Apple Inc.v.ContentGuard Holdings, Inc.Download PDFPatent Trial and Appeal BoardJun 26, 201510956070 (P.T.A.B. Jun. 26, 2015) Copy Citation Trials@uspto.gov Paper 9 571-272-7822 Date: June 26, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ APPLE, INC., Petitioner, v. CONTENTGUARD HOLDINGS, INC., Patent Owner. Case IPR2015-00355 Patent 8,001,053 B2 Before KARL D. EASTHOM, GLENN J. PERRY, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. PERRY, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108 IPR2015-00355 Patent 8,001,053 B2 2 I. INTRODUCTION Petitioner, Apple, Inc., filed a Petition to institute an inter partes review of claims 1–5, 8, 9, 15–19, 22, 23, 26–30, 33 and 34 (the “challenged claims”) of U.S. Patent No. 8,001,053 B2 (Ex. 1005, the “’053 patent”). Paper 1, “Pet.” Apple’s challenges are brought under 35 U.S.C. § 103(a). Patent Owner, ContentGuard Holdings, Inc., filed a Preliminary Response pursuant to 35 U.S.C. § 313. Paper 8, “Prelim. Resp.” We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). We deny the Petition. A. The Asserted Grounds Petitioner identifies the following as asserted grounds of unpatentability: References Basis Claims Challenged Ireton (Ex. 1010) 1 § 103(a) 2 1–5, 8, 9, 15–19, 22, 23, 26–30, 33 and 34 Ireton (Ex. 1010) and England (Ex. 1009) 3 § 103(a) 1–5, 8, 9, 15–19, 22, 23, 26–30, 33 and 34 Ireton and Gruse (Ex. 1008) 4 § 103(a) 1–5, 8, 9, 15–19, 22, 23, 26–30, 33 and 34 Pet. 3 5 . 1 U.S. Patent Publication 2002/0077984 A1 (June 20, 2002) (filed Dec. 19, 2000) 2 The America Invents Act (“AIA”), Pub.L. No. 112-29, took effect on March 18, 2013. Because the application from which the ’053 patent issued was filed before that date, our citations to Title 35 are to its pre-AIA version. 3 U.S. Patent No. 6,327,652 B1 (Dec. 4, 2001) (filed Jan. 8, 1999). 4 U.S. Patent No. 6,389,538 B1 (May 14, 2002). IPR2015-00355 Patent 8,001,053 B2 3 II. THE ’053 PATENT A. The Invention The ’053 patent generally relates to systems and methods for digital rights management (“DRM”). Ex. 1005, 1:20–23, 1:48. The ’053 patent addresses the problem of downstream distribution by providing “meta-rights” which have the ability to spawn other user rights. Id. at 2:66–3:10. Figure 9 of the ’053 patent is reproduced below. 5 The challenge based on Ireton alone is not listed on page 3 of the Petition, but is argued beginning at page 21. IPR2015-00355 Patent 8,001,053 B2 4 Figure 9 is block diagram of a DRM system 10 that enforces usage rights and meta-rights for specific content and services. Id. at 2:15–18. A user activation component (server 20) issues public and private key pairs, or other identification mechanisms, to content users. Software, installed in a client 30 associated with the content recipient, enforces usage rights for protected content. Client component 60 contains public and private keys issued by activation server 20. Id. at 4:20–35. IPR2015-00355 Patent 8,001,053 B2 5 Rights label 40, associated with content 42, specifies usage rights and meta- rights that are available to a recipient, i.e. a consumer of rights, when corresponding conditions are satisfied. License Server 50 manages the encryption keys and issues licenses 52 for protected content 42. Licenses 52 embody data representing a granting of rights, including usage rights and meta-rights, to an end user. 6 Client component 60 interprets and enforces the rights, including usage rights and meta-rights, as specified in the license. Id. at 4:36–51. B. The Challenged Claims The challenged claims are 1–5, 8, 9, 15–19, 22, 23, 26–30, 33 and 34. Pet. 3. Claims 1, 15, and 26 are independent. Claim 1 is illustrative and reproduced below: 1. A method for sharing rights adapted to be associated with an item, the method comprising: specifying, in a first license, using a processor, at least one usage right and at least one meta-right for the item, wherein the usage right and the meta-right include at least one right that is shared among one or more users or devices; defining, via the at least one usage right, using a processor, a manner of use selected from a plurality of permitted manners of use for the item; defining, via the at least one meta-right, using a processor, a manner of rights creation for the item, wherein said at least one meta- 6 For example, rights offer 40 may permit a user to view content for a fee of five dollars and print content for a fee of ten dollars, or it may permit