International Business Machines Corporationv.Intellectual Ventures II LLCDownload PDFPatent Trial and Appeal BoardSep 22, 201409178606 (P.T.A.B. Sep. 22, 2014) Copy Citation Trials@uspto.gov Paper 12 571-272-7822 Entered: September 22, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ INTERNATIONAL BUSINESS MACHINES CORPORATION, Petitioner, v. INTELLECTUAL VENTURES II LLC, Patent Owner. ____________ Case IPR2014-00672 Patent 6,314,409 B2 Before KRISTEN L. DROESCH, JENNIFER S. BISK, and JUSTIN BUSCH, Administrative Patent Judges. DROESCH, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 IPR2014-00672 Patent 6,314,409 2 I. INTRODUCTION A. Background International Business Machines Corporation (“Petitioner”) filed a Petition 1 (Paper 4, “Petition” or “Pet.”) to institute an inter partes review of claims 1–11 and 13–21 (“the challenged claims”) of U.S. Patent No. 6,314,409 B2 (Ex. 1006, “the ’409 Patent”). 35 U.S.C. §§ 311–319. Intellectual Ventures II LLC (“Patent Owner”) timely filed a Preliminary Response to the Petition. Paper 9 (“Prelim. Resp.”). We determine on this record that, under 35 U.S.C. § 314(a), the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in showing that claims 1– 11 and 13–21 are unpatentable. B. Related Proceedings Petitioner indicates the ’409 Patent is at issue in several district court proceedings involving numerous parties. Pet. 2, Paper 11 (“Second Amended Mandatory Notice”) 2–3. Petitioner further indicates that none of the district court proceedings name Petitioner as a defendant. Pet. 2; Second Amended Mandatory Notice 2. Petitioner concurrently filed a petition for inter partes review of claims 23–27, 29–30, 32–33, and 36–40 of the ’409 Patent (IPR2014- 00673). Second Amended Mandatory Notice 3. Compass Bank, Commerce Bancshares, Inc., and First National Bank of Omaha collectively filed two petitions for inter partes review of the ’409 Patent (IPR2014-00719, IPR2014-00722). Id. J.P. Morgan Chase & Co., JPMorgan Chase Bank, Nat’l Ass’n, Chase Bank USA, Nat’l Ass’n, Chase Paymentech Solutions 1 “Petition” and “Pet.” refer to the Corrected Petition filed April 28, 2014. IPR2014-00672 Patent 6,314,409 3 LLC, and Paymentech LLC collectively filed a petition for covered business method review of the ’409 Patent (CBM2014-00157). Id. at 4. C. The ’409 Patent (Ex. 1006) The ’409 Patent relates to methods, devices, and systems for controlling access to, and use, distribution, and secondary distribution of data. Ex. 1006, Abs.; col. 6, l. 63–col. 7, l. 9. Figure 1 of the ’409 Patent is reproduced below: Figure 1 depicts digital data access and distribution system 100, including distributor 102 and user 104. Ex. 1006, col. 9, ll. 11–13, 51–55. Distributor 102 provides packaged data 108 over communication channel 105 to user 104 in return for payment 110. Id. at col. 9, ll. 55–58. Specifically, authoring mechanism 112 of distributor 102 produces packaged data 108 from data 106, and distribution mechanism 118 of distributor 102 provides packaged data 108 to user 104. Id. at col. 9, ll. 61–64. Packaged data 108 includes an encrypted body part, an unencrypted body part, and access rules 116 in encrypted form. Id. at col. 9, ll. 64–66; col. 10, ll. 47–53, 60–65; see id. at Fig. 2. Packaged data 108 can be transmitted openly using communication channel 105, which may be insecure. Id. at col. 15, ll. 25– 29; col. 24, ll. 49–51. Access mechanism 114 enables user 104 to access IPR2014-00672 Patent 6,314,409 4 packaged data 108 in controlled ways depending on access rules 116. Id. at col. 10, ll. 1–5; col. 15, ll. 31–35; col. 17, ll. 45–52. Transmission, printing, display, and output of an unencrypted copy of the data by user 104 also can be prevented or restricted according to access rules. Id. at col. 15, ll. 50–54; col. 17, ll. 24–40; col. 25, ll. 15–28; col. 25, l. 59–col. 26, l. 6; col. 26, ll. 11–29; col. 27, ll. 11–24. A user may invoke access mechanism 114 by accessing an object (data) via an insecure operating system which invokes access mechanism 114. Ex. 1006, col. 17, l. 67–col. 18, l. 7; col. 18, ll. 18–21. Figure 10a of the ’409 