International Business Machines Corporationv.Intellectual Ventures II LLC

Patent Trial and Appeal Board

Sep 22, 2014

09178606 (P.T.A.B. Sep. 22, 2014)

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
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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.
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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
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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
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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;
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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.
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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).
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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.
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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
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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)).
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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.
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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
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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.
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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.
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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