a user to offer rights to another user, for example, by utilizing the concept of meta-rights. Ex. 1005, 4:43–46. IPR2015-00355 Patent 8,001,053 B2 6 right is enforceable by a repository and allows said one or more users or devices to create new rights; associating, using a processor, at least one state variable with the at least one right in the first license, wherein the at least one state variable identifies a location where a state of rights is tracked; generating, in a second license, using a processor, one or more rights based on the meta-right in the first license, wherein the one or more rights in the second license includes at least one right that is shared among one or more users or devices; and associating at least one state variable with the at least one right that is shared in the second license, wherein the at least one state variable that is associated with the second license is based on the at least one state variable that is associated with the first license. III. ANALYSIS A. Failure to Identify Related Matters A petition for an inter partes review “may be considered only if,” among other things, “the petition provides such other information as the Director may require by regulation.” 35 U.S.C. § 312(a)(4). In that regard, the Director requires a petitioner to include certain mandatory notices with its petition. 37 C.F.R. § 42.8(a)(1). The mandatory notices include a requirement to “[i]dentify any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding.” 37 C.F.R. § 42.8(b)(2) (titled “Related matters”). “Judicial matters include actions involving the patent in federal court. Administrative matters include every application and patent claiming, or which may claim, the benefit of the priority of the filing date of the party’s involved patent or application as well as any ex parte and inter partes reexaminations for an involved patent.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). IPR2015-00355 Patent 8,001,053 B2 7 Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner identifies only the following related matters: ContentGuard Holdings, Inc. v. Amazon.com, Inc., Case No. 2:13- cv-01112 (E.D. Tex.) (the “Texas lawsuit against Apple”); Cases IPR2015-00356, -00357, and -00358 (involving the ’053 patent); and Cases IPR2015-00351, -00352, -00353, and -00354 (involving related U.S. Patent No. 7,774,280 B2 (“the ’280 patent”)). Pet. 1–2. According to Patent Owner, however, there are numerous additional related matters: Google Inc. v. ContentGuard Holdings, Inc., Case No. 14-cv-0498 (N.D. Cal.) (the “California lawsuit”); ContentGuard Holdings, Inc. v. Google Inc., Case No. 14-cv-0061 (E.D. Tex.) (the “Texas lawsuit against Google”); pending U.S. Patent Application No. 13/162,826 (the “’826 application”), which is a continuation of the application from which the ’053 patent issued; Case CBM2015- 00040 (involving the ’280 patent); and Case CBM2015-00043 (involving’053 patent). 7 Paper 7, 1–2. Patent Owner is correct that the California lawsuit is a related matter, as it involves a declaratory judgment action for non-infringement of the ’053 patent. Ex. 3001 ¶¶ 48–55. The Texas lawsuit against Google also is a related matter, as it involves an assertion of infringement of the ’053 patent. Ex. 3002 ¶¶ 44–45. Thus, Petitioner should have identified both of those lawsuits in order to have its Petition considered. 35 U.S.C. § 312(a)(4); 37 C.F.R. § 42.8(b)(2). Although it is 7 The petition in CBM2015-00043 was filed December 11, 2014, and, thus, did not exist when the instant Petition was filed on December 10, 2014. The petition in CBM2015-00040 was filed December 9, 2014, and, thus, we would not presume Petitioner was aware of it when it filed its Petition the next day. IPR2015-00355 Patent 8,001,053 B2 8 possible that Petitioner was not aware of the California lawsuit, it was informed of the Texas lawsuit against Google. See Ex. 3003 (Order denying Patent Owner’s motion for consolidation of the Texas lawsuits, said order entered in the Texas lawsuit against Apple). Patent Owner is also correct that the ’826 application is a related matter. The ’826 application was published on October 6, 2011, and it is listed in the child continuity data field in the Public PAIR search report of the ’053 patent. Thus, Petitioner should have been aware of it and identified it in the Petition. Additionally, Petitioner’s Declarant, Atul Prakash, Ph.D., cites several PTAB decisions