trading Ltd.
`:
`Title:
`Data Protection Method
`and Device
`
`:
`
`
`
`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, 5, 8, AND 10 OF
`U.S. PATENT NO. 9,021,602 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. 9,021,602
`
`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)) ............................... 3
`III. OVERVIEW OF THE ’602 PATENT ............................................................ 4
`A. Summary of the Claimed Subject Matter ................................................ 4
`B. Prosecution History of the ’602 Patent .................................................... 6
`C. Filing Date and Priority ......................................................................... 10
`SUMMARY OF THE APPLIED PRIOR ART ............................................ 11
`CLAIM CONSTRUCTION UNDER 37 C.F.R. §42.104(b)(3) ................... 17
`A. Level of Ordinary Skill in the Art .......................................................... 17
`B. Claim Terms ........................................................................................... 18
`THE ASSERTED GROUND RENDERS ALL CHALLENGED CLAIMS
`INVALID ....................................................................................................... 25
`VII. CONCLUSION ............................................................................................. 76
`
`IV.
`V.
`
`VI.
`
`i
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`
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`LIST OF EXHIBITS
`
`Exhibit No.
`
`Description of Document
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
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`1010
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`1011
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`1012
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`1013
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`1014
`
`U.S. Patent No. 9,021,602 to Moskowitz et al. (“’602 Patent”)
`
`Declaration of Dr. Vijay K. Madisetti
`
`Curriculum Vitae of Dr. Vijay K. Madisetti
`
`File History for U.S. Patent No. 9,021,602
`
`File History for Reexamination Request No. 90/014,137 of U.S. Patent
`No. 9,021,602
`
`File History for U.S. Patent No. 9,104,842 (“parent ’842 Patent”)
`
`File History for Reexamination Request No. 90/014,138 of U.S. Patent
`No. 9,104,842
`
`U.S. Patent No. 5,757,907 to Cooper et al. (“Cooper”)
`
`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”)
`
`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
`
`File History for U.S. Patent No. 6,598,162
`
`Software Authorization Systems, Paul A. Suhler et al., IEEE Software
`(1986).
`
`ii
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`
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`Exhibit No.
`
`1015
`
`Description of Document
`
`Designing Software to be Used Up and Protecting it from Pirates, Bryon
`K. Ehlmann, ACM SIGSMALL/PC Notes, vol. 11, issue 3 (Aug. 1985)
`
`iii
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
`
`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
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`satellite services. Non-party DISH Technologies L.L.C. is a real party in interest.
`
`DISH Technologies L.L.C. provides set top boxes to DISH that are used to provide
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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. 9,021,602 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[1009]. Patent Owner asserts U.S. Patent No. 9,021,602
`
`against Petitioner in the District Court Litigation. Id. ¶¶ 98-110. Patent Owner
`
`asserted U.S. Patent No. 9,021,602 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[1010] 101-109. 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[1011], and subsequently
`
`voluntarily dismissed by Blue Spike, see Ex[1012]. DISH asserted Patent Owner
`
`lacked standing to bring these two initial lawsuits.
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`1
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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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) 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 94304-1007
`
`Tel. 650 739 7500; Fax 650-739-7699. Petitioner consents to service by electronic
`
`
`at
`
`eliot.williams@bakerbotts.com,
`
`hop.guy@bakerbotts.com,
`
`and
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`ali.dhanani@bakerbotts.com. A Power of Attorney is filed concurrently herewith
`
`under 37 C.F.R. §42.10(b).
`
`Fees: The Office is authorized to charge the fee 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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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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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, 5, 8, and 10 of U.S. Patent No. 9,021,602 (the
`
`“’602 Patent”). See Ex[1001]. Petitioner certifies that the ’602 Patent is eligible
`
`for inter partes review and certifies that Petitioner is not barred or estopped from
`
`requesting this inter partes review.
`
`B.
`
`Publications Relied Upon
`
`As explained below in Sections III.B-C, the assumed priority date for the ’602
`
`Patent is March 24, 1998. Therefore, Petitioner relies upon the following patent as
`
`prior art:
`
`Ex[1008] — U.S. Patent No. 5,757,907 by Cooper et al., entitled “Method
`
`and apparatus for enabling trial period use of software products: method and
`
`apparatus for generating a machine-dependent identification” (“Cooper”), filed on
`
`April 25, 1994, and issued on May 26, 1998. Cooper is available as prior art to
`
`the ’602 Patent under 35 U.S.C. §102(e) as of its April 25, 1994 filing date.
