Trials@uspto.gov
`571.272.7822
`
`Paper No. 6
`Filed: April 25, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`Vv.
`
`QURIO HOLDINGS, INC.,
`Patent Owner.
`
`Case IPR2016-00080
`Patent 8,879,567 B1
`
`Before BARBARA A. BENOIT, KERRY BEGLEY,and
`JASON J. CHUNG,Administrative Patent Judges.
`
`BEGLEY,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`DISH Network L.L.C.(‘Petitioner’) filed a Petition requesting inter
`
`partes review of claims 20, 21, 24, and 25 (“challenged claims”) of
`
`US. Patent No. 8,879,567 B1 (Ex. 1003, “the 567 patent”). Paper 1
`
`(“Pet.”). Qurio Holdings,Inc. (“Patent Owner”) filed a Preliminary
`
`Responseto the Petition. Paper 5 (“Prelim. Resp.”).
`
`
`571.272.7822
`
`Paper No. 6
`Filed: April 25, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`Vv.
`
`QURIO HOLDINGS, INC.,
`Patent Owner.
`
`Case IPR2016-00080
`Patent 8,879,567 B1
`
`Before BARBARA A. BENOIT, KERRY BEGLEY,and
`JASON J. CHUNG,Administrative Patent Judges.
`
`BEGLEY,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`DISH Network L.L.C.(‘Petitioner’) filed a Petition requesting inter
`
`partes review of claims 20, 21, 24, and 25 (“challenged claims”) of
`
`US. Patent No. 8,879,567 B1 (Ex. 1003, “the 567 patent”). Paper 1
`
`(“Pet.”). Qurio Holdings,Inc. (“Patent Owner”) filed a Preliminary
`
`Responseto the Petition. Paper 5 (“Prelim. Resp.”).
`
`
`
`IPR2016-00080
`Patent 8,879,567 Bl
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`
`instituted unless “the information presented in the petition .
`
`.
`
`. and any
`
`response .
`
`.
`
`. showsthat there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” Having considered the Petition and the Preliminary Response, we
`
`conclude that the information presented showsthat there is a reasonable
`
`likelihood that Petitioner would prevail in establishing the unpatentability of
`
`claims 20, 21, 24, and 25 of the ’567 patent. Accordingly, weinstitute inter
`
`partes review ofthese claims.
`
`I. BACKGROUND
`
`A. THE ’567 PATENT
`
`The °567 patent is directed to “[a] gateway interconnecting a high
`
`speed Wide Area Network (WAN)and a lower speed Wireless Local Area
`
`Network (WLAN).” Ex. 1003, [57], 1:55-57. The disclosed gatewayis
`
`intended to improvethe architecture of traditional residential gateways in
`
`which “overall performance”is limited to the WLAN bandwidth. Jd.
`
`at 1:45-51. Figure 1, reproduced below,illustrates system 10 according to
`
`one embodiment. See id. at 2:23—27, 2:53—56.
`
`FIG.1
`
`Figure 1 depicts system 10 with “adaptable cross-layer gateway 12,”
`
`“interconnecting” high speed WAN 14 and lower speed WLAN 16. Id.
`2
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`
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`IPR2016-00080
`Patent 8,879,567 B1
`Gateway 12, along with network interface 20 and WLAN 16,is included in
`
`customer premises 18. Jd. at 3:1-5. WLAN 16 includes user devices 22-28,
`
`which “maybe, for example, personal computers”or “Personal Digital
`
`Assistants (PDAs).” Jd. at 3:27-33.
`
`The °567 patent discloses that the gateway includesan “adaptable
`
`cross-layer offload engine”“to manage bandwidth between the high speed
`
`WANandthe lower speed WLAN.” Jd. at [57], 1:60-62; see id. at 3:34-43.
`
`The patent explains that the use of “cross-layering techniques”in
`
`gateway 12 “improves the performance of... WLAN 16”to take advantage
`
`of the high speed WAN 14. Jd. at 2:59-62. As data enter the gateway “at
`
`the high speed data rate of the WAN,the offload engine stores the data in a
`
`non-secure data cache
`
`” “in order to take advantage of the high data rate
`
`provided by .. . high speed WAN 14.” Id. at [57], 1:62-65, 2:56—59.
`
`In addition, the ’567 patent discloses that the gatewayalso includes a
`
`“rule check engine” that inspects the data in the non-secure data cache. Id.