involving patents belonging to Patent Owner, as affecting the construction of claims of the ’053 patent. See Ex. 1003 ¶ 284 (citing ZTE Corp. v. ContentGuard Holdings Inc., Case IPR2013-00139, Paper 57 (PTAB June 26, 2014); ZTE Corp. v. ContentGuard Holdings Inc., Case IPR2013-00133, Paper 61 (PTAB July 1, 2014); ZTE Corp. v. ContentGuard Holdings Inc., Case IPR2013- 00138, Paper 57 (PTAB July 1, 2014)); see also Ex. 1003 ¶ 285 (citing ZTE Corp. v. ContentGuard Holdings Inc., Case IPR2013-00133, Paper 15 (PTAB July 1, 2013)). Yet, the Petition does not identify, as related matters, the inter partes reviews in which those decisions were rendered. Pet. 2. The Petition’s failure to comply with 37 C.F.R. § 42.8(b)(2), and thus also 35 U.S.C. § 312(a)(4), could be grounds for denial of the Petition. 35 U.S.C. § 312(a)(4); cf. Reflectix, Inc., v. Promethian Insulation Tech. LLC, 2015 WL 1927414, *9 (PTAB Apr. 24, 2015) (denying institution because petition did not comply with parallel requirement, under 35 U.S.C. § 312(a)(4), to identify all real parties-in-interest). It is unnecessary to determine whether to deny the Petition on IPR2015-00355 Patent 8,001,053 B2 9 that basis, however, because the Petition is denied for additional reasons, as explained below. B. No Reasonable Likelihood of Prevailing A petition must show how the challenged claims are unpatentable under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). All of Petitioner’s grounds of unpatentability challenge the claims as obvious in violation of 35 U.S.C. § 103(a). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so- called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). There is not a reasonable likelihood that Petitioner would prevail in showing the subject matter of any of the challenged claims is obvious over any of the grounds identified in the Petition. First, the Petition does not identify sufficiently the differences between the claimed invention and the prior art, or how the prior art teachings are to be modified or combined, if at all. Pet. 40–57; see Graham, 383 U.S. at 17–18 (obviousness inquiry is based on factual inquiries including the difference between IPR2015-00355 Patent 8,001,053 B2 10 the claimed invention and the prior art). Indeed, it is difficult to understand the distinctions (if any) between the asserted grounds, because they are lumped together. Pet. 40–57. For example, the Petition states the following: To the person of ordinary skill, Ireton, by itself or in view of other prior art, suggests a range of possible implementations of its scheme, particularly in view of the knowledge and experience the person of skill would have possessed in 2001 or before. As a consequence, Ireton, alone or with other prior art, would have rendered obvious variations of the processes, systems and devices it expressly describes, including variations such as the following: (i) particular data constructs and system configurations not explicitly described in Ireton but which have same or comparable functionality to components or elements described in Ireton, including those reflecting conventional design or implementation choices; (ii) storing data elements used in Ireton corresponding to “usage rights” and “meta rights” in the ’053 patent in the same or difference data constructs (e.g., “licenses”); (iii) system components with varying security capabilities, including those capable of functioning as “trusted systems”; (iv) implementing functionality of Ireton in an integrated (e.g., single logical or actual computer system) or in a distributed (e.g., using components that communicate over networks) manner, such as using a remote server to track shared rights; or (v) a scheme wherein a “plurality” of state variables being used. Each of these types of variations would have been considered obvious design or implementation choices based on the guidance in Ireton in view of what would have been known to the person of ordinary skill and other prior art, e.g., Ireton alone, or when considered in view of either England (Ex. 1009) or Gruse (Ex. 1008). IPR2015-00355 Patent 8,001,053 B2 11 Pet. 40–41 (underlining of references omitted). 