`
`C.
`
`Identification for Challenge (37 C.F.R. §42.104(b))
`
`Petitioner requests cancellation of the claims on the ground that claims 1, 5,
`
`8, and 10 are obvious over Cooper.
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`3
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`III. OVERVIEW OF THE ’602 PATENT
`
`A.
`
`Summary of the Claimed Subject Matter
`
`The claims of the ’602 Patent relate to the restricted use and protection of
`
`licensed computer software while resident on a user’s computer. See Ex[1001]
`
`1:46-49, 1:51-54, 7:22-40. The preamble of claim 1, for example, states that it is a
`
`“computer based method for accessing functionality provided by an application
`
`software.” Id. claim 1. As was known in the art prior to the ’602 Patent, the
`
`method begins by storing the application in computer memory and prompting a user
`
`to enter personal information into the computer. See id.; see also Ex[1005] 295
`
`(inventor stating that “it was well known for computer software to prompt a use [sic]
`
`for information at startup”).
`
`The claim then recites the step of storing “both computer configuration
`
`information of said computer, and a license code entered in response to said
`
`prompting” together in a “personalization data resource.” Ex[1001] claim 1. The
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`user-entered license code must be used by the computer to “generat[e] a proper
`
`decoding key” that is used to access specially encoded code resources of the
`
`application software. Id. As discussed in the next section, this storage and key
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`generation arrangement was the primary reason for allowance.
`
`Last, regarding restricting access to the application software, the claim recites
`
`that the application software “cannot access at least one encoded code resource of
`
`said application software, unless said license code is stored in said personalization
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`data resource.” Id. As such, the application software must have “at least one
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`encoded code resource.”
`
`The term “code resource” is explained in the specification as referring to a
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`portion of the executable code of the application software. See e.g., Id. 11:63-66.
`
`The specification states that an executable computer program is comprised of a
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`“collection of smaller, atomic (or indivisible) chunks of object code” that together
`
`form “the complete executable object code or application,” and “may also require
`
`the presence of certain data resources,” which are separate non-executable portions
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`of the program. Id. 11:19-23. The ’602 Patent refers to the smaller chunks as
`
`“sub-objects” or “portions” of the larger program, and states that “[t]hese sub-objects
`
`can be packaged into what are referred to in certain systems as ‘code resources,’
`
`which may be stored separately from the application, or shared with other
`
`applications, although not necessarily.” Id. 11:63-66, 11:30-33 (“Each function, or
`
`procedure, written in the programming language, represents a self-contained portion
`
`of the larger program, and implements, typically, a very small piece of its
`
`functionality.”). Thus, the “code resources” are portions of executable computer
`
`code that collectively form the complete software application.
`
`The term “encoded code resource” appears only one time in the specification
`
`of the ’602 Patent. See Id. 13:52-55. The only portion of the specification that
`
`mentions an “encoded code resource” describes the process of storing certain code
`
`resources separately from the other code resources of the application, such that they
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`5
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`are removed and only accessible with the proper decoding key. See Id. 13:15-21.
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`For example, an “encoded code resource” may be stored in “data resources” of the
`
`application, separately from the application’s code. Id. And, because the
`
`“encoded code resources” are stored separate from the bulk of the executable code,
`
`the specification states that the “application must also contain a data resource which
`
`specifies in which data resource a particular code resource is encoded.” Id. 13:55-
`
`57. The only way to access these “encoded code resources” is to have the correct
`
`licensing information stored in the personalization data resource, because the
`
`“proper decoding key” needed to access the “encoded code resource” is generated
`
`using the licensing information. Id. 13:66-67 (“Once it has the license code, it can
`
`then generate the proper decoding key to access the essential code resources.”),
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`14:21-25 (“That, in turn, means the license information in the software copy must
`
`remain fixed, so that the correct key is available to the software. The key and the
`
`license information are, in fact, interchangeable. One is merely more readable than
`
`the other.”).
`
`B.
`
`Prosecution History of the ’602 Patent
`
`U.S. patent No. 9,021,602 (“’602 Patent”) issued on April 28, 2015 from U.S.