`
`at [57], 1:65-66. With reference to a specific embodiment, the ?567 patent
`
`explains that this inspection is made according to a numberofrules, which
`
`may include “Digital Rights Management (DRM)rules 46.” Jd. at 4:8—12.
`
`The DRM rules “maybe rules for protecting media files ... stored on...
`
`user devices 22-28 within... WLAN 16 whentransmitted over.. .
`
`WAN 14,” and “may include rules for identifying incoming content to be
`
`encoded as a security feature to prevent unauthorized viewing of the
`
`specified content... within... WLAN 16.” Id. at 4:16~23.
`
`After inspection by the rule check engine, the data are “moved from
`
`the non-secure data cache to a secure data cache.” Jd. at [57], 1:66—2:3.
`
`With reference to a particular embodiment, the ’567 patent explains that the
`
`secure data cache “is used to temporarily store data from the non-secure data
`
`3
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`
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`IPR2016-00080
`Patent 8,879,567 Bl
`cache ... that has been inspected and cleared for transmission prior to
`
`transmission to ... user devices 22-28 in... WLAN 16.” Jd. at 4:3-7.
`
`Finally, the data are “transmitted to an appropriate user device in the WLAN
`
`at the lower data rate of the WLAN.”Jd. at [57]; see id. at 2:1-3.
`
`B.
`
`ILLUSTRATIVE CLAIM
`
`Claim 20, reproduced below,is the only independentclaim ofthe
`
`challenged claimsandisillustrative of the recited subject matter:
`
`20. A method -of interconnecting a first network and a second
`network comprising:
`receiving content from thefirst networkat a first data rate;
`offloading the content to a data cache;
`a
`to
`cache
`transmitting the
`content
`from the data
`corresponding one of a plurality of user devices within
`the second network at a second data rate of the second
`network that is less than the first data rate of the first
`network, wherein the content is offloaded to the data
`cache such that
`the first and second data rates are
`supported;
`inspecting the content in the data cache based onat least one
`Digital Rights Management (DRM)rule to identify data
`to be processed by a DRM function;
`encod[ing] the identified data using the DRM function such
`that the encoded data is transmitted to the corresponding
`one of the plurality of user devices within the second
`network; and
`providing license keys for decoding the encoded data to
`desired ones of the plurality of user devices having
`permission to consumethe encoded data.
`
`ld. at 9:22-42, Certificate of Corr.
`
`C. ASSERTED PRIOR ART
`
`The Petition relies upon the following asserted prior art references:
`
`USS. Patent No. 8,908,699 B2 (filed Mar. 30, 2005, issued Dec. 9, 2014)
`
`(Ex. 1006, “Karaoguz”);
`
`
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`IPR2016-00080
`Patent 8,879,567 B1
`USS. Patent No. 7,647,614 B2 (filed June 7, 2005, issued Jan. 12, 2010)
`(Ex. 1007, “Krikorian”);
`
`U.S. Patent No. 7,573,820 B2 (filed June 29, 2005, issued Aug. 11, 2009)
`
`(Ex. 1008, “Krishnaswamy’’); and
`
`U.S. Patent Application Publication No. 2006/0200415 A1 (filed Feb. 16,
`
`2006, published Sept. 7, 2006) (Ex. 1018, “Lu”).
`In addition to these references, the Petition supports its contentions with the
`Declaration of Kevin Negus, Ph.D. (Ex. 1005).
`
`D. ASSERTED GROUNDS OF UNPATENTABILITY
`
`Petitioner challenges claims 20, 21, 24, and 25 of the 567 patent
`under 35 U.S.C. § 103! based on the following asserted grounds. Pet. 4.
`|ChallengedClaim(s)|Basis|_References
`
`
`
`
`
`
`
`
`
`
`
`
`§ 103
`
`Il. ANALYSIS
`
`A. CLAIM CONSTRUCTION
`In an inter partes review, the Board interprets claims in an unexpired
`patent using the “broadest reasonable construction in light of the
`
`specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b).
`
`Underthis standard, we presumea claim term carries its “ordinary and
`
`customary meaning,” which “is the meaning that the term would have to a
`
`person of ordinary skill in the art in question”at the time of the invention.
`
`! The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287-88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. Because the 7567 patent was filed before March 16, 2013, our
`references to § 103 in this decision are to the pre-AIA version.
