Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 12
`Entered: December 9, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ROKU, INC.,
`Petitioner,
`v.
`VIDEOLABS, Inc.,
`Patent Owner.
`
`IPR2024-01025
`Patent 8,291,236 B2
`
`
`Before KARL D. EASTHOM, STACEY G. WHITE, and BRIAN P.
`MURPHY, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`

`

`Case IPR2024-01025
`Patent 8,291,236 B2
`
`
`I. INTRODUCTION
`Roku, Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C. § 311
`requesting institution of inter partes review of claims 100–109 and 111 (the
`“challenged claims”) of U.S. Patent No. 8,291,236 B2 (Ex. 1001; the “’236
`patent”). Paper 2 (“Pet.”). VideoLabs, Inc. (“Patent Owner”) timely filed a Patent
`Owner Preliminary Response. Paper 7 (“Prelim. Resp.”). Pursuant to
`authorization from the Board, Petitioner filed a Reply to Patent Owner’s
`Preliminary Response addressing “unforeseeable” claim construction issues, and
`Patent Owner filed a Sur-Reply. Papers 8, 10.
`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
`partes review may not be instituted “unless . . . there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” Under § 314, the Board may not institute review on fewer than all
`claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
`1359–60 (2018). If the Board institutes a review, it will institute “on all of the
`challenged claims and on all grounds of unpatentability asserted for each claim.”
`37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary
`Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth
`below, we conclude Petitioner has demonstrated a reasonable likelihood of
`prevailing with respect to at least one challenged claim in the ’236 patent.
`Accordingly, we institute an inter partes review of claims 100–109 and 111 on all
`grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1
`
`
`1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences.
`Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three
`different claim sets of the ’236 patent “solely for word count purposes that
`preclude all claims from being challenged in [a] single petition,” “there is no
`duplicative overlap of the same claims across petitions,” and there is a “need to set
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`Case IPR2024-01025
`Patent 8,291,236 B2
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`
`A. Real Parties in Interest and Related Matters
`Petitioner, Roku, Inc., identifies itself as the real party in interest. Pet. 6.
`
`Patent Owner, VideoLabs, Inc., identifies itself as the real party in interest. Paper
`6, 2. The parties identify the following related matters: VideoLabs, Inc. v.
`ASUSTeK Computer Inc., No. 6-22-cv-00720 (W.D. Tex.) (pending); VideoLabs,
`Inc. v. ASUSTeK Computer Inc., No. 6-23-cv00640 (W.D. Tex.) (voluntarily
`dismissed); VideoLabs, Inc. v. HP Inc., No. 6-23-cv-00641 (W.D. Tex.) (pending);
`and VideoLabs, Inc., et al. v. Roku, Inc., No. 1-23-cv-01136 (D. Del.) (pending).
`Pet. 7; Paper 6, 2.
`B. The ’236 Patent
`The ’236 patent, titled “Methods and Apparatuses for Secondary Conditional
`Access Server,” describes techniques “for bridging two security systems so that a
`primary security system can control premium content distribution to external
`devices secured by a secondary security system.” Ex. 1001, 2:56–59. The ’236
`patent discloses a plurality of embodiments. In one embodiment,
`the primary security system is a broadcast CA [conditional access]
`system, used to secure the distribution of premium content only to
`legitimate subscribers; and the secondary security system includes a
`digital rights management system used to secure the distribution of
`premium content only to the legitimate devices of the subscriber.
`Id. at 2:61–67 (emphasis added). In another embodiment “the secondary security
`system includes [a second] broadcast CA system, used to secure the re-distribution
`of premium content only to the legitimate local subscribers” of the second
`broadcast CA system. Id. at 3:1–7 (emphasis added). Either way, the secondary
`
`forth constructions for claim language invoking § 112 ¶ 6.” Id. at 1–2 (citing
`Consol. Tr. Pr. Guide, 59–61). Patent Owner does not address Petitioner’s Notice.
`We agree with Petitioner’s reasoning and decline to exercise our discretionary
`denial authority under 35 U.S.C. § 314(c).
