Apple Inc.v.Contentguard Holdings, Inc.

Patent Trial and Appeal Board

Dec 21, 2015

10345390 (P.T.A.B. Dec. 21, 2015)

Trials@uspto.gov Paper No. 13
571.272.7822 Filed: December 21, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

CONTENTGUARD HOLDINGS, INC.,
Patent Owner.
____________

Case IPR2015-00440
Patent 6,963,859 B2
____________

Before PATRICK R. SCANLON, KERRY BEGLEY, and
KEVIN W. CHERRY, Administrative Patent Judges.

CHERRY, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71(d)

Apple Inc. (“Petitioner”) timely filed a request for rehearing
(“Rehearing Request” or “Request”) of our decision on institution of inter
partes review. Paper 12 (“Req. Reh’g”). The Request seeks rehearing of
our determination to deny institution of inter partes review of claims 1
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and 58 of U.S. Patent No. 6,963,859 B2 (Ex. 1001, “the ’859 patent”) on the
asserted ground of obviousness over (1) ABYSS1 (Ex. 1016) and Denning2
(Ex. 1017) and (2) ABYSS, Denning, and Hartrick3 (Ex. 1021). Id. at 3.
For the reasons given below, we deny the Rehearing Request.
LEGAL STANDARDS
When rehearing a decision whether to institute inter partes review, we
review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The
burden of showing [the] decision should be modified lies with the party
challenging the decision.” 37 C.F.R. § 42.71(d). The request for rehearing
“must specifically identify all matters the party believes the Board
misapprehended or overlooked, and the place where each matter was
previously addressed in” the petition. Id.
ANALYSIS
In our Decision, we denied institution of inter partes review of the
challenged claims of the ’859 patent, including claims 1 and 58, for three
independent reasons: (1) failure to comply with 35 U.S.C. § 312(a)(3),
37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5); (2) failure to
perform the obviousness analysis required under Graham v. John Deere Co.,
383 U.S. 1 (1966); and (3) lack of sufficiently articulated reasoning, with
rational underpinning and without improper hindsight, to combine ABYSS
and Denning to reach the recited invention. Paper 11 (“Dec.”), 5–10

1 Liam Comerford & Steve R. White, ABYSS: A Trusted Architecture for
Software Protection (1987).
2 DOROTHY ELIZABETH ROBLING DENNING, CRYPTOGRAPHY AND DATA
SECURITY (1983).
3 European Patent Application Publication No. EP 0 567 800 A1.
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(procedural defects), 13–14, (Graham analysis), 14–18 (hindsight).4
Therefore, to succeed on its Rehearing Request, Petitioner must show that
we abused our discretion in reaching each of these determinations. As we
explain below, Petitioner has not done so. We address below Petitioner’s
arguments regarding the first and third reasons noted above.
A. Procedural Defects: Non-Compliance with 35 U.S.C. § 312(a)(3) and
37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5)
In its Rehearing Request, Petitioner disputes our determination that
the Petition does not comply with 35 U.S.C. § 312(a)(3), 37 C.F.R.
§ 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5), arguing that the Petition
“clearly identifie[s]” the supporting evidence and that the “Petition’s
substance fully complied with the rules.” Req. Reh’g 14. Petitioner asserts
that the Board has “accepted numerous petitions that use this form, and
issued several decisions that use a similar structure and citation format.” Id.
In the Decision, our determination that the Petition fails to comply
with 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R.
§ 42.104(b)(4)–(5) rested on our analysis of numerous deficiencies—
including lengthy, “vague, nested citations to broad sections” of the record,
improper incorporation by reference from the Declaration of Alan Sherman
(Ex. 1013, “Sherman Declaration”), and pervasive use of unclear internal
cross references. Dec. 5–10. Together, these deficiencies cause the Petition