`
`Application No. 13/794,584 (“’584 Application”), which was filed on March 11,
`
`2013. On May 9, 2014, the Examiner issued a non-final rejection rejecting all
`
`pending claims of the ’584 Application as being obvious over references named
`
`Holmes and Eyres. See Ex[1004] 137-144. In response, the Applicant amended
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`6
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`the claims closer to their current form, as shown below.
`
`See Ex[1004] 221 (highlighting added). The Applicant argued that “[n]either
`
`Holmes nor Eyres suggest storing both a license code and computer configuration
`
`information in the same data resource,” thereby indicating that this newly added
`
`limitation was important to the allowance of the alleged invention. Id. 226.
`
`Further indicating the importance of the amendments, the Applicant directly argued
`
`that this amendment was made to overcome the obviousness rejection by stating that
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`“[t]he amended claim 58 recitation ‘said application software storing, in said non
`
`transient memory, in a personalization data resource, both computer configuration
`
`information, and a license code entered in response to said prompt;’ addresses the
`
`Holmes and Eyres rejection. These references do not suggest storing both
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`7
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`computer configuration information and a license code in the same data resource.”
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`Id. 226-27 (underline in original).
`
`In response to these amendments and remarks, the Examiner issued a notice
`
`of allowance with an Examiner’s amendment, as shown below.
`
`Id. 306 (highlighting added). Relying on the subject matter of the Applicant’s prior
`
`amendment and arguments as well as the Examiner’s proposed amendment, the
`
`examiner stated that “[t]he primary reason for allowance of the claims is the
`
`limitation of storing in a personalization data resource, both computer
`
`configuration information of said computer and a license code which is used to
`
`generate a proper decoding key.” Ex[1004] 308. Subsequently, the ’602 Patent
`
`issued with claim 1 corresponding to original claim 58, as amended.
`
`The ’602 Patent underwent ex parte reexamination pursuant to a request for
`
`reexamination made on May 11, 2018. See Ex[1005] 599-600. The Examiner
`
`issued a non-final action rejecting claims 1-5, 8, 10, and 12 as anticipated by
`
`8
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`Cooperman under 35 U.S.C. 102(a), claims 1, 2, 5, 8, 10, and 12 as anticipated by
`
`Hicks under 35 U.S.C. 102(e), and claims 3 and 4 as obvious considering Hicks in
`
`view of Rhoads under 35 U.S.C. 103(a), and claims 1-5, 8, 10, and 12 as anticipated
`
`by Moskowitz et al. (U.S. Patent No. 5,745,569) under 35 U.S.C. 102(g). See
`
`Ex[1005] 169-183. The Patentee did not expressly contest that the applied prior art
`
`disclosed each and every element of the claims—not even for the limitation that was
`
`the “primary reason for allowance of the claims” as discussed above.
`
`Instead, rather than argue novelty or distinguish the claims of the ’602 Patent
`
`from the prior art to overcome the rejections as was done during the initial
`
`prosecution, the Patentee maneuvered around the applied prior art by: (a) correcting
`
`inventorship of the ’602 Patent to add Marc Cooperman as inventor to the ’602
`
`Patent; (b) asserting entitlement to the benefit of U.S. Application No. 09/046,627
`
`filed March 24, 1998 as identified on the face of the ’602 Patent, thereby preventing
`
`the applied prior art from being statutory bars under 35 U.S.C. 102(b); and (c)
`
`providing a declaration under 37 CFR 1.131 asserting prior invention of the ’602
`
`Patent claimed subject matter no later than January 17, 1996 as evidenced by U.S.
`
`Patent Application No. 08/587,943 filed that day, thereby antedating the non-
`
`statutory bar prior art. See Ex[1005] 184-86, 275-282. However, the Patentee’s
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`first attempt to avoid the prior art was unsuccessful, and the Examiner denied the
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`Patentee’s petition for failing to satisfy all of the necessary requirements. See Id.
`
`164-168. Again, rather than substantively distinguish the claimed invention from
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`9
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`the prior art, the Patentee persisted in its plan to move around the prior art and refiled
`
`its petitions with additional support. See e.g., id.