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`Case IPR2024-01025
`Patent 8,291,236 B2
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`security system acts as a bridge because it is both an authorized client of the
`primary security system, from which it receives encrypted content, and a server of
`encrypted content to secondary clients, such as authorized subscriber devices in a
`digital rights management (“DRM”) system or authorized local subscribers in a
`second broadcast CA system.
` Figure 2A of the ’236 patent depicts an embodiment of the claimed
`invention. Figure 2A, as annotated by Petitioner, follows:
`
`
`Pet. 10. The primary CA server (253, red) controls access to the content in the
`primary security domain (251), which is “typically a broadcast CA system.” Ex.
`1001, 7:8–13. Only an authorized client of the primary security domain, such as
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`Case IPR2024-01025
`Patent 8,291,236 B2
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`set top box (257), can access (decrypt) the primary CA server-protected content.
`Id. at 7:13–17. Secondary CA Server (255, blue) acts an authorized client of the
`primary security domain “and as a control information provider of the secondary
`security domain (261).” Id. at 7:37–39. “[T]he secondary CA access clients (e.g.,
`271, 273, . . . 279, green) in the secondary security domain (261) may access the
`content secured in the secondary security domain under the control of the
`secondary CA server (255),” for example by receiving control words from the
`secondary CA server that permit the secondary clients to decrypt the content. Id. at
`7:23–29, 44–52.
`C.
`Illustrative Claim
`Claim 100 is the sole independent claim challenged in the Petition, and
`follows:
`100[pre]2 A data processing system to process conditional access
`protection, the data processing system comprising:
`
`100[a] means for receiving, at a conditional access server, security
`messages of a primary security system in a first security domain;
`
`100[b] means for processing the security messages on the conditional
`access server; and
`
`100[c] means for transmitting, from the conditional access server to a
`secondary conditional access client through a network connection in a
`second security domain, access controlled data that is in an access
`controlled format and that is at least partially derived from the security
`messages,
`
`100[d.i] wherein the primary security system authenticates the
`conditional access server as one of clients of the primary security
`
`2 For purposes of this Decision, we largely adopt Petitioner’s claim limitation
`reference system.
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`Case IPR2024-01025
`Patent 8,291,236 B2
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`system through a first authentication process using a first root of trust
`and
`
`100[d.ii] the conditional access server authenticates clients of the
`conditional access server through a second authentication process
`which is independent of the first authentication process and wherein the
`second authentication process uses a second root of trust which is
`independent of and different than the first root of trust, and
`
`100[d.iii] wherein the conditional access server is configured to
`substitute the first security domain with the second security domain for
`the clients under the second root of trust.
`
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts claims 100–102, 106, and 107 are unpatentable on the
`following grounds:
`Reference(s)/ Basis
`35 U.S.C. §
`Claim(s) Challenged
`Russ4
`1023
`100–102, 106, 107 (Ground 1)
`Russ
`103
`100–102, 106, 107 (Ground 2)
`Russ, Robert5
`103
`103–105 (Ground 3)
`Russ, Eskicioglu6
`103
`108, 109, 111 (Ground 4)
`Pet. 9. Petitioner relies on the Declaration testimony of Anthony J. Wasilewski,
`Ph.D. in support of the asserted grounds of obviousness. Ex. 1003. Patent Owner
`relies on the Declaration testimony of Sam Malek, Ph.D. in opposition. Ex. 2001.
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011)
`(“AIA”), includes revisions to 35 U.S.C. §§ 102, 103 that became effective after
`the filing of the application that led to the challenged patent. Hence, this inter
`partes review is governed by the pre-AIA provisions of 35 U.S.C. §§ 102, 103.
`4 US Patent No. 6,748,080 B2, issued June 8, 2004, filed May 24, 2002. Ex. 1005.
`5 US Patent No. 7,546,641 B2, issued June 9, 2009, filed Feb. 13, 2004. Ex. 1006.
`6 US Patent No. 8,332,657 B1, issued Dec. 11, 2012, filed Mar. 15, 2000.
