Ex Parte 7343414 et alDownload PDFPatent Trial and Appeal BoardNov 22, 201395001143 (P.T.A.B. Nov. 22, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/001,143 02/11/2009 7343414 4292.01REX01 4158 24113 7590 11/22/2013 PATTERSON THUENTE PEDERSEN, P.A. 4800 IDS CENTER 80 SOUTH 8TH STREET MINNEAPOLIS, MN 55402-2100 EXAMINER FERRIS III, FRED O ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 11/22/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ APPLE INC. Requester and Respondent v. ZAPMEDIA SERVICES, INC. Patent Owner and Appellant ____________________ Appeal 2013-007872 Reexamination Control 95/001,143 Patent No. US 7,343,414 B1 Technology Center 3900 ____________________ Before MARC S. HOFF, JOSEPH A. FISCHETTI, and STEPHEN C. SIU, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Patent Owner ZapMedia Services, Inc. appeals under 35 U.S.C. §§ 134(b) and 315(a) (2002) from the rejection of claims 1-15 as set forth in the Right of Appeal Notice (RAN) mailed October 20, 2010. Requester Apple, Inc. filed a respondent brief on February 28, 2011. The Examiner mailed an Appeal 2013-007872 Reexamination Control 95/001,143 Patent No. 7,343,414 B1 2 Examiner’s answer on February 20, 2013 which incorporated the RAN by reference. We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm. The ‘414 patent issued to Kenneth O. Lipscomb et al. (March 11, 2008), and is assigned to ZapMedia Services, Inc. The ‘414 patent is a system and method for distributing digital media assets. A portal executes a media library database server application that manages access to a master library of media assets that can be accessed by users via one or more communications networks. A plurality of media player devices (MPDs) communicate with the portal to access media assets for use. Each MPD may comprise a processor that executes a database client application that manages media assets licensed for use by a user (‘414 patent, Abstract). Claim 1 is exemplary of the claims on appeal: A method of managing access to a plurality of media assets comprising the steps of: providing a user with a user account; storing references to a plurality of media assets which the user has a license to use; and authorizing over a network a plurality of media player devices with the user account, wherein the plurality of referenced media assets can be accessed by anyone of the authorized plurality of media player devices. The Examiner relies upon the following prior art in rejecting the claims on appeal: Stefik US 5,715,403 Feb. 3, 1998 Saigh US 7,734,823 Mar. 31, 1998 Appeal 2013-007872 Reexamination Control 95/001,143 Patent No. 7,343,414 B1 3 Griswold US 5,940,504 Aug. 17, 1999 Downs US 6,226,618 May 1, 2001 Ginter WO 96/27155 Sep. 6, 1996 Mark Stefik, Letting Loose the Light: Igniting Commerce in Electronic Publication, originally published in From Internet Dreams: Archetypes, Myths, and Metaphors (MIT Press 1996) (hereinafter “Stefik article”) Throughout this decision, we make reference to Appellant’s Brief (“App. Br.,” filed January 26, 2011) and Third Party Requester’s Respondent Brief (“Resp. Br.,” ) for their respective details. REJECTIONS Patent Owner appeals the Examiner’s rejections as follows: 1. Claims 1-15, rejected under 35 U.S.C. § 102(e) as being anticipated by Downs. 2. Claims 1-15, rejected under 35 U.S.C. § 102(b) as being anticipated by Ginter. 3. Claims 1-15, rejected under 35 U.S.C. § 103(a) as being unpatentable over Stefik in view of the Stefik article. 4. Claims 1-15, rejected under 35 U.S.C. § 103(a) as being unpatentable over Saigh in view of Ginter. 5. Claims 1-6 and 10-12, rejected under 35 U.S.C. § 102(e) as being anticipated by Griswold. 6. Claims 7-9 and 13-15, rejected under 35 U.S.C. § 103(a) as being unpatentable over Griswold in view of Ginter. Appeal 2013-007872 Reexamination Control 95/001,143 Patent No. 7,343,414 B1 4 ISSUES With respect to all the rejections under appeal, Appellant argues that the Examiner did not properly construe the terms “user account” and “authorized” media player devices (MPDs). Appellant urges that the Board should not apply the broadest reasonable interpretation standard for claim construction in an inter partes reexamination (App. Br. 7-14). With respect to the § 102 rejection over Downs, Appellant argues that because Milsted is a continuation-in-part of Downs, Downs was effectively considered during the original prosecution of the ‘414 patent and cannot present a substantial new question of patentability (App. Br. 25-26). Appellant further asserts that the credit card account taught in Downs is not a “user account” as recited in the claims (App. Br. 27-28). Appellant contends that Downs does not authorize media player devices with a user account, as is claimed (App. Br. 28-29). With particular reference to claims 8 and 14, Appellant argues that Downs does not limit a maximum number of authorized MPDs with the user account (App. Br. 30-31). With respect to the § 102 rejection over Ginter, Appellant argues that Ginter’s permissions record (PERC) is not a “user account” as claimed and does not