8 The Petition also lacks an articulated or apparent reason supported by “some rationale underpinning” to modify/combine the purportedly known elements in the fashion claimed by the ’053 patent. See KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Instead, and as demonstrated in the block quote above, Petitioner leaves it to the Board to ascertain what gaps to fill, and then presents vague statements regarding what the prior art suggests, referring to “a range of possible implementations,” “obvious variations,” and “obvious design or implementation choices.” Pet. 40–41. A reason to modify/combine the prior art is not the only thing not apparent from the Petition. Also not apparent is any particular modification/combination of the prior art, let alone how such modification/combination would have rendered obvious any of the challenged claims. Indeed, the Petition lacks a meaningful, if any, discussion showing how the prior art renders obvious any particular claim being challenged. Throughout the Petition, Petitioner makes sweeping statements that Ireton’s functionality is equivalent to that of a particular claimed feature. Typically such statements are accompanied by citations to multiple paragraphs of the Declaration 8 The Petition does not identify the differences between Ireton and the claimed inventions. Yet, the Petition also does not show that there are no differences. The Petition fails to show, let alone assert, anticipation at least because the Petition does not show that Ireton discloses all the limitations of the challenged claims, as arranged in the challenged claims. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (holding that an anticipatory reference must show all limitations arranged or combined in the same way as recited in the claims). IPR2015-00355 Patent 8,001,053 B2 12 of Dr. Prakash (Ex. 1003) 9 . Those paragraphs in the Prakash declaration simply state the same sweeping equivalence without explanation. For example, the Petition states the following: Moreover, persons of ordinary skill in the art could implement these concepts as functional systems for distributing digital content based on the guidance in Ireton using only conventional programming and design skills. Ex. 1003 at ¶¶ 157-87. A person of ordinary skill in the art could easily have implemented a wide variety of DRM schemes for transferring and sharing rights based on these admittedly known core concepts and functionalities, and in view of the guidance provided in Ireton. Ex. 1003 at ¶¶ 700-736. Pet. 41–42. In connection with Petitioner’s sweeping statements about equivalent functionality, Petitioner readily admits that “data construct[s]” required by the claims are not explicitly described by Ireton. For example: “Ireton does not explicitly describe the features of a data construct used by a processor to convey the right to create and distribute digital content among the components of the disclosed system.” Pet. 26. Petitioner excuses this absence by saying “the use of such data constructs was well-known and would have been obvious to use to implement the Ireton scheme.” Id. (citing Ex. 1003 ¶¶ 669–674, 714–725). There are many DRM solutions involving many different “constructs.” The particular constructs are important in distinguishing the various DRM solutions. 9 The Prakash Declaration (Ex. 1003) has 354 pages including 1003 enumerated paragraphs. IPR2015-00355 Patent 8,001,053 B2 13 Yet, Petitioner leaves it to us to comb through numerous paragraphs of an expert declaration to figure out how to fashion the various constructs and apply them to Ireton in order to meet the claim limitations. The Prakash Declaration is not helpful. In paragraph 926, Dr. Prakash cites, as evidence, to over 100 other paragraphs of his own Declaration. Ex. 1003 ¶ 926 (“As I explained above, the core concepts of claims 1, 15, and 26 were all well- known to persons of ordinary skill in the art. See supra ¶¶ 129-154 (usage rights), 156-185 (meta-rights), 188-210 (state variables), 211-231 (sharing) . . . The claims do not include any new concepts or novel ideas. See supra ¶¶ 819- 824.”). Board rules require specific evidentiary citations. 37 C.F.R. § 42.104(b)(5). Board rules also prohibit incorporation by reference, such as incorporating over 100 paragraphs of a declaration into a petition. 