Patent is reproduced below: Figure 10a depicts a flow chart of data access using access mechanism 114. Ex. 1006, col. 9, ll. 30–31. Access mechanism 114 first determines whether the data set containing the data elements is already open (step S1000). Id. at col. 18, ll. 22–24. If the data set is not already open, access mechanism 114 IPR2014-00672 Patent 6,314,409 5 opens the data set (step S1001). Id. at col. 18, ll. 24–25. Next, access mechanism 114 determines whether the dataset is protected (step S1002), and, if it is protected, determines whether the rules for the dataset are usable (step S1004). Id. at col. 18, ll. 25–27, 33–38. If the rules are usable (step S1004), access mechanism 114 determines whether the data element being accessed is different from the most recently accessed data element (step S1008), and opens the data element (step S1010) if it is different. Id. at col. 18, ll. 39–43. Next, access mechanism 114 determines whether the data element is protected (step S1012) and whether access is permitted according to the rules (step S1014), and makes the data element available (step S1018) if access to the data element is permitted. Id. at col. 18, ll. 44–59. Following these determinations, control returns to the invoking process (step S1006). Id. D. Illustrative Claims Claims 1 and 21 are independent claims. Claims 2–11 and 13–20 depend from claim 1. Claims 1 and 21 are illustrative: 1. A method of distributing data, the method comprising: protecting portions of the data; and openly distributing the protected portions of the data, whereby each and every access to an unprotected form of the protected portions of the data is limited in accordance with rules defining access rights to the data as enforced by an access mechanism, so that unauthorized access to the protected portions of the data is not to the unprotected form of the protected portions of the data. 21. A method of distributing data for subsequent controlled use of the data by a user, the method comprising: protecting portions of the data; IPR2014-00672 Patent 6,314,409 6 protecting rules defining access rights to the data; and openly distributing the protected portions of the data and the protected rules, whereby controlled access to an unprotected form of the protected portions of the data is provided only in accordance with the rules as enforced by an access mechanism, so that unauthorized access to the protected portions of the data is not to the unprotected form of the protected portions of the data. II. ANALYSIS A. Claim Construction In an inter partes review, claim terms are given their broadest reasonable interpretation in light of the specification in which they appear and the understanding of others skilled in the relevant art. See 37 C.F.R. § 42.200(b). 1. Proposed Constructions Petitioner proposes constructions for “openly distributing,” “environmental characteristics,” and “internal rule.” Pet. 5. Patent Owner disputes Petitioner’s analysis, and provides its own constructions for the same claim terms. Prelim. Resp. 12–14. We determine that for purposes of this Decision, none of the disputed claim terms requires an explicit construction. 2. Remaining Claim Terms or Phrases All remaining claim terms and phrases recited in the challenged claims are given their ordinary and customary meanings, consistent with the Specification, as would be understood by one with ordinary skill in the art, and need not be construed explicitly for purposes of this Decision. IPR2014-00672 Patent 6,314,409 7 B. Asserted Grounds of Unpatentability Petitioner contends the challenged claims are unpatentable under 35 U.S.C. §§ 102 and 103 on the following specific grounds (Pet. 4): Reference[s] 2 Basis Claims Challenged Digibox § 102(b) 1–6, 8–11, 13, and 21 Digibox and Stefik § 103(a) 7 and 14–20 Cooper § 102(b) 1–6, 8–11, 13, and 21 Cooper and Stefik § 103(a) 7 and 14–20 1. Unpatentability of Claims 1–6, 8–11, 13, and 21 Under 35 U.S.C. § 102(b) as Anticipated by Cooper Petitioner contends that claims 1–6, 8–11, 13, and 21 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Cooper. Pet. 4, 7–8, 