`Ex. 1007.
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`Case IPR2024-01025
`Patent 8,291,236 B2
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`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner describes a person of ordinary skill in the art (“POSITA”) as
`someone having “a bachelor’s degree in computer science, electrical engineering,
`or a related field, and approximately two or more years of experience in multi-
`media content distribution and management. Additional education could substitute
`for professional experience, and vice versa.” Pet. 13. Patent Owner applies
`Petitioner’s proposed definition for purposes of its Preliminary Response. Prelim.
`Resp. 5 (citing Malek Dec. Ex. 2001 ¶ 38).7
`In determining the level of ordinary skill in the art, various factors may be
`considered, including the “type of problems encountered in the art; prior art
`solutions to those problems; rapidity with which innovations are made;
`sophistication of the technology; and educational level of active workers in the
`field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom
`Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).
`“These factors are not exhaustive but are merely a guide to determining the level of
`ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256
`(Fed. Cir. 2007). There is uncontested evidence in the record that reflects the
`knowledge and experience of a POSITA.
`We adopt Petitioner’s proposal for purposes of institution, which the prior
`
`7 Contrary to Patent Owner’s contention that Petitioner does not show that
`Dr. Wasilewski “qualifies as a POSITA,” his physics degree, background, and
`experience, in systems involving multi-media content distribution and management
`and/or related fields, including as an inventor of over 50 patents in fields that
`include encryption, MPEG systems, and transfer of digital content, including Russ
`(Ex. 1005), along with extensive engineering experience in related fields, is more
`than adequate on this preliminary record to qualify Dr. Wasileski as an artisan of
`ordinary skill. Compare Prelim. Resp. 5, with Ex. 1003 ¶¶ 4–19 and Ex. 1004.
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`art of record supports. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579
`F.2d 86, 91 (CCPA 1978).
`B. Claim Construction
`We construe claim terms using “the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37
`C.F.R. § 42.100(b). In this context, claim terms “are generally given their ordinary
`and customary meaning” as understood by a POSA at the time of the invention.
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
`“Importantly, the person of ordinary skill in the art is deemed to read the claim
`term not only in the context of the particular claim in which the disputed term
`appears, but in the context of the entire patent, including the specification.” Id. at
`1313. The “specification ‘is always highly relevant to the claim construction
`analysis. Usually, it is dispositive; it is the single best guide to the meaning of a
`disputed term.’” Id. at 1315 (citation omitted). Accordingly, when construing a
`disputed claim limitation, “we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469
`F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
`1. Independent Second Authentication Process and Second Root of
`Trust
`At Petitioner’s request, we authorized the parties to file a five-page Reply
`and Sur-Reply “related only to claim construction issues.” Ex. 3002. As stated in
`our email instructions to counsel, we consider only the parties’ arguments bearing
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`Case IPR2024-01025
`Patent 8,291,236 B2
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`on claim construction and disregard everything else.8 The parties direct our
`attention in particular to the proper construction of an “independent” second root
`of trust in context of the recited claim limitation: “a second authentication process
`which is independent of the first authentication process and wherein the second
`authentication process uses a second root of trust which is independent of and
`different than the first root of trust.” We refer to this disputed claim limitation
`hereafter as the “independent authentication” limitation.
`Petitioner proposes the following construction: “authentication processes
`that are performed by independent roots of trust—i.e., roots of trust with trust
`determinations that are independent of the outcome of the other.” Reply 3 (citing
`Ex. 1001, 8:16–38 (“the secondary CA server follows rules (e.g., CA messages) of
`the primary CA server to manage a secondary subscriber management system”));
`see also id. at 5 (“‘independent’ . . . identifies how the first and second roots of
`trust” “arrive at their first and second authentication determinations, without
`relying on the output of the other”). Petitioner also asserts that Patent Owner’s
`patentability argument hinges on a construction of “independent” such that
`“‘independent’ as used to modify the first and second roots of trust must be
`construed as independently controlled,” which Petitioner asserts is inconsistent
`with the ’236 patent claim language and specification. Id. at 1. Patent Owner, for
`its part, denies that it is advocating for a construction where the two roots of trust
`are “independently controlled.” Sur-Reply 3. Patent Owner does not offer a
`construction of the “independent authentication” limitation, citing an
`unilluminating description where “the client authentication in the secondary
`security domain is completely independent from the client authentication in the
`
`8 The parties are reminded of the Board’s sanction authority for non-compliance.