37 C.F.R. § 42.6(a)(3). Dr. Prakash discusses Ireton in paragraphs 661–713 of his declaration, which are filled with conclusory statements that one of ordinary skill would have known how to implement a particular claim feature of the ’053 patent based on Ireton. For example, paragraph 707 states: A person of ordinary skill in the art also would have recognized the Ireton scheme could and should be implemented using a variety of “trusted systems” designs. In 2001, trusted systems were well known and had been used to implement DRM systems. Technologies and components to implement “trusted systems” with varying degrees of security were also well known before 2001. Ex. 1001 (‘280 patent) at 1:24-2:48. Ex. 1003 ¶707. However, it is devoid of reasoning that identifies any particular difference between a particular claimed feature and a particular disclosure of IPR2015-00355 Patent 8,001,053 B2 14 Ireton, followed by an explanation as to how and why one of ordinary skill would have modified the particular feature of Ireton to bring it within the claim. A petition must show how the challenged claims are unpatentable under the statutory ground(s) it identifies. 37 C.F.R. § 42.104(b)(4). The instant Petition does not do this, and there is not a reasonable likelihood that Petitioner would prevail with respect to any of the challenged claims on any of the challenged grounds. See 35 U.S.C. § 314(a). C. Ireton in Combination Apple contends that claims 1–5, 8, 9, 15–19, 22, 23, 26–30, 33 and 34 are unpatentable under 35 U.S.C. § 103(a) over the following combinations: (1) the combination of Ireton and England; and (2) the combination of Ireton and Gruse. Pet. 46–57. In each of these asserted grounds based on obviousness, Apple does not apply the teachings of England or Gruse in such a way that remedies particular deficiencies in Ireton. See generally id. Therefore, for essentially the same reasons discussed above, Apple has not demonstrated a reasonable likelihood that it will prevail on its assertion that claims 1–5, 8, 9, 15–19, 22, 23, 26–30, 33 and 34 would have been obvious over: (1) Ireton alone; (2) the combination of Ireton and England; and (3) the combination of Ireton and Gruse. D. Additional Considerations The Director requires us to apply our trial rules “to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1. No such proceeding could be secured with the record presented to us by Petitioner. Dr. Prakash’s Declaration is an omnibus declaration used by Petitioner in eight separate Petitions, collectively challenging both the ’053 patent and the IPR2015-00355 Patent 8,001,053 B2 15 related ’280 patent with four sets of prior art each. 10 The declaration is 342 pages, includes voluminous information not relevant to this Petition, and, as discussed above, contains numerous self-citations. The Petition includes sixty-one exhibits totaling 30,298 pages. See Exs. 1001–1061. Petitioner asserts that all exhibits are relied upon in the Petition. See Pet., at “Attachment B” (subtitled “List of Evidence and Exhibits Relied Upon in Petition”). Fifty-one of the exhibits, however, are not cited in the Petition. 11 Although some of those fifty-one exhibits are cited in Dr. Prakash’s Declaration, several of them are not. Also, mere citation of an exhibit in Dr. Prakash’s Declaration should not be equated with being relied upon in the Petition, because the Declaration is being offered in seven other IPR petitions, each of which challenges a different patent and/or asserts a different set of prior art. The Office Patent Trial Practice Guide cautions that petitioners should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. at 48,763. The Petition widely misses that mark. IV. CONCLUSION The Petition fails to identify all known related matters and fails to show there is a reasonable likelihood that Petitioner would prevail with respect to at least 10 Cases IPR2015-00351 through -00358. 11 Only Exhibits 1001, 1003, 1005, 1008, 1009, 1010, 1012, 1025, 1026, and 1035 are cited in the Petition. IPR2015-00355 Patent 8,001,053 B2 16 one of the claims challenged in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.8(b)(2). Taking into account the arguments presented in the Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Petitioner will prevail in challenging claims 1– 5, 8, 9, 15–19, 22, 23, 26–30, 33 and 34 of the ’053 patent as unpatentable under 35 U.S.C. § 103(a). V. ORDER Accordingly, it is ORDERED that the Petition is denied and no trial is instituted. For PETITIONER: Jeffrey P. Kushan Michael R. Franzinger Sidley Austin LLP iprnotices@sidley.com For PATENT OWNER: Timothy P. Maloney Nicholas T. Peters Fitch Even Tabin & Flannery LLP tpmalo@fitcheven.com ntpete@fitcheven.com Robert A. Cote McKool Smith, P.C. rcote@mckoolsmith.com Copy with citationCopy as parenthetical citation