30–60. a. Cooper (Ex.1009) Cooper describes a method and apparatus for distributing software objects from a producer to potential users which allows the user a temporary trial period without subjecting the software product to unnecessary risks of piracy or unauthorized utilization beyond the trial period. Ex. 1009, col. 2, ll. 28–33. The software object is preferably provided on a computer accessible media (e.g., magnetic media diskette, CD-ROM) along with a file management program. Id. at col. 2, ll. 33–38. The file management program is executed by a user controlled data processing system that 2 The Petition relies on the following references: Olin Sibert, et al., DigiBox: A Self-Protecting Container for Information Commerce, Proceedings of the First USENIX Workshop on Electronic Commerce New York, New York, July 1995 (Ex. 1008, “Digibox”); U.S. Patent No. 5,689,560 (Ex. 1009, “Cooper”); Mark Stefik, Letting Loose the Light: Igniting Commerce in Electronic Publication, March 1995 (Ex. 1015, “Stefik”). The Petition also relies on the Declaration of Mr. William R. Rosenblatt (Ex. 1001). IPR2014-00672 Patent 6,314,409 8 restricts access to the software object for a predefined and temporary trial period. Id. at col. 2, ll. 45–48. During the temporary trial mode of operation, the software object is temporarily enabled by decryption of the encrypted software object when the software object is called by the operating system of the user-controlled data processing system. Id. at col. 2, ll. 48–54. The file management program preferably prevents copying operations, so the encrypted software object is temporarily decrypted when it is called by the operating system. Id. at col. 2, ll. 54–58. The trial software product is encrypted utilizing a temporary access product key, which is based upon one or more data processing system attributes and a derived machine identification value. Ex. 1009, col. 6, l. 65– col. 7, l. 4; col. 7, l. 51–col. 8, l. 8; col. 8, ll. 57–67; Figs. 3–4; see id. at col. 9, l. 1–col. 16, l. 5; Figs. 5–18. The file management program stores the temporary access product key on the user-controlled data processing system in a key file. Id. at col. 13, ll. 45–66. The key file includes the product key, customer key, machine identification number, and the trial interval data. Id. at col. 15, ll. 62–67; Fig. 18; see id. at col. 15, ll. 9–34; Figs. 14–15. When the encrypted software product is called for processing by the user- controlled data processing system, the encrypted file and the key file are fetched. Id. at col. 16, ll. 10–17; Fig. 19. The product key, customer key, and machine identification information included in the key file are applied as inputs to a decryption engine that outputs a real key. Id. at col. 16, ll. 20–32; Figs. 19–21. The real key and encrypted software object are input to the decryption engine which outputs the decrypted software object. Id. at col. 16, ll. 42–47; Fig. 23. IPR2014-00672 Patent 6,314,409 9 b. Claims 1–6, 8–11, and 13 Petitioner argues in the claim charts that Cooper discloses “each and every access to an unprotected form of the protected portions of the data is limited in accordance with rules defining access rights to the data as enforced by an access mechanism,” as recited in claim 1. Pet. 34. Petitioner asserts the claimed “rules defining access rights to the data” corresponds to copy prevention and user interval rules enforced with keys, and the claimed “access mechanism” corresponds to Cooper’s file management program. Id.; see id. at 30. Petitioner appears to equate the claimed “unprotected form of the protected data portions” to Cooper’s disclosure of “decryption of the encrypted software object.” Id. at 34 (quoting Ex. 1009, col. 2, ll. 45–57). The Petition does not explain sufficiently how Cooper discloses rules defining access rights to the data, and how Cooper discloses each and every access to the decrypted software object (i.e., an unprotected form of the protected data portions) is limited in accordance with the rules as enforced by the file management program (i.e., access mechanism). The quotations from