`35 U.S.C. § 316(a)(6); 37 C.F.R. § 42.12(a)(1).
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`primary security domain.” Id. at 4 (citing Ex. 1001, 8:33–35). As set forth below,
`it is not necessary at this stage to construe the term explicitly.
`2. Means-Plus-Function Terms
`Petitioner asserts that the claims recite several means-plus-function
`limitations under 35 U.S.C. § 112 ¶ 6 and provides constructions for same.9 See
`37 C.F.R. § 42.104(b)(3); Pet. 16–22 (listing means for receiving, means for
`processing, means for transmitting, means for decrypting, means for
`descrambling). Patent Owner does not address Petitioner’s claim construction as
`to these terms at this stage.
`Under 35 U.S.C. § 112 ¶ 6,
`[a]n element in a claim for a combination may be expressed as a
`means . . . for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be
`construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
`Construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6
`
`involves two steps: 1) identifying the claimed function and 2) identifying in the
`specification the corresponding structure that performs the claimed function. Med.
`Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir.
`2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed.
`Cir. 2002).
`“[S]tructure disclosed in the specification” is “‘corresponding’ structure,”
`“only if the specification or prosecution history clearly links or associates that
`structure to the function recited in the claim.” B. Braun Med. Inc., v. Abbott Lab’s,
`124 F.3d 1419, 1424 (Fed. Cir. 1997) (emphasis added) (“Because Braun’s
`
`
`9 As indicated above, statutory citations are to the pre-AIA version of 35 U.S.C.
`§ 112. See supra note 3.
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`Case IPR2024-01025
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`specification does not adequately disclose the valve seat as structure that holds the
`disc firmly in place, Braun has failed to particularly point out and distinctly claim
`that particular means.”). “This duty to link or associate structure to function is the
`quid pro quo for the convenience of employing § 112, ¶ 6.” Id. (citing O.I. Corp.
`v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997)).
`
`Our reviewing court explains:
`If the specification is not clear as to the structure that the patentee
`intends to correspond to the claimed function, then the patentee has not
`paid that price but is rather attempting to claim in functional terms
`unbounded by any reference to structure in the specification. Such is
`impermissible under the statute.
`Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211
`(Fed. Cir. 2003) (emphasis added); see also Medtronic, Inc. v. Advanced
`Cardiovascular Sys., Inc., 248 F.3d 1303, 1313 (Fed. Cir. 2001) (finding particular
`structures not to be corresponding structures because “one skilled in the art would
`not perceive any clear link or association between these structures and the [recited]
`function of connecting adjacent elements together”).
`After identifying the respective functions recited in claims 100, 104, 106,
`and 108, Petitioner proposes that the corresponding structure of “means for
`receiving” includes “one or more communication interfaces, a physical interface, a
`tuner, and statutory equivalents.” Pet. 16–17 (citing Ex. 1001, 7:53–56, 17:26–27,
`17:51–18:18, 21:21, 21:33–36, 21:50–52, 21:61–62, 22:33–37; Ex. 1003
`¶¶ 53–56)).
`After identifying the respective functions recited in claims 100, 104, and
`108, Petitioner proposes that the corresponding structure of “means for processing”
`includes a microprocessor programmed with algorithms and equivalents that
`decrypt an EMM, decrypt an ECM to obtain a control word, and decrypt and
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`Case IPR2024-01025
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`re-encrypt an ECM to generate a substitutive ECM, respectively. Pet. 17–18
`(citing Ex. 1001, 10:36–39, 12:59–61, 13:30–34 13:44–53, 13:60–62, 14:21–24,
`17:44–47,18:48–50, 20:42–51, 21:61–63, 22:26–29, 22:41–42; Ex. 1003
`¶¶ 57–62).