`5
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`IPR2016-00080
`Patent 8,879,567 Bl
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citation
`
`omitted). To rebut this presumption by acting as a lexicographer, the
`
`patentee must give the term a particular meaningin the specification with
`
`“reasonable clarity, deliberateness, and precision.” Jn re Paulsen,
`
`30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Petitioner and Patent Owner each propose constructions for several
`
`claim terms. Pet. 9-11; Prelim. Resp. 10—22. On this record, we determine
`
`that none of the claim terms requires an express construction and accordall
`
`terms their ordinary and customary meaning for purposesofthis decision.
`
`B. GROUNDS RELYING ON KARAOGUZ AND LU
`
`i. Obviousness over Karaoguz and Lu
`
`Petitioner argues claims 20, 24, and 25 of the ’567 patent are
`
`unpatentable as obvious over Karaoguz and Lu. Pet. 11-47.
`
`—
`a. Karaoguz
`Karaoguz discloses a system including a “broadband access gateway”
`
`that automatically converts multimedia information from a first format to a
`
`second format. Ex. 1006, [57]. Figure 3C, reproduced below,depicts part
`
`of system 100 in one embodiment. See id. at 3:10-33, 12:11-13, 19:1-7.
`
`
`
`IPR2016-00080
`Patent 8,879,567 B1
`As shownin Figure 3C, system 100 comprises wireless interface 120,
`
`gateway 118 coupled to modem 116, and various wireless access devices,
`
`depicted by laptop 117 and access device 124. Jd. at 12:11-21, 19:14-30.
`
`Modem 116 is connected to broadband access provider 106 (notillustrated
`
`in Figure 3C) through broadband connection 107, which “may comprise, for
`
`example, a digital subscriber line (DSL) connection, a cable network
`
`connection,a satellite connection, a T1 or T3 network connection,or similar
`
`broadband communicationlink.” Jd. at 13:4—9. Wireless interface 120 may
`
`comprise, “for example, a Bluetooth interface, a cellular interface, and any
`
`combination of an IEEE 802.11 a, b, g, and/or n interface, and/or an IEEE
`
`802.15.3a ultra-wideband interface.” Id. at 12:32-36.
`
`Gateway 118, as illustrated in Figure 3C, comprises processor 151 as
`
`well as multimedia format conversion functionality 152, user-defined quality
`
`of service criteria 153, and digital rights managementfunctionality 154. Jd.
`
`at 19:30—40, 20:1-7. Karaoguz discloses that multimedia format conversion
`
`functionality 152 allows for the “conversion of multimedia information from
`
`one... format[] to another,” whereas digital rights management
`
`functionality 154 “support[s] digital rights management based conversion of
`multimedia information.” Jd. at 19:1—7, 19:35-38, 19:62—20:4. Karaoguz
`
`explainsthat “{dJigital rights management may employa set of rules and/or
`
`guidelines that may permit .. . gateway 118 to convert user-requested
`
`multimedia information to an alternate version usable by an access device,
`
`while also protecting the authorship and ownership rights associated with the
`
`original version.” Jd. at 19:7-14.
`
`Karaoguz discloses that a digital certificate “may be stored within or
`
`transferred to” gateway 118 and “contained within .
`
`.
`
`. digital rights
`
`management functionality 154.” Jd. at 19:62—20:7. According to Karaoguz,
`
`7
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`
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`IPR2016-00080
`Patent 8,879,567 B1
`the digital certificate “convey[s] permissionsor authority to consume
`multimedia content” and “may be used to regulate access to and the
`
`conversion of multimedia information into alternate formats accordingto
`
`privileges granted by the media-rights owner.” Jd. at 19:63-20:9. For
`
`example, if a user of access device 124 does not have the right to view
`
`streaming video in digital versatile disk (“DVD”) quality butis “permitted to
`
`view a reducedresolution version,”digital rights management functionality
`
`154 may enable gateway 118 to convert the video “to a lower quality video
`
`stream,” with the “level or quality of [the] format conversion .
`
`.
`
`. based upon
`
`... digital rights managementfunctionality 154.” Jd. at 20:20-31.
`
`Karaoguz further describes methods of operating gateway 118 in
`
`which the gateway mayreceive a “request for multimedia information,”
`
`“determine the format of the requested” information, and then “check. .
`
`. to
`
`determine[] whether the format of the multimedia information requested is
`
`compatible with the access device being used by the user.” Jd. at 22:43-61;
`
`see id. at 22:14—24:28. “If... the requested multimedia information is not
`39 66
`
`compatible with the access device in use,”
`
`“gateway 118 may convert the
`
`format of the requested multimedia information to a format that the access
`
`device is capable of handling.” Jd. at 23:2—7. “The conversion may also be
`
`based upon any digital rights management controls that may be associated
`
`with the requested multimedia information.” Jd. at 24:22-25; see id. at [57].