`
`Ultimately, the Patentee’s strategy of avoiding the merits of the prior art was
`
`successful, and on March 27, 2019 the Examiner issued a Notice of Intent to Issue a
`
`Reexam Certificate. See Ex[1005] 594-598. But the Examiner’s statement of
`
`reasons for patentability and/or confirmation of the claims did not state that the
`
`claims were novel and nonobvious; rather, the Examiner’s stated only that “the cited
`
`prior art, including Cooperman, Hicks, Rhoads, and Moskowitz et al., were
`
`previously applied, but are now not eligible as prior art under 102(a), (e), or (g).
`
`Patent Owner has established invention by both Scott Moskowitz and Marc
`
`Cooperman (see granted petition 12/12/2018). Further, the declaration under 37 CFR
`
`1.131 (01/23/2019) has been considered and establishes invention prior to Hicks and
`
`Rhoades [sic].” Ex[1005] 597.
`
`C.
`
`Filing Date and Priority
`
`The earliest application to which the ’602 Patent claims benefit was filed on
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`March 24, 1998. Ex[1001] [60] (claiming the benefit of “application No.
`
`09/046,627, filed on Mar. 24, 1998, now Pat. No. 6,598,162”). During prosecution
`
`of the ’602 Patent, the applicant intentionally deleted a benefit claim to Application
`
`No. 08/587,943, now Patent No. 5,745,569, filed on January 16, 1996. See
`
`Ex[1004] 4. Therefore, Petitioner assumes for purposes of this Petition that the
`
`filing date and priority date of the ’602 Patent are March 24, 1998.
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`10
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`However, Petitioner is aware that the Patent Owner swore behind the prior art
`
`applied during the reexamination of the ’602 Patent using an alleged invention date
`
`of January 16, 1996. See Ex[1005] 279-80, 287-302. If Patent Owner advances
`
`this argument again and is successful, the challenged claims are still invalid under
`
`the asserted grounds. The invalidity analysis does not change because Cooper is
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`prior art to the ’602 Patent under 35 U.S.C. § 102(e) using either a March 24, 1998
`
`or January 16, 1996 priority date for the ’602 Patent. See Ex[1002] ¶ 30.
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`Moreover, the obviousness analysis or knowledge of the POSA would not change
`
`because the subject matter of the challenged claims was known before either date.
`
`Id.
`
`IV.
`
`SUMMARY OF THE APPLIED PRIOR ART
`
`The ’602 Patent claims what was well-known in the prior art, as illustrated by
`
`Cooper. Cooper relates “to techniques for security access to software objects, and
`
`in particular to techniques for temporarily encrypting and restricting access to
`
`software objects.” Ex[1008] 1:35-38. Cooper describes a software application
`
`including one or more software objects, such as the well-known user programs Lotus,
`
`WordPerfect, DrawPerfect, and/or Norton Utilities, and an associated file
`
`management program. Ex[1002] ¶ 70-71; Ex[1008] 2:31-33 (“[P]roviding a
`
`software object on a computer-accessible memory media along with a file
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`management program.”). Cooper describes that the software object and file
`
`management program are loaded into the memory of a computer. See Ex[1008]
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`11
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`3:12-14 (“The encrypted software object is loaded onto a user-controlled data
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`processing system having a particular configuration.”), 3:39-31 (“[T]he file
`
`management program is loaded onto a user-controlled data processing system and
`
`associated with an operating system for the user-controlled data processing
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`system.”). Once loaded, the file management program portion of the application
`
`prompts the user to input personal information into the computer via a series of form
`
`prompts. See Id. 13:9-15 (stating that the file management program “provides a
`
`plurality of user-interface screens to the software customer which gathers
`
`information about the customer … and receives the customer selections of the
`
`software products for which a trial interval is desired.”), 9:66-10:3 (“The file
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`management program includes a plurality of interface screens which facilitate
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`interaction between the vendor and the customer, which and which set forth the
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`options available to the customer.”).
`
`Cooper also explains that a “temporary product key,” a “machine
`
`identification number,” and other personal information are stored together in a “key
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`file” on the computer. Ex[1008] 15:61-65. The temporary product key is used by
`
`the computer “to generate a real key which can be utilized to decrypt one or more
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`software objects.” Id. 6:15-18; see also 27:47-50 (“a file management program,
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`which includes said key generator as a component thereof.”). Therefore, Cooper
`
`discloses the same storage and key generation arrangement that was the primary
`
`reason for allowance of the ’602 Patent.