`After identifying the function recited in claim 101, Petitioner proposes that
`the corresponding structure of “means for transmitting” “includes one or more
`communication interfaces, a physical interface, a data network communication
`interface, and . . . equivalents.” Pet. 19–20 (citing Ex. 1001, 8:44–49; Ex. 1003
`¶¶ 63–66).
`After identifying the function recited in claim 101, Petitioner proposes that
`the corresponding structure of “means for decrypting” includes “the processor”
`identified above, “programmed to decrypt an EMM to recover a service key, and
`. . . equivalents.” Pet. 20–21 (citing Ex. 1001, 10:31–34, 13:44–45, 18:4–5,
`18:39–40, 21:46–48.; Ex. 1003 ¶¶ 67–70).
`For institution purposes, the preliminary record supports Petitioner’s claim
`construction proposals for the means-plus-function terms. As indicated above,
`Patent Owner does not address these proposals. See generally Prelim. Resp.
`3. Order on Claim Construction
`The parties are ordered to propose and support a specific plain meaning or
`other construction of the “independent authentication” limitation in their briefs,
`with reference to the following claim language:
`100[d.ii] the conditional access server authenticates clients of the
`conditional access server through a second authentication process
`which is independent of the first authentication process and wherein the
`second authentication process uses a second root of trust which is
`independent of and different than the first root of trust.
`
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`Case IPR2024-01025
`Patent 8,291,236 B2
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`The parties are ordered to analyze the relevant claim language and cite to the
`
`specification and prosecution history in support of their claim construction where
`applicable. The parties are further ordered to address the question of whether an
`“independent” “second authentication process” and “second root of trust” requires
`a conditional access server that manages a secondary subscriber management
`system where a “client” of the conditional access server does not subscribe to the
`primary subscriber management system. See Ex. 1001, 8:3–38 (stating
`“authentication methods used by the secondary CA server in the secondary
`subscriber management system are independent from those used by the primary
`CA server”).
`4. Summary
`On the present record, we determine that no explicit construction of other
`claim terms is necessary to determine whether to institute an inter partes review in
`this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to
`resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`C. Asserted Anticipation of Claims 100–102, 106, and 107 by Russ
`(Ground 1)
`Petitioner contends that Russ anticipates claims 100–102, 106, and 107. Pet.
`23–61. Supported by the testimony of Dr. Wasilewski, Petitioner provides a
`detailed mapping of the claim elements to show how Russ anticipates the claims.
`See id.
`Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior
`art disclosure of all elements of a claimed invention arranged as in the claim.”
`Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir.
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`2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
`To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe,
`either expressly or inherently, each and every claim limitation and enable one of
`skill in the art to practice an embodiment of the claimed invention without undue
`experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318,
`1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.2009)).
`“[E]xtrinsic evidence may be considered when it is used to explain, but not expand,
`the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed.
`Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927
`F.2d 1565, 1576–77 (Fed. Cir.1991)).
`1. Russ (Ex. 1005)
`The Russ patent, titled “Apparatus For Entitling Remote Client Devices,”
`describes a “master-receiver in a subscriber television network [that] receives
`service instances and entitlement information from a headend . . . and re-transmits
`service instances to a client-receiver after dynamic encryption scheme
`determination.” Ex. 1005, Abstract (code 57). Petitioner’s annotated version of
`Russ’s Figure 1 follows:
`
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`Pet. 23 (Ex. 1005, Fig. 1). In digital broadband delivery system 100, headend 102
`(red) communicates with content providers 114 to obtain services such as
`broadcasts or video-on-demand, and to serve them to subscribers. Id. at 5:35–51.
`The headend provides services to subscriber 108(a) by establishing a
`communication path with digital subscriber communication terminal (“DSCT”)
`110 (blue) to provide service instances to client-receiver device 122 (green), for
`example a laptop computer. Id. at 5:52–6:32, 6:51–61, 8:38–9:25.