Cooper provided in the claim chart disclose the “file management system preferably prevents copying operations.” Id. at 34 (quoting Ex. 1009, col. 2, ll. 45–57). However, the Petition does not explain sufficiently how Cooper’s preferable prevention of copying operations discloses rules defining access rights to the data, and how Cooper discloses each and every access to the decrypted software object (i.e., unprotected form of the protected data portions) is limited in accordance with Cooper’s preferable prevention of copying operations. The Petition also does not provide evidence sufficient to demonstrate that Cooper discloses “user interval rules,” as asserted by Petitioner. See id. Instead, Cooper discloses trial IPR2014-00672 Patent 6,314,409 10 interval data encrypted to a key. See Ex. 1009, col. 15, ll. 4–20. The Petition does not explain sufficiently how Cooper’s trial interval data encrypted to a key discloses rules defining access rights to the data, and how Cooper discloses each and every access to the decrypted software object (i.e., unprotected form of the protected data portions) is limited in accordance with trial interval data encrypted to a key as enforced by the file management program (i.e., access mechanism). Accordingly, on the record before us, we determine the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that Cooper anticipates claim 1, and claims 2–6, 8–11, and 13, dependent therefrom. c. Independent Claim 21 Petitioner argues in the claim charts that Cooper discloses “rules defining access rights to the data,” and “controlled access to an unprotected form of the protected portions of the data is provided only in accordance with the rules as enforced by an access mechanism,” as recited in claim 21. Pet. 57–60. Petitioner asserts the claimed “rules defining access rights to the data” corresponds to Cooper’s disclosure of trial interval data encrypted to the product key (id. at 57–59), and Cooper’s disclosure of preferable prevention of copying operations (id. at 60 (quoting Ex. 1009, col. 2, ll. 45– 57); see id. at 30). Petitioner further asserts the claimed “access mechanism” corresponds to Cooper’s file management program (id. at 57– 59), and the claimed “unprotected form of the protected data portions” corresponds to Cooper’s disclosure of “decryption of the encrypted software object” (id. at 60 (quoting Ex. 1009, col. 2, ll. 45–57)). IPR2014-00672 Patent 6,314,409 11 For similar reasons as those explained above addressing claim 1, the Petition does not explain sufficiently how Cooper discloses rules defining access rights to the data, and how Cooper discloses controlled access to the decrypted software object (i.e., an unprotected form of the protected data portions) is provided only in accordance with the rules as enforced by the file management program (i.e., access mechanism). The quotations from Cooper provided in the claim chart disclose the “file management system preferably prevents copying operations.” Pet. 60 (quoting Ex. 1009 col. 2, ll. 45–57). However, the Petition does not explain sufficiently how Cooper’s preferable prevention of copying operations discloses rules, and how Cooper discloses controlled access to the decrypted software object (i.e., unprotected form of the protected data portions) is provided only in accordance with Cooper’s preferable prevention of copying operations. The quotations from Cooper provided in the claim chart also disclose trial interval data 374 input to a product key encryption engine 375. Pet. 59 (quoting Ex. 1009, col. 15, ll. 4–20). However, the Petition does not explain sufficiently how Cooper’s trial interval data 374 encrypted to the key discloses rules defining access rights to the data, and how Cooper discloses controlled access to the decrypted software object (i.e., unprotected form of the protected data portions) is provided only in accordance with the trial interval data encrypted to the key as enforced by the file management program (i.e., access mechanism). Accordingly, on the record before us, we determine the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that Cooper