`
`Finally, the “converted version of the requested multimedia information may
`
`then be transferred to the access device.” Jd. at 23:14-16, 24:25—28.
`
`b. Lu
`
`Lu describes an implementation of a DRM schemein which digital
`
`media contentis protected through encryption with a content key (“CKey”)
`
`and the CKeyas well as the encrypted contentis sent to a “trusted digital
`
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`TPR2016-00080
`Patent 8,879,567 Bl
`content rendering device.” Ex. 1018 7 15; see id. at [57], Figs. 1, 4.
`
`Encrypting the content with the CKey ensures that the content “cannot
`
`properly [be] rendered withoutfirst decrypting the .
`
`.
`
`. content with the
`
`CKey.” Id. | 23.
`
`In one disclosed embodiment, a rendering device requests a right to
`
`render multimedia content andif that right is includedin the rights of the
`rendering device, the content is encrypted with the CKey andthen the CKey,
`followed by the content, is transmitted to the device. Jd. J 52, Fig. 4. “[T]he
`multimediacontentfile is [then] decrypted and rendered”at the device. Id.
`
`In another embodiment, cache server 212 maylocally store content
`
`and send the content to the rendering device. Id. { 34.
`
`c. Independent Claim 20
`
`(i) “encodf{ing] the identified data using the DRMfunction”
`
`The method of independent claim 20 recites “encod[ing] the identified
`
`data using the DRM function such that the encodeddata is transmitted to the
`
`corresponding oneofthe plurality of user devices within the second
`
`network”(“encoding step”). Ex. 1003, 9:36-39, Certificate of Corr.
`
`Petitioner, with supporting testimony from Dr. Negus, proffers alternative
`
`theories as to how Karaoguz and Luteach or suggestthis limitation.
`
`Pet. 29-44; Ex. 1005 ff 422-29, 438-44. First, Petitioner argues that
`
`Karaoguz alone teaches or suggests the limitation under the plain and
`
`ordinary meaning otthe claim language, citing as support Karaoguz’s
`
`disclosuresthat its gateway, including processor, multimedia format
`
`conversion functionality, and digital rights managementfunctionality,
`
`convert multimedia based on privileges granted by the media-rights owner.
`
`See Pet. 31-32; Ex. 1005 Jf 86, 428-29. Second, Petitioner asserts thatif
`
`encoding requires encrypting, the combination of Karaoguz and Luteaches
`
`9
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`IPR2016-00080
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`or suggests this limitation, in light of Lu’s disclosures of an encryption and
`
`content key distribution methodology. See Pet. 32-34; Ex. 1005 4¥ 438-44.
`
`Patent Ownerdisputes Petitioner’s arguments. Patent Owner
`
`contends that Karaoguz alone does not teach or suggest the recited “DRM
`
`function,” because Karaoguz’s DRM functionality, in converting the format
`
`of multimedia information, does not restrict viewing or playing of the
`
`information based on a DRM rule. Prelim. Resp. 26, 28—30, 32-33.
`
`According to Patent Owner, Karaoguz doesnotrefer to encryption of
`
`content within its network. Jd. at 32. Asto Petitioner’s alternative theory
`
`that the combination of Karaoguz and Luteaches or suggests the recited
`“DRM function”ifthe recited step requires encryption, Patent Owner argues
`
`Lu does not cure the deficiencies of Karaoguz. Jd. at 26-27, 34-41.
`
`At the outset, the Specification of the °567 patent does not provide a
`
`definition for the verb “encode”or the gerund “encoding.” We,therefore,
`
`look to a contemporaneoustechnical dictionary to ascertain the ordinary and
`
`customary meaning of the term. See, e.g., Phillips v. AWH Corp., 415 F.3d
`
`1303, 1317-18 (Fed. Cir. 2005). In particular, the MICROSOFT COMPUTER
`
`DICTIONARY(Sth. ed. 2002) provides the following definition of “encode”:
`
`“1. See encrypt. 2. In programming, to put something into code, which
`
`frequently involves changing the form—for example, changing a decimal
`numberto binary-coded form.” Ex. 3001, 192; see also Ex. 1018 qf 18, 23,
`
`Fig. 1 (distinguishing between encoding and encrypting). The dictionary, in
`
`turn, defines “encrypt” as: “[t]o encode (scramble) information in such a
`
`way that is unreadable to all but those individuals possessing the key to the
`
`code.” Ex. 3001, 192.