4 Because Hartrick was relied upon only for teaching “usage rights
language,” as recited in the claims, and Hartrick did not cure the defects in
the analysis of the combination of ABYSS and Denning, we did not analyze
that ground separately. Dec. 18. Petitioner does not raise any separate
arguments for the ABYSS, Denning, and Hartrick ground, so we do not
analyze it separately.
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to fall below the standards of particularity and specificity required of
supporting evidence. Id.
Petitioner’s Rehearing Request fails to convince us that the Petition’s
lengthy, nested string citations to vast sections of the record are
comprehensible. Id. at 6–8. A sampling of the exemplary citations from the
Petition quoted in our Decision include: “See Ex. 1016, 39–40, 44–45, 49;
§§ IV.A2, E.1; Ex. 1013 at ¶ C6, C34–43, C123–24 (Pet 47–48); See
§ IV.E.1–2; Ex. 1016 at 42, 43, 47, 49, 50; Ex. 1017 at 178–79; Ex. 1013 at
¶ C173, C68–73, C80–85 (Pet 48); See § IV.E.2; Ex. 1016 at 44, 49, 50;
Ex. 1013 at ¶ C106–09, C123–26, C174” (Pet. 50); See § IV.A.4; Ex. 1016
at 40, 42–45; Ex. 1013 at ¶ C48–53, C104–05 (Pet. 51); See § IV.A.3–4;
Ex. 1016 at 38–40, 42–45, 50; Ex. 1013 at ¶ C6–10, C55–58” (Pet. 51).”
Dec. 7. Thus, the mere fact that some citations in this case might be similar
to other unidentified citations in other Petitions or in decisions in other
proceedings, Req. Reh’g 14, does not persuade us that the pervasive
problems in the structure and citations we identified in this Petition were not
a basis for denying institution. Indeed, Petitioner completely fails to address
the problems of incorporation by reference of the Sherman Declaration and
other clarity problems we identified.
Our determination in the Decision that the Petition does not comply
with 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R.
§ 42.104(b)(4)–(5) did not rest merely on the use of internal cross
references. Rather, the Decision discussed the consistent use of internal
cross references throughout both the Petition and the supporting Sherman
Declaration, to such an extent that it obfuscates the evidentiary support for
the Petition’s assertions. See Dec. 5–10. Moreover, the Decision made clear
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that the Petition, without the improper incorporation of vast sections of the
Sherman Declaration, lacks otherwise adequate supporting evidence for its
assertions. See id.
As for Petitioner’s complaint that “citing a page number [of ABYSS
and Denning] was the finest level of granularity possible,” this argument
also ignores the problem identified with those particular citations in our
Decision. In particular, the precise problem with the citations to ABYSS
that we identified was that many of the Petition’s citations to ABYSS were
to nearly the entire article. See Dec. 7 (“The analysis of what the Petition
identifies as the first of six elements of claim 1 spans a little more than one
page of the Petition, but cites to 56 paragraphs of the Sherman Declaration,
11 pages of the 13-page ABYSS reference, and at least 16 pages of internal
sections of the Petition.” (emphasis added)). Thus, we did not demand a
greater level of granularity than the article permitted, we merely expected
that Petitioner identify with particularity what parts of the article it was
relying on. And we explained that omnibus citations to almost the entire
article do not meet that expectation.
In sum, having considered Petitioner’s arguments on rehearing, we
remain unpersuaded that the Petition sufficiently specifies where the
limitations of claims 1 and 58 of the ’859 patent are taught or suggested by
ABYSS or Denning, and adequately explains the significance of supporting
evidence. The combination of the numerous evidentiary deficiencies in the
Petition—vague, nested string citations; pervasive internal cross references;
and improper incorporation by reference from the Sherman Declaration—
leaves the Petition’s supporting evidence far afield from the particularity and
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specificity required by 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and
37 C.F.R. § 42.104(b)(4)–(5). See id.
B. Lack of Adequate Rationale/Improper Hindsight
We turn to the Decision’s determination that the Petition “does not
explain why a person of ordinary skill would make all of these choices and
create the particular implementation [of ABYSS and Denning] that
Petitioner has put forward.” Id. at 16; see id. at 14–18.
On rehearing, Petitioner argues that the Petition “explained the
modifications of ABYSS proposed in the Petition flow directly from the
explicit suggestion in ABYSS that each service provided by the supervisor
process can be implemented using either public or symmetric
cryptosystems.” Req. Reh’g 2 (quoting Pet. 43); see Req. Reh’g 5–9.
According to Petitioner, we “overlooked or did not appreciate that the
Petition had explained that only a single modification of ABYSS was
necessary to yield the claimed invention.” Req. Reh’g 5; see id. at 2.
Petitioner asserts that “the Petition explained that ABYSS did not use
‘digital certificates’ but instead used symmetric cryptosystems within the
supervisor process.” Id. at 5. Petitioner concludes that our determination
that the proposed modifications rely on impermissible hindsight was based
on a failure to “appreciate that all of the modifications identified in the
Petition were the result of this single change.” Id. at 7–8; see id. at 2.
We disagree. Instead of pointing out what we misapprehended or
overlooked, Petitioner treats the Rehearing Request as an opportunity to
recast what the Petition characterized as four changes into one, improperly
blurring the proposed modifications required to create the system combining
ABYSS and Denning proposed in § IV.C of the Petition (“Hypothetical
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ABYSS-Denning System”), which the Petition argues satisfies the claim
limitations. See Dec. 14. We are not persuaded by Petitioner’s attempt on
rehearing to classify the modifications necessary to reach the Hypothetical
ABBYSS-Denning System as a single change. If anything, Petitioner’s
arguments on rehearing further exemplify the lack of clarity in the changes
proposed in the Petition, rather than bringing any clarity to the changes.
Petitioner’s belated efforts to recast its modifications into the language of
ABYSS’s suggestion to use public-key encryption and piece together
arguments spread across the Petition into a coherent whole that was not
presented before is not the purpose of rehearing.
Accordingly, Petitioner has not shown any abuse of discretion in our
determination that the Petition “fails to show sufficiently that a person of
ordinary skill in the art—without improper hindsight—would have
combined ABYSS and Denning to reach claims 1 and 58 of the ’859 patent.
Id. at 18; see id. at 14–18.
CONCLUSION
We have reviewed Petitioner’s other arguments and find them to be
without merit. For the reasons given, Petitioner has not shown that our
Decision denying institution of inter partes review of claims 1 and 58 of the
’859 patent constituted an abuse of discretion.
ORDER
Accordingly, it is:
ORDERED that Petitioner’s Motion for Rehearing (Paper 12) is
denied.
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PETITIONER:
Jeffrey P. Kushan
Michael R. Franzinger
SIDLEY AUSTIN LLP
jkushan@sidley.com
mfranzinger@sidley.com
iprnotices@sidley.com

PATENT OWNER:

Nicholas T. Peters
Timothy P. Maloney
FITCH, EVEN, TABIN & FLANNERY LLP
ntpete@fitcheven.com
tpmalo@fitcheven.com

Robert A. Cote
MCKOOL SMITH, P.C.
rcote@mckoolsmith.com