anticipates claim 21. IPR2014-00672 Patent 6,314,409 12 2. Unpatentability of Claims 1–6, 8–11, 13, and 21 Under 35 U.S.C. § 102(b) as Anticipated by Digibox Petitioner contends that claims 1–6, 8–11, 13, and 21 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Digibox. Pet. 4, 7–30. a. Digibox (Ex. 1008) Digibox describes that DigiBox is a foundation technology within InterTrust Virtual Distribution Architecture. Ex. 1008, 7. DigiBox provides a secure container to package information so that the information cannot be used except as provided by the rules and controls associated with the content. Id. InterTrust rules and controls specify what types of content usage are permitted. Id. DigiBox is a container for both digital property (content) and controls. Id. b. Claims 1–6, 8–11, 13 and 21 Petitioner asserts in the claim charts that Digibox teaches “each and every access to an unprotected form of the protected portions of the data is limited in accordance with rules defining access rights to the data as enforced by an access mechanism,” as recited in claim 1, and “controlled access to an unprotected form of the protected portions of the data is provided only in accordance with the rules as enforced by an access mechanism,” as recited in claim 21. Pet. 12, 29–30. In support of these assertions, Petitioner provides, in the claim charts, quotations from Digibox, and citations to certain paragraphs of Mr. Rosenblatt’s Declaration. Id. at 12, 29–30 (quoting Ex. 1008, 7–8; citing Ex. 1001 ¶¶ 74–77, 200–203). We agree with Patent Owner that the Petition only addresses limited or controlled access to protected (i.e., encrypted) forms of the data, and does not explain how Digibox discloses limited or controlled access to IPR2014-00672 Patent 6,314,409 13 unprotected forms of the protected data as enforced by an access mechanism, as required by claims 1 and 21. Prelim. Resp. 15, 17, 19–21; see Pet. 9, 12, 29–30. For example, Petitioner asserts that Digibox provides the following teachings: (1) portions of the sent data may be encrypted or protected; (2) the encrypted (i.e., protected) portions of data are sent in a secure container (i.e., a “DigiBox”), so that the information cannot be used except as provided by the rules and controls associated with the content, and (3) when a recipient attempts to access the data, access is through the user’s computer’s storage manager, which will access the encrypted (i.e., protected) data on the DigiBox in accordance with the rules and controls. Id. at 9 (quoting Ex. 1008, 8–9) (emphasis added); see id. at 12 (quoting Ex. 1008, 7–8), 29–30 (quoting Ex. 1008, 8). Accordingly, on the record before us, we determine the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that Digibox anticipates claims 1–6, 8–11, 13, and 21. 3. Unpatentability of Claims 7 and 14–20 Under 35 U.S.C. § 103(a) as Obvious Over Digibox and Stefik, and Over Cooper and Stefik Claims 7 and 14–20 ultimately depend from claim 1. As applied by Petitioner, the teachings of Stefik do not remedy the deficiencies of Digibox and Cooper in disclosing all of the limitations of claim 1. See Pet. 7–8, 10, 16–17, 22–28, 31–32, 40–43, 49–57. Therefore, on the record before us, we determine the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that claims 7 and 14–20 would have been obvious over Digibox and Stefik, and over Cooper and Stefik. IPR2014-00672 Patent 6,314,409 14 III. CONCLUSION Based on the record before us, the information presented in the Petition does not demonstrate that there is a reasonable likelihood that Petitioner would prevail in showing that claims 1–11 and 13–21 are unpatentable. IV. ORDER Accordingly, it is ORDERED that the Petition for inter partes review is DENIED. IPR2014-00672 Patent 6,314,409 15 PETITIONER: Kenneth R. Adamo Brent Ray Joel Merkin Eugene Goryunov KIRKLAND & ELLIS LLP kenneth.adamo@kirkland.com brent.ray@kirkland.com jmerkin@kirkland.com eugene.goryunov@kirkland.com PATENT OWNER: Lori Gordon Omar Amin STERNE, KESSLER, GOLDSTEIN & FOX PLLC lgordon-PTAB@skgf.com oamin-PTAB@skgf.com Copy with citationCopy as parenthetical citation