`DSCT 110 manages a local network at the subscriber location and acts as the
`
`entitlement authority that grants and deletes entitlements to service instances for
`client-receiver device 122 based on information provided by the headend. Ex.
`1005, 17:61–18:40, 18:60–65. The DSCT and client-receiver communicate a
`dynamic encryption scheme when the client-receiver joins the DSCT’s local
`network, or for example, “when the user of the client-receiver 122 changes from
`one user channel to another or requests a different type of content.” Id. at 3:17–20,
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`16:64–17:60. Depending on the device classification of the client-receiver, e.g., a
`laptop, PDA, or set-top box, the DSCT communicates with the client-receiver to
`negotiate and determine an operative encryption scheme, such as secure socket
`layer or Digital Transmission Content Protection (“DTCP”) encryption protocols
`that are “known to those skilled in the art.” Id. at 17:4–14. Alternatively, the
`headend “can also send an EMM [Entitlement Management Message] to the DSCT
`instructing the processor to no longer determine the encryption scheme for the
`client-receiver.” Id. at 25:17–19. “In that case, the headend determines the
`encryption scheme used to communicate information between the DSCT and the
`client-receiver.” Id. at 25:19–22.
`2. Whether Russ discloses or teaches “independent authentication”
`Petitioner maps the “independent authentication” limitation, including the
`disputed “second root of trust,” to Russ’s disclosure of the dynamically determined
`DTCP encryption protocol for communicating content to the client-receiver. Pet.
`45–46 (citing Ex. 1005, 16:64–17:14). Petitioner relies on testimony by Dr.
`Wasilewski and cites extrinsic evidence to support its assertion that the disclosed
`DTCP encryption protocol requires a separate authentication and key exchange
`between the DTSC and client-receiver, “thereby explaining what the phrase [DTCP
`encryption protocol] would have meant to one skilled in the art.” See In re Baxter,
`952 F.2d at 390; Pet. 45–46 (citing Ex. 1003 ¶¶ 126–131; Ex. 1010 ¶ 9; Ex. 1011
`¶¶ 53, 107, 139–143); Ex. 1003 ¶ 128 (“DTCP protocols require that devices
`undergo a handshaking process, known as an Authentication and Key Exchange
`(AKE), before protected communications are to take place. A [POSA] would have
`been familiar with such processes . . . .” (citing Ex. 1010 ¶ 9; Ex. 1011 ¶¶ 53, 107;
`Ex. 1012 ¶ 41)). Petitioner asserts the extrinsic evidence demonstrates a person of
`ordinary skill in the art “would have recognized that DTCP protocols include
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`authentication and key and certificate exchange procedures that ensure
`communications are protected.” Id. at 46 (citing Ex. 1010 ¶ 9; Ex. 1011 ¶¶ 53,
`107, 139–143, Fig. 17; Ex. 1003 ¶¶ 126–131).
`Patent Owner argues that Petitioner does not establish that Russ discloses or
`teaches at least the “independent authentication” limitation. Prelim. Resp. 13–22.
`Patent Owner argues in particular that Russ does not disclose or teach a “second
`root of trust” because “Russ does not mention an ‘Authentication and Key
`Exchange’ (AKE) using ‘DTLA [Digital Transmission Licensing Authority]
`licensed certificates’ at all.” Id. at 13–14 (citing Ex. 2001 ¶ 50). Patent Owner
`urges that, although Russ discloses a DTCP encryption scheme, Russ “never
`discloses using it for any authentication” because the headend authenticates the
`client-receiver when it joins the DSCT-managed local network at the subscriber
`location by “exchanging trusted keys without the need for DTLA certificates.” Id.
`at 15 (citing Ex. 2001 ¶ 54).