`
`Under the meaning of “encode”that requires putting something into
`
`code, encoding does not require encryption. ThePetition cites disclosures of
`
`10
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`IPR2016-00080
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`Karaoguz that fall within this definition of “encode,” including disclosures
`
`related to Karaoguz’s gateway 118, particularly its multimedia format
`
`conversion functionality 152 and DRM functionality 154, converting data
`
`“into alternate formats according to privileges granted by the media-rights
`
`owner” and “based upon [DRM]controls.” Ex. 1006, 20:4—10, 24:20-25;
`
`see Pet. 29-32; Ex. 1005 9 422-29. Moreover, Karaoguz provides
`
`examples of the DRM functionality controlling the “level or quality of a
`
`format conversion,” such as lowering video quality where the user of the
`
`requesting device “may not havethe right to view streaming video in DVD
`
`quality, but may be permitted to view a reduced resolution version.”
`
`Ex. 1006, 20:20-31; see also id. at 23:9-15, 24:5—22 (explaining that a
`
`format conversion mayinclude a “change in the coding of the multimedia
`
`information”). Accordingly, at this stage of the proceeding and on the
`
`record before us, Petitioner has made a sufficient showing that Karaoguz
`
`teaches or suggests “encod[ing] the identified data using the DRM function,”
`
`as recited in claim 20, underthis definition of “encode.” See Pet. 29-32;
`
`Ex. 1005 4 428-29.
`
`Alternatively, under the meaning of “encode” that requires encryption,
`
`Petitioner has shown adequately, for purposesofinstitution, that the
`
`combination of Karaoguz and Luteachesor suggests the recited encoding
`
`step. In addition to Karaoguz’s disclosures outlined above with regard to the
`
`other definition of “encode,” Karaoguz features disclosures relevant to
`
`encryption. For example, Karaoguz explainsthat digital certificates, within
`
`DRM functionality 154 of gateway 118, “regulate access to . .. multimedia
`
`information accordingto privileges granted by the media-rights owner” and
`
`“convey|] permissions or authority to consume multimedia content.”
`Ex. 1006, 19:62-20:15; see also Ex. 3002 (ALAN FREEDMAN, THE
`
`11
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`COMPUTER GLOSSARY(9th ed. 2001)), 103-04 (explaining that a “digital
`
`certificate” is sent with an encrypted messageandis used to decrypt the
`message); Ex. 3001 (MICROSOFT COMPUTER DICTIONARY(Sth. ed. 2002)), |
`158 (explaining that a “digital certificate” relates to public and private keys
`
`used for encryption and decryption purposes). Moreover, as Petitioner
`
`points out, Lu discloses a DRM scheme whereinif a requested rightis
`
`within the rights of the requesting rendering device, multimedia contentis
`
`encrypted with a key and then the key and encrypted content are sent to the
`
`device. Ex. 1018, [57], J] 5, 15, 23, 52, Figs. 1, 4; see Pet. 32-33; Ex. 1005
`
`q{ 438-43. The Petition and Dr. Negus’s testimony makea sufficient
`
`showing that Karaoguz’s gateway combined with Lu’s encryption and
`
`content key distribution methodology teaches or suggests “encod[ing] the
`
`identified data using the DRM function,” where encoding requires
`
`encryption. See Pet. 29-34; Ex. 1005 4] 438-44.
`
`Wedo notfind persuasive Patent Owner’s assertions that Lufails to
`
`cure the alleged deficiencies of Karaoguz because neither Lu’s gateway 210
`
`nor its content managementsystem servers 202 are gateways
`
`“interconnecting a first network and a second network. .
`
`. at a second data
`
`rate ... that is less than the first data rate of the first network,” much less
`
`such a gateway configured for“inspecting the content in the data cache
`
`based onat least one Digital Rights Management (DRM)rule to identify
`
`data to be processed by a DRM function”(“the inspecting step’’) or for
`
`performing the encoding step of claim 20. Prelim. Resp. 34-36. These
`
`arguments are misplaced, because Petitioner relies on Karaoguz alone—not
`
`Lu—to teach or suggest the limitations to which Patent Ownerrefers, with
`the exception ofthe encodingstep if encoding requires encryption. See
`Pet. 11-13, 21-29. Moreover, regarding the encoding step underthis
`
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`meaningof “encode,” Petitioner proposes to incorporate Lu’s encryption and
`
`content key distribution methodology into Karaoguz’s gateway. Seeid.
