Intertrust Technologies Corporation

Patent Trials and Appeals Board

Jan 5, 2021

IPR2020-01104 (P.T.A.B. Jan. 5, 2021)

Trials@uspto.gov Paper 11
571-272-7822 Date: January 5, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

DOLBY LABORATORIES, INC.,
Petitioner,
v.
INTERTRUST TECHNOLOGIES CORPORATION,
Patent Owner.

IPR2020-01104
Patent 8,191,157 B2

Before MICHAEL R. ZECHER, KIMBERLY McGRAW, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
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INTRODUCTION
Petitioner Dolby Laboratories, Inc. (“Dolby”)1 filed a Petition (Paper
2, “Pet.”) under 35 U.S.C. §§ 311–319 requesting inter partes review of
claims 53, 54, 56–60, and 64–66 of U.S. Patent No. 8,191,157 B2 (Ex. 1001,
“the ’157 patent”). Patent Owner Intertrust Technologies Corporation
(“Intertrust”)2 filed a Corrected Preliminary Response (Paper 9, “Prelim.
Resp.”). With our authorization, Dolby filed a Reply (Paper 8), and Intertrust
filed a Sur-Reply (Paper 10) addressing the factors in Apple, Inc. v. Fintiv,
Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential).
We may institute an inter partes review only if “the information
presented in the petition . . . and any response . . . shows that there is a
reasonable likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see
also 37 C.F.R. §§ 42.4(a), 42.108(c). Applying that standard, we do not
institute an inter partes review, for the reasons explained below.
BACKGROUND
A. RELATED PROCEEDINGS
As related matters, the parties identify Dolby Laboratories, Inc. v.
Intertrust Corp., No. 3:19-cv-03371 (N.D. Cal. filed June 13, 2019);

1 Dolby identifies Dolby Laboratories, Inc., a Delaware corporation, and
Dolby Laboratories, Inc., a California corporation, as real parties in interest.
Pet. 2. Dolby also identifies Cinemark Holdings, Inc., AMC Entertainment
Holdings, Inc., and Regal Entertainment Group as real parties in interest
“out of an abundance of caution, to avoid any dispute about such status
based on any alleged business relationship between” these companies and
Dolby. Id.
2 Intertrust identifies itself as the real party in interest. Paper 5, 1.
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Intertrust Technologies Corp. v. AMC Entertainment Holdings, Inc., No.
2:19-cv-00265 (E.D. Tex. filed Aug. 7, 2019); Intertrust Technologies Corp.
v. Cinemark Holdings, Inc., No. 2:19-cv-00266 (E.D. Tex. filed Aug. 7,
2019); Intertrust Technologies Corp. v. Regal Entertainment Group, No.
2:19-cv-00267 (E.D. Tex. filed Aug. 7, 2019). Pet. 2–3; Paper 5, 1.
Dolby also identifies two other petitions also challenging the ’157
patent: Dolby Laboratories, Inc. v. Intertrust Technologies Corp., IPR2020-
01105, Paper 2 (PTAB June 17, 2020) (challenging claims 69–75, 80, 81,
and 84 of the ’157 patent); and (2) Dolby Laboratories, Inc. v. Intertrust
Technologies Corp., IPR2020-01106, Paper 2 (PTAB June 17, 2020)
(challenging claims 86–90, 95, 96, and 99 of the ’157 patent).3 Pet. 3. Dolby
states that it has filed two additional petitions challenging the patentability of
certain claims in related patents that Intertrust owns, which share
substantially similar specifications as the ’157 patent: (1) U.S. Patent No.
8,191,158 B2 (IPR2020-00661); and (2) U.S. Patent No. 6,640,304 B2
(IPR2020-00662). Pet. 3.
B. THE ’157 PATENT (EX. 1003)
The ’157 patent “generally relates to computer and . . . electronic
security” and particularly “to computer-based and other electronic appliance-
based technologies that help to ensure that information is accessed and/or
otherwise used only in authorized ways, and maintains the integrity,
availability, and/or confidentiality of such information.” Ex. 1001, 1:21–29.
According to the ’157 patent, one “problem for electronic content providers