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`12
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`Last, regarding restricting access to the application software, Cooper discloses
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`that the file management program “returns an ‘access denied’ response” if the key
`
`file does not exist. Id. 18:24-30. And, the temporary product key must be stored
`
`in the key file and remain unchanged in order to generate the real key that is used to
`
`decrypt and access the encrypted software object. See Id. 13:66-14:3 (“the key file
`
`contains the product key”), 14:3-5 (“[a]ll three items,” which includes the product
`
`key, “must remain unchanged in order for the decryption tool to derive the real
`
`encryption key”).
`
`Cooper, like the ’602 Patent, stores a portion of the encrypted software object
`
`separately from the other code resources of the software object, such that they are
`
`removed and only accessible with the proper decryption key. See Id. 19:1-10
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`(“[t]he clear text copy of the software product (represented as clear file 531) is
`
`encrypted in accordance with a conventional routine, to form encrypted file 533.
`
`The front portion of encrypted file 533 is copied to side file 539 so that the overlaid
`
`data of encrypted file 533 is preserved.”), 18:4-9 (stating that “prior to performing
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`the decryption operations of FIG. 23, the contents of the corresponding side file must
`
`be substituted back into the encrypted software product in lieu of encryption header
`
`451. This ensures that the encrypted software product is complete prior to the
`
`commencement of decryption operations”).
`
`Cooper was not used as a basis for any rejection during the prosecution of
`
`the ’602 Patent or parent applications or even identified and, therefore, does not
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`13
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`appear on the face of the ’602 Patent or parent applications. However, for purposes
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`of completeness, Petitioners have discovered an attenuated and indirect connection
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`between Cooper and the ’602 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).
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`Specifically, as used herein, Cooper is U.S. Patent No. 5,757,907, which
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`shares a specification with U.S. Patent No. 5,737,416 (“Cooper ’416”). Cooper
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`and Cooper ’416 share a common specification and were filed the same day, but
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`each names a different set of inventors and are otherwise unrelated. In the ’602
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`Patent family, Cooper ’416 was cited as a basis for rejecting certain claims of the
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`earlier application leading to U.S. Patent No. 6,598,162 (“’162 Patent”), which is the
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`2nd great-grandparent to the challenged ’602 Patent. The graphic below represents
`
`these relationships.
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`14
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`See Ex[1005] 599 (listing Related U.S. Application Data in Field [60]).
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`Cooper ’416 was applied as a basis for rejection as to claims 6, 13, 14-17, 19-21,
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`and 25 of the ’162 Patent application and was not cited again as claims were
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`subsequently amended or new claims were added in prosecuting the ’602 Patent
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`family.
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`Despite the ’162 Patent and ’602 Patent being related, none of the ’162 Patent
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`claims are related to access restriction or restricting access to software as now
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`claimed in the ’602 Patent and disclosed in Cooper. The ’842 divisional shown in
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`the graphic above actually includes a restriction requirement that separated the new
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`claims between scrambling and encoding, access restriction, and watermarking.
`15
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`See Ex[1006] at 1158-1166.
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`The prosecution history of the ’162 Patent reveals these basic differences
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`between the claims and purported inventions of the ’162 and ’602 Patents. To
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`traverse the rejection over Cooper ’416, the Applicant argued with respect to
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`the ’162 Patent that “information access restriction” is “contrary to an object of the
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`present invention. The present invention does not encourage access restriction,
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`but rather encourages information distribution which can have a quality parameter
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`encourage purchase of a ‘partner’ or associated key.” Ex[1013] 78. Based on this
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`characterization, the Applicant argued for allowance in the ’162 patent prosecution
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`that “Cooper [’416] is directed to access restriction, which is contrary to an object
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`of the present invention.” Id. 79. This statement in the ’162 patent prosecution
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`contrasts with the claims of the ’602 Patent which were added later and recite a
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`“method for accessing functionality provided by an application software . . .
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`wherein said application software, in said computer, cannot access at least one
`
`encoded code resource of said application software, unless said license code is
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`stored in said personalization data resource.” Ex[1001] claim 1; see also Id.