authorize a media player device (MPD) with a user account as claimed (App. Br. 31-32). Appellant contends that Ginter authenticates users, but does not authenticate (sic, authorize) any MPD with a user account as claimed (App. Br. 34). Appellant similarly asserts that the “move” operation disclosed by Ginter does not authorize any MPD with the user account (App. Br. 35). Last, Appellant argues that the “move” Appeal 2013-007872 Reexamination Control 95/001,143 Patent No. 7,343,414 B1 5 operation does not limit a maximum number of authorized MPDs with the user account, as recited in claims 8 and 14 (App. Br. 37). With respect to the § 103 rejection over Saigh in view of Ginter, Appellant argues that the Examiner admits that Saigh does not disclose “the plurality of referenced media assets can be accessed by any one of the authorized plurality of media player devices” but fails to establish that Ginter supplies this missing limitation (App. Br. 44-45). Appellant further contends that the combination of Saigh and Ginter lacks a user account, and authorizing an MPD with the user account, as the claims require (App. Br. 45-46). Appellant asserts that the combination of Saigh and Ginter does limit a maximum number of authorized MPDs with the user account, as claims 8 and 14 recite (App. Br. 46-47). Appellant’s contentions present us with the following issues: 1. Is “broadest reasonable interpretation” the proper claim construction standard in inter partes reexamination proceedings? 2. Is the Director’s finding of a substantial new question of patentability appealable? 3. Does Downs teach a user account? 4. Does Downs teach authorizing MPDs with a user account? 5. Does Downs teach that the number of authorized MPDs is limited to a maximum number? 6. Does Ginter teach a user account? 7. Does Ginter teach authorizing MPDs with a user account? 8. Does Ginter teach that the number of authorized MPDs is limited to a maximum number? Appeal 2013-007872 Reexamination Control 95/001,143 Patent No. 7,343,414 B1 6 9. Does the combination of Saigh and Ginter teach or fairly suggest a user account? 10. Does the combination of Saigh and Ginter teach or fairly suggest authorizing MPDs with a user account? 11. Does the combination of Saigh and Ginter teach or fairly suggest that “the plurality of referenced media assets can be accessed by any one of the authorized plurality of media player devices,” as recited in claim 1? 12. Does the combination of Saigh and Ginter teach or fairly suggest that the number of authorized MPDs is limited to a maximum number? PRINCIPLES OF LAW “During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010). “Construing claims broadly during prosecution is not unfair to the applicant (or, in this case, the patentee), because the applicant has the opportunity to amend the claims to obtain more precise claim coverage.” In re American Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004) (appeal from reexamination proceeding). An issue that has been determined by the Director not to raise a substantial new question of patentability with respect to certain other prior art cannot later be considered by the examiner and ultimately the Board. Instead, if a requester disagrees with the Director's determination that no substantial new question of patentability with respect to certain prior art has been raised, 37 C.F.R. § 1.927 permits the requester only to file a petition to Appeal 2013-007872 Reexamination Control 95/001,143 Patent No. 7,343,414 B1 7 the Director for review of that decision. Belkin Int’l Inc. v. Kappos, 696 F.3d 1379, 1382-83 (Fed. Cir. 2012). ANALYSIS CLAIM CONSTRUCTION OF “USER ACCOUNT” AND “AUTHORIZED” MPDS Appellant concedes that claim construction by a district court is not binding on the USPTO (App. Br. 10). In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364; In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007). Appellant nonetheless argues that the Examiner should utilize prosecution history to properly construe the claims in an inter partes reexamination proceeding because “the doctrine of prosecution disclaimer protects the public’s reliance on definitive statements made during prosecution by precluding patentees from recapturing through claim interpretation specific meanings clearly and unmistakably disclaimed during prosecution,” citing Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1375 (Fed. Cir. 2008) (App. Br. 19). We are not persuaded by Appellant’s argument. Computer Docking Station Corp. is not directly relevant to this proceeding, as it involved an action for patent infringement, not an inter partes reexamination. In contrast to the infringement context, where patent prosecution has closed, applicant has the opportunity during prosecution to amend the claims to obtain more precise claim coverage. Amer. Acad. Of Sci. Tech Ctr., 367 F.3d at 1364. We decline to adopt the District Court’s claim construction, as urged by Appellants (App. Br. 22). Rather, we will follow the holding of our reviewing court that “[d]uring reexamination, as with original examination, Appeal 