3 Concurrently with this decision, we are instituting an inter partes review in
IPR2020-01105 and IPR2020-01106.
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is extending their ability to control the use of proprietary information” so
they can “limit use to authorized activities and amounts.” Id. at 2:41–44. The
’157 patent allows electronic content providers to control their protected
information by employing “a new kind of ‘virtual distribution environment’
(called ‘VDE’ . . .) that secures, administers, and audits electronic
information use.” Id. at 2:29–31.
According to the ’157 patent, the VDE “prevents use of protected
information except as permitted by the ‘rules and controls’ (control
information)” established for the VDE. Ex. 1001, 55:2–4; see also id. Fig. 2
(illustrating a chain of handling and control for protected information within
a VDE). The “rules and controls may travel with the content they apply to,”
or the VDE may “allow[] ‘rules and controls’ to be delivered separately from
content.” Id. at 56:4–7. This allows the content distributor to control use of
their protected information after its delivery, because “no one can use or
access protected content without ‘permission’ from corresponding ‘rules and
controls.’” Id. at 56:7–10.
These rules and controls may take several forms. For example,
“distribution-related ‘rules and controls’ can specify who has permission to
distribute the rights to use content, and how many users are allowed to use
the content.” Id. at 54:11–14. “[U]sage-related ‘rules and controls’ may, for
example, specify what a user can and can’t do with the content and how
much it costs to use the content.” Id. at 54:23–26.
More particularly, rules and controls can include (a) “permission
records,” which contain security information; (b) “budgets,” which are
methods that “specify, among other things, limitations on usage of
information content . . . and how usage will be paid for,” and (c) “other
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methods,” which may include, for example, “how usage is to be ‘metered,’ if
and how content . . . and other information is to be scrambled and
descrambled, and other processes associated with handling and controlling
information content.” Id. at 57:38–58:1.
The ’157 patent discloses that electronic devices participating in a
VDE may include a Secure Processing Unit (“SPU”). Ex. 1001, 61:61–62.
Figure 9, reproduced below, illustrates an example of a SPU. Id. at 49:21–
22, 63:45–46.

Figure 9, above, depicts SPU 500 surrounded by tamper-resistant security
barrier 502, which processes information in a secure processing
environment. Id. at 58:14–16, 58:18–20, 62:20–21. SPU 500 may receive
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and store protected information governed by the VDE’s rules and controls.
See id. at 61:62–62:8.
C. CHALLENGED CLAIMS AND GROUNDS
Claim 53, the only independent claim challenged in the Petition, is as
follows:
[53pre] 53. An electronic appliance comprising:
[53a] a first processing unit;
[53b] a second processing unit, the second processing unit
comprising a microprocessor, internal memory, and
internal memory interface logic for impeding
unauthorized access to the internal memory by the first
processing unit; and
[53c] computer-readable media external to the second
processing unit,
[53d] the computer-readable media storing at least (a) a piece
of electronic content;
[53e] (b) one or more electronic objects received by the
electronic appliance separately from the piece of
electronic content and via separate delivery, the one or
more electronic objects specifying one or more
permitted or prohibited uses of the piece of electronic
content; and
[53f] (c) software configured for execution by the first
processing unit, the software comprising programming
for controlling usage of pieces of electronic content
such as the first piece of electronic content in
accordance with electronic objects such as the one or
more electronic objects,
[53g] the software further comprising programming for
causing the second processing unit to access
information required for usage of pieces of electronic
content.
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Ex. 1001, 318:15–37 (Dolby’s reference numbers and line formatting
added). Claims 54, 56–60, and 64–66 depend directly or indirectly from
claim 53. Id. at 318:38–39, 318:43–61, 319:4–16.
Dolby argues six grounds for inter partes review, as summarized in
the following table:
Claims Challenged 35 U.S.C. § Reference(s)/Basis
53, 54, 56, 57, 59, 65 103(a)4 Katznelson,5 ABYSS6
58, 64 103(a) Katznelson, ABYSS, Gammie7
59 103(a) Katznelson, ABYSS, Brachtl8
60, 66 103(a) Katznelson, ABYSS, Narasimhalu9
60, 64, 66 103(a) Katznelson, ABYSS, Stefik10
66 103(a) Katznelson, ABYSS, Cooper11
Pet. 10.
The Petition also relies on the declaration of John R. Black, Jr., Ph.D.
(Ex. 1002). Prof. Black is an Associate Professor of Computer Science at the
University of Colorado. Boulder. Ex. 1002 ¶ 4, App’x A (curriculum vitae).