`
`at 32-34. Accordingly, Patent Owner’s attack on Lu individually does not
`
`support persuasively its nonobviousness arguments. See In re Merck & Co.,
`
`800 F.2d 1091, 1097 (Fed. Cir. 1986) (““Non-obviousness cannot be
`
`established by attacking references individually where the rejection is based
`
`upon the teachings of a combination of references.”).
`
`(ii) Remaining Limitations
`
`Petitioner contends Karaoguz teaches or suggests the remaining
`
`limitations of claim 20. Pet. 11-39. In addition, Petitioner alternatively
`
`argues that the combination of Karaoguz and Luteachesor suggests two of
`
`these limitations, namely “offloading the content to a data cache”
`
`(“offloading step’’) and “providing license keys for decoding the encoded
`
`data to desired ones of the plurality of user devices having permission to
`
`consumethe encoded data”(“license keys step”). Jd. at 18-21, 34-39.
`
`On the present record, we agree with Petitioner’s showing that
`
`Karaoguz teaches “[a] method of interconnecting a first network and a
`
`second network comprising: receiving content from the first network at a
`
`first data rate” (“receiving step”) and “transmitting the content from the data
`
`cache to a corresponding oneofa plurality of user devices within the second
`
`network at a second data rate of the second networkthatis less than thefirst
`
`data rate of the first network, wherein the content is offloaded to the data
`
`cache suchthatthe first and second data rates are supported” (“transmitting
`
`step”). See id. at 11-18, 21-25. In particular, we find persuasive
`
`Petitioner’s arguments that Karaoguz discloses that gateway 118 connects
`
`broadband access provider 106 and transport network 110—both of which
`
`are connected to gateway 118 via broadband connection 107 andeither of
`
`13
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`IPR2016-00080
`Patent 8,879,567 B1
`which maycorrespondto the recited “first network”—to wireless
`
`interface 120, which correspondsto the recited “second network.” See, e.g.,
`
`Ex. 1006, 12:13-19, 12:32-36, 13:4-13, 14:62—-15:11, Fig. 2; Ex. 1005
`{ 362. Moreover, as to the claim language requiring the “second data rate of
`the second network. .
`. is less than the first data rate of the first network,”
`
`Dr. Negustestifies that one of ordinary skill would have knownthat some of
`
`the broadband connections referenced in Karaoguz could support data rates
`
`exceeding someofthe interfaces Karaoguz identifies as possibilities for
`
`wireless interface 120, including the Bluetooth, GSM-basedcellular local
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`wireless interfaces, and IEEE 802.11 standards and, moreparticularly, that
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`the data rate of the T3 network connection exceeds that of the IEEE 802.11b
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`or Bluetooth WLANstandard. Ex. 1005 [{ 364, 374, 399, 404; see also
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`Ex. 1008, 16:56-63; Ex. 1023, 1220. In addition, Karaoguz explainsthat its
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`gateway receives multimedia information via broadband connection 107
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`and, after processing, “transfer[s]’’ the “converted version of the requested
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`multimedia information .
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`.
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`. to the access device.” Ex. 1006, 23:13-17,
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`24:25—28; see, e.g., id. at 13:55-62, 15:56—60, 22:43-60, 23:2-24,Fig. 6.
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`Turning to the offloadingstep,i.e., “offloading the content to a data
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`cache,” Petitioner shows adequately, for purposesofinstitution, that
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`Karaoguz’s disclosures regarding gateway 118 requiring “sufficient memory
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`and/or computing powerto effectively convert multimedia information”
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`would have suggestedthis limitation to a person of ordinary skill under the
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`ordinary and customary meaning ofthe claim language. Ex. 1006, 16:1-15;
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`Pet. 18-20; see Ex. 1005 J§ 377-80. In addition, on the record before us,
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`Petitioner also has made a sufficient showing that the combination of these
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`disclosures of Karaoguz with Lu’s disclosures regarding cache server 212,
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`which “locally stores multimedia digital content” to reduce traffic and
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`14
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`response time, teaches or suggests this limitation. Ex. 1018 4 34, Fig. 2;
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`Pet. 20-21; Ex. 1005 JJ 393-94.