`a. “second root of trust”
`Russ expressly discloses and teaches a DTCP encryption scheme to protect
`content transmitted from the DSCT to a client-receiver, and Russ does not
`expressly disclose the use of AKE key exchange and a DTLA license certificate as
`a “second root of trust” for authenticating the client-receiver. Ex. 1005,
`16:64–17:14. Nevertheless, Petitioner provides extrinsic evidence showing
`sufficiently that Russ discloses the second root of trust to a person of ordinary skill
`in the art, who “would have recognized that [Russ’s] DTCP protocols include
`authentication and key and certificate exchange procedures.” Pet. 46 (citing
`Ex. 1003 ¶¶ 126–131); In re Baxter, 952 F.2d at 390 (extrinsic evidence may
`“explain, but not expand, the meaning of a reference”). Dr. Wasilewski, moreover,
`cites corroborating documentary evidence to support his opinion that DTCP
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`protocols “require” AKE key exchange and authentication of the client-receiver by
`the DSCT (via DTLA license certificate) and a POSA would have recognized that
`fact. Ex. 1003 ¶ 128 (citing Ex. 1010 ¶ 9; Ex. 1011 ¶¶ 53, 107; Ex. 1012 ¶ 41).
`Dr. Wasilewski further opines that the DTCP/DTLA protocol and license
`certificate serves as a “second root of trust” that is “independent of and different
`than” the first root of trust in Russ “because headend 102 is not disclosed as using
`any DTCP-related protocols with respect to DSCT 110.” Id. ¶¶ 130–131
`(emphasis added).
`At this stage, Patent Owner disputes Petitioner’s evidence that a POSITA
`would have recognized Russ’s disclosure of DTCP encryption as requiring AKE
`key exchange via DTLA license certificate as a “second root of trust” for
`authenticating the client-receiver. For example, Patent Owner relies on
`Dr. Malek’s opinion that “Russ discloses exchanging trusted keys without the need
`for DTLA certificates” in an attempt to rebut Dr. Wasilewski’s sworn testimony.
`Prelim. Resp. 15 (citing Ex. 2001 ¶ 54). Patent Owner and Dr. Malek, however, do
`not specifically address Petitioner’s extrinsic evidence showing that DTCP
`encryption requires an AKE key exchange and a DTLA license certificate. Id.
`(citing Ex. 2001 ¶ 54) & n.1 (acknowledging that Petitioner cites two patent
`publications without addressing their teachings as relied upon by Petitioner or
`Dr. Wasilewski’s testimony about them). Patent Owner also relies on Russ’s
`description of the headend authenticating the client-receiver with an exchange of
`trusted public keys when the receiver “is first brought into the local network of the
`DSCT,” but without explaining what impact, if any, the initial registration of the
`client-receiver would have on the use of AKE key exchange and DTLA license
`certificate authentication in a DTCP encryption scheme. Id. at 15–16 (citing Ex.
`1005, 26:29–48).
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`Accordingly, at this stage of the proceeding, Dr. Wasilewski’s testimony and
`corroborating evidence sufficiently establish that i) Russ’s disclosed DTCP
`encryption scheme requires AKE key exchange and a DTLA license certificate as a
`“second root of trust” in a “second authentication process” for authenticating the
`client-receiver, and ii) a POSA would have recognized that fact. See In re Baxter,
`952 F.2d at 390 (“the dispositive question regarding anticipation [is] whether one
`skilled in the art would reasonably understand or infer [the asserted disclosure]
`from the [prior art’s] teaching”).
`b. “independent” “second root of trust” and “authentication”
`Petitioner argues that DTCP authentication based on AKE key exchange
`using DTLA license certificates is “independent and different than the first
`authentication process’s and the first root of trust’s use of serial numbers and keys
`between the headend 102 and DSCT 110 discussed in claim 100[d.i].” Pet. 45–46
`(citing Ex. 1003 ¶¶ 126–131; Ex. 1005, 16:64–17:14; Ex. 1010 ¶ 9; Ex. 1011
`¶¶ 53, 107, 139–143, Fig. 17). Dr. Wasilewski explains that “because headend 102
`is not disclosed as using any DTCP-related protocols with respect to DSCT 110,
`the authentication between DSCT 110 and client-receiver 122 is independent and
`different from that between headend 102 and DSCT 110.” Ex. 1003 ¶¶ 130–131.
`Petitioner also maintains “all that is required is” the two roots of trust “are
`independen