2013-007872 Reexamination Control 95/001,143 Patent No. 7,343,414 B1 8 the PTO must give claims their broadest reasonable construction consistent with the specification.” Suitco Surface, Inc., 603 F.3d at 1259. REVIEW OF FINDING OF SUBSTANTIAL NEW QUESTION OF PATENTABILITY Appellant argues that Downs fails to present a substantial new question of patentability, because “Downs was effectively considered during the original prosecution of the ‘414 Patent . . . . Because Milsted is a continuation-in-part of Downs, Milsted necessarily discloses everything that was disclosed in Downs, and more” (App. Br. 26). Appellant’s argument is moot because the Director’s determination as to whether a substantial new question of patentability affecting any claim of the patent is raised by a request for reexamination is not appealable to this Board. 35 U.S.C. § 312(c); See Belkin Intl Inc. v. 696 F.3d at 1382-83. ADOPTED GROUND 2, DOWNS, § 102 We are not persuaded by Appellant’s arguments that Downs does not teach a user account, or authorizing MPDs with a user account (App. Br. 27- 29). Rather, we agree with Respondent that Downs discloses the ability to authorize, over a network, a plurality of media player devices with a user account. Downs teaches a user conducting a transaction for the purchase of rights to certain content (see, e.g., Downs cols. 18-19, steps 136-148). A user’s credit card account is billed for the purchase (col. 19, steps 137-138). Downs teaches that, ultimately, “content 113 is sent to the end-user Device(s) 109” (col. 19, step 148). Downs’s use of “device(s)” indicates Appeal 2013-007872 Reexamination Control 95/001,143 Patent No. 7,343,414 B1 9 that one or more devices are to receive the purchased content. The content will be playable on any device(s) to which it is downloaded. We do not agree with Appellant that the credit card and billing accounts referenced in Downs are “merely financial records that have nothing to do with implementing a media management system” (App. Br. 28). Rather, we agree with Respondent that the credit card account in Downs corresponds to the claimed user account (Resp. Br. 11). We find that the credit card account of Downs uniquely identifies a user, and payment via said credit card enables a user to obtain rights to desired content. We agree with Respondent that Downs anticipates the subject matter of claims 8 and 14, which require that “the number of authorized media player devices are limited to a maximum number.” Downs discloses a content usage control layer and usage conditions that limit the number of content copies that can be accessed by authorized devices (Resp. Br. 11; Downs col. 21, 59). We agree with Respondent that limiting the number of content copies also functions to limit the number of media player devices authorized to play the content to a maximum number, as is claimed. ADOPTED GROUND 1, GINTER, § 102 We are not persuaded by Appellant’s argument that Ginter fails to disclose the concept of a user account (App. Br. 31). We agree with Respondent that Ginter teaches that a permissions record (PERC) is “stored only on electronic appliances 600 of registered users (and may themselves be delivered to the user as part of a registration/initialization process)” (Resp. Br. 12; Ginter p. 393). We agree with Respondent that Ginter thus Appeal 2013-007872 Reexamination Control 95/001,143 Patent No. 7,343,414 B1 10 teaches storing a user account-specific PERC on a media player device (electronic appliance /VDE 600), which constitutes “an authorization of the media player device with a user account for which the PERC was created” (Resp. Br. 12). We further agree with Respondent that Ginter associates both the term “electronic appliance” and the term “VDE node” with reference number 600 (Resp. Br. 14-15; Ginter pp. 25-26, 185, 189, 511). We do not agree with Appellant that Ginter fails to teach authorizing a plurality of MPDs with a user account (App. Br. 34-35). We agree with Respondent that in Ginter, a user can authorize a second MPD with a user account by repeating the registration/initialization process with a second device (Resp. Br. 12), or by moving a user account-specific PERC to a second MPD (Resp. Br. 12; Ginter p. 771). As a result, we find that Ginter teaches authorizing over a network more than one (i.e. “a plurality of”) media player devices with a user account, as recited in representative claim 1. We are not persuaded by Appellant that the “move” operation disclosed by Ginter fails to teach limiting the number of authorized media player devices to a maximum number, as claims 8 and 14 recite (App. Br. 37). Ginter discloses that a creator may authorize the moving of usage rights to only 10 VDE nodes (Ginter p. 779). In another example, Ginter discloses that a user may employ budgets to limit the number of authorized media player devices to which rights may be transferred (Resp. Br. 15; Ginter p. 767). We agree with Respondent that limiting the number of copies for distribution functions to limit the number of authorized media player devices that can access media (Resp. Br. 