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`claim 10. Thus, while the Cooper’s disclosure has been applied (via Cooper ’416)
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`to a patent that is related to the challenged ’602 Patent, Cooper’s disclosure was only
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`considered in a context that was “contrary” to the claims of the ’162 Patent then
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`under consideration and not the later claims added in prosecution in the ’602 Patent.
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`As such, Cooper has never been applied to the subsequent claims added
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`16
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`during prosecution that expressly recite elements of access restriction, such as those
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`that are challenged in this Petition. Accordingly, Cooper is new and relevant to
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`the ’602 Patent for the same reason that Cooper ’416 was irrelevant to the ’162
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`Patent— “because it is directed to access restriction.” Ex[1013] 79.
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`V.
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`CLAIM CONSTRUCTION UNDER 37 C.F.R. §42.104(b)(3)
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`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”).1
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`A.
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`Level of Ordinary Skill in the Art
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`A Person of Ordinary Skill in the Art (“POSA”) at the relevant time would
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`have “a bachelor’s degree in computer science, electrical engineering, or a related
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`technology field, and at least two to three years of experience related to secure
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`distribution of digitized information or a related technology field, such as data
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`integrity and security. Alternatively, a POSA in the relevant timeframe would have
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`an advanced degree, such as a master’s degree, in computer science, electrical
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`engineering, or a related technology field, and at least one year of experience related
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`to secure distribution of digitized information or a related technology field, such as
`
`data integrity and security. A person with less education but more relevant
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`1 Petitioner reserves the right to seek different claim constructions in the District
`Court Action.
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`17
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`practical experience, or more relevant education but less practical experience, may
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`also qualify as a POSA.” Ex[1002] ¶ 43.
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`B.
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`Claim Terms
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`The table below provides a summary of the Petitioner’s constructions for
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`certain claim terms of the claims of the ’602 Patent. Each proposed construction is
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`explained a respective section below.
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`Claim Term
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`Phillips Construction
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`“personalization
`information”
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`“license code”
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`“information that uniquely identifies the user, including
`a license code”
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`“a code required to be entered into the software
`application to activate the application, to enable the
`application to provide its specified functionality”
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`“personalization data
`resource”
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`“a non executable file that stores personalization
`information”
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`“encoded code
`resource of said
`software
`application”
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`“a portion of executable code that has been removed and
`stored separately from the other portions of the
`executable code of the software application”
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`1. “personalization information”
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`The phrase “personalization information” should be construed for purposes of
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`this IPR as “information that uniquely identifies the user, including a license code.”
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`A POSA would understand “personalization information” to have this construction
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`based on the plain language of the claim itself in view of the specification of the ’602
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`Patent and the prosecution history. See Ex[1002] ¶¶ 58-60.
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`18
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`The claims recite the limitation of “said application software in said computer
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`prompting a user to enter into said computer personalization information” and the
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`limitation of “a license code entered in response to said prompting.” Ex[1001]
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`claim 1, claim 10. Thus, the claim language itself makes clear that personalization
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`information is obtained from a user in response to prompting by the software and
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`includes at least a license code. The specification of the ’602 Patent does not
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`explain the meaning of “personalization information” other than to state that it
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`includes “the license code” and “can include a particular computer configuration.”
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`Ex[1001] 13:60-63.
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`In addition, Patent Owner has accused a “user’s zip code and [] Account
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`Number” as corresponding to the claimed personalization information. See
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`Ex[1009] ¶ 149. Thus, if Patent Owner’s accusations are viable, the claimed
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`“personalization information” should also encompass a user’s zip code and account
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`number that are obtained from the user.
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`2. “license code”
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`The phrase “license code” as used in claims 1 and 10 of the ’602 Patent should
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`be construed for purposes of this IPR as “a code required to be entered into the
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`software application to activate the application, to enable the application to provide
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`its specified functionality.” A POSA would understand “license code” to have this
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`construction based on the plain language of the claim itself in view of the
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`19
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`Petition for Inter Partes Review of U.S. Patent No. 9,021,602
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`specification of the ’602 Patent and the prosecution history. See Ex[1002] ¶¶ 61-
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`62.
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`Claims 1 and 10 of the ’602 Patent include the limitation of “wherein said
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`application software, in said computer, cannot access at least one encoded code
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`resource of said application software, unless said license code is stored in said
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`personalization data resource.” Ex[1001] claim 1, claim 10. Thus, the claim
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`language itself makes clear that at least a pa
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