4 35 U.S.C. 103(a) (2006), amended by Leahy–Smith America Invents Act,
Pub. L. No. 112-29 § 103, sec. (n)(1), 125 Stat. 284, 287, 293 (2011)
(effective Mar. 16, 2013). The filing date of the application that issued as the
’157 patent was June 25, 2007, which was before the effective date of this
amendment. See Ex. 1001, code (22).
5 Katznelson, US 5,010,571 (issued Apr. 23, 1991) (Ex. 1005).
6 Steve R. White & Liam Comerford, ABYSS: A Trusted Architecture for
Software Protection, 1987 IEEE Symp. on Security & Privacy, pp. 38–51
(1987) (Ex. 1022, “ABYSS”).
7 Gammie et al., US 5,237,610 (issued Aug. 17, 1993) (Ex. 1031).
8 Brachtl et al., US 4,908,861 (issued Mar. 13, 1990) (Ex. 1030).
9 Narasimhalu et al., US 5,499,298 (issued Mar. 12, 1996) (Ex. 1004).
10 Stefik et al., US 5,629,980 (issued May 13, 1997) (Ex. 1032).
11 Cooper et al., US 5,598,470 (issued Jan. 28, 1997) (Ex. 1029).
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GROUNDS OF THE PETITION
For the reasons below, we determine that Dolby has not established
that there is a reasonable likelihood of success in showing that at least one
challenged claim of the ’157 patent is unpatentable. Before analyzing those
grounds in detail, we address the level of ordinary skill in the art, and
whether we need to construe claim terms for our analysis.
A. LEVEL OF ORDINARY SKILL IN THE ART
The level of ordinary skill in the pertinent art at the time of the
invention is one of the factual considerations relevant to obviousness. See
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). It is also relevant to
how we construe the patent claims. See Phillips v. AWH Corp., 415 F.3d
1303, 1312–13 (Fed. Cir. 2005) (en banc). To assess the level of ordinary
skill, we construct a hypothetical “person of ordinary skill in the art,” from
whose vantage point we assess obviousness and claim interpretation. See In
re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). This legal construct
“presumes that all prior art references in the field of the invention are
available to this hypothetical skilled artisan.” Id. (citing In re Carlson, 983
F.2d 1032, 1038 (Fed. Cir. 1993)).
Relying on Prof. Black’s testimony, Dolby argues that a person of
ordinary skill in the art “would have been a person who has had a minimum
of a [B]achelor of [S]cience degree in computer science, computer
engineering, or a related field, and approximately two years of professional
experience or equivalent study in network and system security.” Pet. 16
(citing Ex. 1002 ¶¶ 4–8, 25–30 (Prof. Black’s testimony)).
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Intertrust’s articulation of the level of ordinary skill in the art “is
essentially the same” as that of Dolby, except that Intertrust’s articulation
requires “three years of work or research experience in the fields of secure
transactions and encryption,” whereas “[Dolby’s] description requires two
years of work in the computer science field.” Prelim. Resp. 16 (citing Pet.
16–17).
At this stage of the proceeding, Intertrust’s articulation of the level of
ordinary skill is based solely on attorney argument; therefore, we adopt Prof.
Black’s articulation of the level of ordinary skill, which we find sufficiently
reasonable in light of the subject matter involved in the ’157 patent. But to
avoid uncertainty, we omit Prof. Black’s open-ended assertion that this is a
“minimum” level of skill.
Thus, although our analysis would be the same under either parties’
assessment, for the purpose of this decision we regard a person of ordinary
skill in the art as someone who has a Bachelor of Science degree in
computer science, computer engineering, or a related field, and
approximately two years of professional experience or equivalent study in
network and system security.
B. CLAIM CONSTRUCTION
In an inter partes review, we construe a patent claim “using the same
claim construction standard that would be used to construe the claim in a
civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). This
includes “construing the claim in accordance with the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent.” Id. We also
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consider “[a]ny prior claim construction determination concerning a term of
the claim in a civil action . . . that is timely made of record” in this
proceeding. Id. The ordinary and customary meaning of a claim term “is its
meaning to the ordinary artisan after reading the entire patent,” and “as of
the effective filing date of the patent application.” Phillips, 415 F.3d at 1313,
1321.
Dolby argues that we should construe the term “receiving . . .
separately . . . and via separate delivery” (independent claim 53) to mean
“receiving via delivery at a different time, over a different path, or from a
different source.” Pet. 17; see also Pet. 18 (citing Ex. 1001, 17:66–18:8,
28:67–29:2, 41:34, 81:65–82:1, 127:24–27; Ex. 1002 ¶¶ 22–24, 55–56).
Intertrust argues, instead, that we should construe the term to mean
“received through a different path.” Prelim. Resp. 18 (citing Ex. 2001, 1; Ex.
2003, 12); see also id. at 18–22.
Dolby also argues that we should construe the term “cryptographically
seal” (dependent claim 59) according to its “plain and ordinary meaning,”
but does not explicitly state what a person of ordinary skill in the art would
have considered to be that plain and ordinary meaning. See Pet. 18. Intertrust
contends that “construction of this term is not necessary” to resolve the
matters raised in the Preliminary Response. Prelim. Resp. 23.
Our determination of whether to institute an inter partes review does
not depend on the meaning of either of the above claim terms, so we need
not expressly construe them in our decision. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(“[W]e need only construe terms ‘that are in controversy, and only to the
extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v.
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Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Nevertheless,
the text of the ’157 patent informs our interpretation of the challenged patent
claims, and we will discuss our interpretation of pertinent claim terms in the
context of our analysis in the sections below.
C. GROUND BASED ON KATZNELSON AND NARASIMHALU
Dolby alleges that claims 53, 54, 56, 57, 59, and 65 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Katznelson in view of ABYSS.
Pet. 10, 19–47.
A claim is unpatentable under § 103(a) for obviousness 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). A successful petition must “articulate specific reasoning, based on
evidence of record, to support the legal conclusion of obviousness.” In re
Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing
KSR, 550 U.S. at 418); see also 35 U.S.C. § 322(a)(3); 37 C.F.R.
§§ 42.22(a)(2), 42.104(b)(4) (2019). When a ground in a petition is based on
a combination of references, we consider “whether there was an apparent
reason to combine the known elements in the fashion claimed by the patent
at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
We base our obviousness inquiry on factual considerations 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
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(4) any objective indicia of obviousness or non-obviousness that may be in
evidence. See Graham, 383 U.S. at 17–18. Considering these factors,12 we
determine that Dolby has not sufficiently demonstrated, on the preliminary
record, that any of the challenged claims are obvious over Katznelson in
view of ABYSS.
The deficiency in Dolby’s challenge relates primarily in comparing
the claims with the teachings of Katznelson, so we begin with an overview
of Katznelson, followed by a discussion of Dolby’s arguments with respect
to the challenged claims.
1. Overview of Katznelson
Katznelson describes a “system for controlling and accounting for
retrieval of data from a memory containing an encrypted data file from
which retrieval must be authorized.” Ex. 1005, 1:13–16. The system
includes “an encryption key for enabling retrieval of the data and a credit
signal for use in limiting the amount of data to be retrieved from the file.” Id.
at 1:17–20. Figure 2, reproduced below, illustrates a content retrieval
terminal according to this system:

12 At this stage, neither party has presented evidence of objective indicia of
obviousness or non-obviousness, so this does not factor into our decision.
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Katznelson’s Figure 2, above, is “a functional block diagram of [a] customer
data retrieval terminal.” Ex. 1005, 1:38–39. Loaded in the terminal is read
only memory (ROM) 37, which stores two encrypted data files (Files A and
B). Id. at 3:6–9. Each data file contains several encrypted data blocks, each
of which includes “authenticated cost data [that] indicates the cost associated
with retrieving the given encrypted block of data.” Id. at 3:9–20. In addition
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to being a ROM, the storage medium for the data can alternatively be a CD-
ROM. See id. at 9:3–9, Fig. 6 (illustrating the use of a customer terminal in a
personal computer for retrieving data from a CD-ROM).
The retrieval terminal in Katznelson’s Figure 2 contains keyboard 33,
through which the user sends file use request signal 12 over a telephone line
to a separate authorization and key distribution terminal. Ex. 1005, 2:3–15,
3:20–26. This authorization and key distribution terminal responds to file
use request signal 12 by sending back to the retrieval terminal encrypted file
key 13 and authenticated credit data signal 14. Id. at 3:26–35. Each retrieval
terminal has a unique unit key 42, stored in unit key memory 24, which is
used to decrypt file key 13 and to authenticate credit data signal 14. Id. at
2:48–49, 3:40–45. Once authenticated, credit data signal 14 is stored in
credit register 27 of retrieval control unit 22. Id. at 3:45–46.
Credit data signal 14 “indicates an amount of credit to be extended to
the customer terminal . . . for retrieval of data from the file identified in the
file use request signal 12.” Ex. 1005, 2:35–38. In retrieval control unit 22,
credit signal 14 (stored in register 27) is compared with authenticated cost
data signals 51 (from each of the data file blocks) “to determine whether the
customer terminal . . . has been credited with sufficient credit to authorize
retrieval of data from the requested file.” Id. at 4:30–33. “When the
compensation indicates that there is sufficient accumulated credit to
authorize such retrieval,” retrieval control unit 22 generates enable signal 56,
which allows the retrieval terminal to decrypt the file data in decryption unit
16. Id. at 4:33–37, 4:44–45.
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2. Claim 53
Dolby provides an overview and claim charts comparing the
limitations of claim 53 (designated as [53pre]–[53g]) with the teachings in
Katznelson in view of ABYSS. Pet. 19–43. For the reasons below, we find
Dolby’s arguments insufficiently persuasive as to at least one aspect of
limitation [53e].
Limitation [53e] recites, in relevant part, “one or more electronic
objects specifying one or more permitted or prohibited uses of [a] piece of
electronic content.” Ex. 1001, 318:24–29. Dolby argues that Katznelson’s
credit data signal 14 meets this aspect of limitation [53e] by permitting or
prohibiting use of the electronic content. Pet. 23–24, 35–39.13
According to Dolby, Katznelson’s credit data signal 14 “indicates an
amount of credit to be extended to the customer terminal 11 for retrieval of
data from the requested file.” Pet. 21 (citing Ex. 1005, 2:35–38). “Data
decryption unit 16 is only permitted to decrypt the encrypted data 46 if