`
`Asto the inspecting step of claim 20, whichrecites “inspecting the
`
`content in the data cache based onat least one Digital Rights Management
`
`(DRM)rule to identify data to be processed by a DRM function,” Petitioner
`
`has shownsufficiently that Karaoguz teachesthis step, particularly
`
`Karaoguz’s disclosures regarding multimedia format conversion
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`functionality 152 and DRM functionality 154 in gateway 118. Pet. 25-29;
`
`Ex. 1005 9 410-15. As Petitioner points out, Karaoguz explains that
`
`gateway 118, via digital rights managementfunctionality 154, supports
`
`conversion of multimedia information based on DRM,which employs “a set
`
`of rules and/or guidelines” to convert such information into an alternate
`
`version usable by an access device and to “protect[] the authorship and
`
`ownership rights associated with the original version.” Ex. 1006, 19:1-16,
`
`19:62—20:10, Fig. 3C. Moreover, Karaoguz discloses that gateway 118
`
`“check[s] .
`
`.
`
`. to determine[] whether the format of the multimedia
`
`information requested is compatible with the access device”andif not,
`
`performs a conversion that may involve “a change in the coding” and may
`
`“be based uponany digital rights management controls that may be
`
`associated with the requested multimedia information.” Jd. at 22:14-19,
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`22:50-23:24, 24:14 25.
`
`Finally, on the present record, Petitioner has provided adequate
`
`evidence showing that Karaoguz alone suggests, and the combination of
`
`Karaoguz and Luteaches,the license keysstep,i.e., “providing license keys
`
`for decoding the encoded data to desired onesofthe plurality of user devices
`
`having permission to consumethe encodeddata.” Pet. 34—39, 57-60;
`
`Ex. 1005 Jf 446-59. Regarding Karaoguz, Petitioner takes the position that
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`15
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`Karaoguz’s digital certificates constitute the recited license keys and that
`
`one of ordinary skill would have understood from Karaoguz’s disclosures
`
`that these certificates are provided to devices with permission to consume
`
`the data, as claim 20 requires. See Pet. 34-37, 55-57. In particular,
`
`Petitioner cites Karaoguz’s disclosures that“digital certificates” of digital
`
`rights management functionality 154 at gateway 118 “regulate access to”
`
`and “convey[] permissionsor authority to consume” multimedia
`
`information. Ex. 1006, 19:62—20:15; see id. at 19:7-14. Dr. Negustestifies
`
`that these disclosures would have informed oneof ordinary skill that the
`
`digital certificates should be distributed to the access devices in orderfor the
`
`devices to consumethe transmitted content. Ex. 1005 f{ 449, 452.
`
`Moreover, Dr. Negus opines that it was “well known that‘digital certificate’
`is a term ofart normally used by a person ofordinary skill in the art in the
`
`context of ‘Public Key Infrastructure.’” Id. | 453.
`
`In addition, technical dictionaries from the relevant time period
`
`explain that digital certificates relate to encryption and morespecifically,
`
`keys for encryption and decryption. See Ex. 3001 (MICROSOFT COMPUTER
`
`DICTIONARY(Sth. ed. 2002)), 158; Ex. 3002 (ALAN FREEDMAN, THE
`
`COMPUTER GLOSSARY(9th ed. 2001)), 103-04. THE COMPUTER GLOSSARY
`
`(9th ed. 2001), for instance, explains that a digital certificate is “the owner’s
`
`public key that has been digitally signed by a certification authority,” which
`
`is “sent along with an encrypted message,” and the recipient decrypts the
`
`“sender’s public key attached to the message” and then usesthis key “to
`
`decrypt the actual message.” Ex. 3002, 103-04. Accordingly, based on the
`
`record before us, there is sufficient evidence to support Petitioner’s assertion
`
`that Karaoguz’s digital certificates correspondto the recited “license keys”
`and that Karaoguz’s disclosures would have suggested to one of ordinary
`
`16
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`IPR2016-00080
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`skill to provide these certificates to devices with permission to consumethe
`
`encoded data, as the license keys step requires.
`
`In addition, on the record before us, we agree with Petitioner that Lu
`
`teaches the license keys step in disclosing that its DRM scheme determines
`
`whethera requested right is within the rights of the requesting rendering
`
`device andif so, encrypts the content with a key and sends the key and the
`
`encrypted content to the device, which “decrypt[s] the .
`
`.