15). Appeal 2013-007872 Reexamination Control 95/001,143 Patent No. 7,343,414 B1 11 Last, we are not persuaded by Appellant’s argument that Requester has “cherry-picked” citations to Ginter out of context, in violation of the Federal Circuit’s requirement that elements be arranged as presented in a claim (App. Br. 38). We have reviewed the teachings of Ginter cited by Requester, and we agree that Ginter discloses the management, distribution, and use of media assets on MPDs arranged in the manner recited by the claims (see Resp. Br. 16). ADOPTED GROUND 5, § 103, SAIGH IN VIEW OF GINTER We are not persuaded by Appellant’s argument that the combination of Saigh and Ginter does not teach or suggest accessing the plurality of referenced media assets by any one of the authorized plurality of media player devices (App. Br. 45). We first note that the Examiner concedes that Saigh by itself does not teach accessing a plurality of media assets (Non-Final Action mailed April 16, 2009, p. 17). We agree with Respondent that, contrary to Appellant’s argument (App. Br. 45), Saigh teaches a user account (an account created for a user) (col. 9, ll. 28-38) that specifies at least one authorized media player device (a reader with a unique serial number, col. 9, l. 64 – col. 10, l. 1). We further agree with Respondent that the user-account and device-specific permission record (PERC) taught in Ginter could be created for more than one of the user’s reader devices and/or cartridges in Saigh, to manage access to media across multiple devices (Resp. Br. 20). As discussed supra, Ginter teaches that a permissions record (PERC) may be delivered to the user as part of a registration/initialization process (Resp. Br. 12; Ginter p. 393), and teaches authorizing a second MPD with a user account by repeating the Appeal 2013-007872 Reexamination Control 95/001,143 Patent No. 7,343,414 B1 12 registration/initialization process with a second device (Resp. Br. 12), or moving a user account-specific PERC to a second MPD (Resp. Br. 12; Ginter p. 771). We are not persuaded by Appellant’s argument that Saigh lacks a teaching of “a server application accessible over a network and capable of recognizing a plurality of MPDs as being authorized with the user account,” as claim 4 recites (App. Br. 45). As explained supra, we agree with Respondent that Ginter supplies a teaching of authorizing a plurality of MPDs with a user account. Thus, we will sustain the rejection of claim 4, for the same reasons given with respect to claim 1. With respect to claims 8 and 14, we are not persuaded by Appellant’s argument that neither Saigh nor Ginter teach that a maximum number of media player devices are authorized (App. Br. 46). As noted supra, we agree with Respondent that Ginter may, for example, authorize the moving of usage rights to only 10 VDE nodes (Resp. Br. 15; Ginter p. 779). Limiting the number of copies for distribution also functions to limit the number of authorized media player devices that can access media (Resp. Br. 15). OTHER GROUNDS NOT REACHED Affirmance of the rejection of claims 1-15 based on Downs, Ginter, and Saigh in view of Ginter renders it unnecessary to reach the propriety of the Examiner’s decision to reject those claims on a different basis. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach the propriety of the rejection of the claims over Stefik in view of Stefik article, Griswold, or Griswold in view of Ginter. Appeal 2013-007872 Reexamination Control 95/001,143 Patent No. 7,343,414 B1 13 CONCLUSIONS 1. “Broadest reasonable interpretation” is the proper claim construction standard in inter partes reexamination proceedings. 2. The Director’s finding of a substantial new question of patentability is not appealable. 3. Downs teaches a user account. 4. Downs teaches authorizing MPDs with a user account. 5. Downs teaches that the number of authorized MPDs is limited to a maximum number. 6. Ginter teaches a user account. 7. Ginter teaches authorizing MPDs with a user account. 8. Ginter teaches that the number of authorized MPDs is limited to a maximum number. 9. The combination of Saigh and Ginter teaches a user account. 10. The combination of Saigh and Ginter fairly suggests authorizing MPDs with a user account. 11. The combination of Saigh and Ginter fairly suggests that “the plurality of referenced media assets can be accessed by any one of the authorized plurality of media player devices,” as recited in claim 1. 12. The combination of Saigh and Ginter teaches that the number of authorized MPDs is limited to a maximum number. ORDER The Examiner’s rejection of claims 1-15 is affirmed. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. Appeal 2013-007872 Reexamination Control 95/001,143 Patent No. 7,343,414 B1 14 AFFIRMED ack Patent Owner: Brad Patterson Patterson, Thuente, Skaar & Christensen, P.A. 4800 IDS Center 80 South 8th Street Minneapolis, MN 55402-2100 Third Party Requester NOVAK DRUCE & QUIGG, LLP (NDQ REEXAMINATION GROUP) 1000 LOUISIANA STREET, FIFTY-THIRD FLOOR HOUSTON, TX 77002 Copy with citationCopy as parenthetical citation