`
`. content with the
`
`[k]ey.” Ex. 1018, [57], 1 5, 15, 23, 52, Figs. 1,4. On this record, we are
`
`persuadedthat these disclosures, along with Karaoguz’s disclosures
`
`regarding digital certificates, demonstrate sufficiently that the combination
`
`of Karaoguz and Lu teaches or suggests the license keys step. Ex. 1006,
`
`19:62—20:15; Ex. 1005 FJ 446-50, 454-59.
`
`In sum, Petitioner has made a sufficient showing that the combination
`
`of Karaoguz and Lu would have conveyed eachofthe limitations of
`
`claim 20 to a person ofordinary skill in theart.
`
`(iii) Reasons to Combine
`
`A patented invention “composed of several elements is not proved
`
`obvious merely by demonstrating that each of its elements was,
`
`independently, known in the prior art.” See KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 418 (2007). Rather, “it can be important to identify a reason
`
`’
`
`that would have prompted a person of ordinary skill in the relevantfield to
`
`combine the elements in the way the claimed new invention does.” Jd.
`
`In
`
`other words, “there must be somearticulated reasoning with somerational
`
`underpinning to support the legal conclusion of obviousness.” Jd. (quoting
`
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). For the limitations
`
`Petitioner argues, in the alternative, are taught or suggested by the
`
`combination of Karaoguz and Lu,Petitioner proffers reasons one of ordinary
`
`17
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`IPR2016-00080
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`skill would have combined the teachings and suggestions of the references in
`
`the mannerproposed, with supporting testimony from Dr. Negus. Pet. 20—
`
`21, 32-34, 37-39; Ex. 1005 Jf] 395, 444, 460.
`
`Specifically, Dr. Negus opines that Karaoguz and Luare “from the
`
`same field of art” and are directed to similar systems. Ex. 1005 Y§ 395, 444,
`
`460. In addition, Dr. Negustestifies that it would have been obviousto try
`
`incorporating Lu’s cacheto offload content (offloading step) and Lu’s
`
`encryption and content key distribution methodology to provide a license
`
`key to user devices (transmitting step) into Karaoguz’s gateway because
`
`Karaoguz’s gateway had “very few options for otherwise dispositioning”
`
`content and communicating certificates or keys to user devices. Id. {] 395,
`
`460. Similarly, for the encoding step, Dr. Negus opines that one of ordinary
`
`skill would have foundit obviousto try Lu’s encryption techniques at
`
`Karaoguz’s gateway becausethe digital certificates disclosed in Karaoguz
`
`“had no other purpose other than serving as content keys for an
`
`encryption/decryption process (for example, encrypting at the gateway and
`
`decrypting at the access device).” Id. | 444. Dr. Negusalsostates his
`
`opinion that these proposed combinationsyield predictable results and,
`
`given that Karaoguz and Lu are “from the samefield of art and directed to
`
`solving similar problems,” one of ordinary skill would have had a reasonable
`
`expectation of success in the combinations. Jd. J] 395, 444, 460.
`
`Patent Ownerdisputes Petitioner’s assertion that one of ordinary skill
`
`would have had reason to combine Karaoguz and Lu,arguing that the
`
`references are not in the samefield of art because Karaoguzis classified in
`
`class 370/401, bridge or gateway between networks, whereas Luis classified
`
`in class 705/50, business processing using cryptography. Prelim. Resp. 27,
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`36-37; see Ex. 1006, [52]; Ex. 1018, [52]. The different classification of the
`
`18
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`IPR2016-00080
`Patent 8,879,567 B1
`references in the Office’s classification system, however, is not dispositive.
`
`Rather, Petitioner has shown adequately, for purposesof institution, that
`
`Karaoguz and Lu are directed to similar systems with networked devices that
`
`process media content for subsequentdistribution to user devices, connected
`
`to another network. See Ex. 1005 J 395, 444, 460; see, e.g., Ex. 1006, [57],
`
`12:11-15:15, 19:1-14, 19:62—20:31, 24:14-24:28, Figs. 2, 3C, 6-7;
`
`Ex. 1018 99.5, 15, 23, 29-34, 52, Figs. 2, 4. In addition, both references
`
`feature DRM schemesin whichprocessing is performed on content
`
`identified to require such processing before being sent to a user device. See,
`
`e.g., Ex. 1006, 19:1-14, 19:62—20:31, 24:22-25, Fig. 3C; Ex. 1018 ff 5, 15,
`
`23, 29-34, 52, Figs. 1,4. On this record, Petitioner has shownsufficiently
`
`tha
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