13 Limitation [53e] also includes two other requirements that we do not
address here. First, the one or more electronic objects must be stored, along
with the piece of electronic content itself, on a “computer-readable media
external to” a secure “second processing unit” (i.e., a unit corresponding to
the SPU in the ’157 patent disclosure). Id. at 318:22–23. Intertrust contends
that Dolby has not adequately explained why Katznelson’s credit data signal
14 meets this part of the limitation. Prelim. Resp. 44–46. Because we find
Dolby’s analysis otherwise insufficient, we do not need to address this part
of the limitation in the context of claim 53. We do, however, discuss this
limitation in the context of the dependent claims. See infra parts III.D, F, G.
Second, limitation [53e] requires the one or more electronic objects to be
“received by the electronic appliance separately from the piece of electronic
content and via separate delivery.” Ex. 1001, 318:25–27. In its Preliminary
Response, Intertrust does not specifically contest Dolby’s application of this
part of the limitation to Katznelson.
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sufficient credit exists to cover the cost of retrieving data from a requested
file.” Id (typographical indications omitted) (citing Ex. 1005, 4:11–43).
“Thus, the customer terminal limits the amount of data retrieved based on
the credit data signal 14.” Id. (citing Ex. 1005, code (57), 1:16–22, 2:35–38);
see also Ex. 1002 ¶¶ 68, 96–99. Consequently, Dolby contends that the “use
of the electronic content item is . . . in accordance with
permissions/prohibitions specified by the electronic object,” as recited in
claim 53. Pet. 24.
Dolby argues that these permissions or prohibitions can include
“budgets that ‘specify, for example, how much of the total information
content . . . can be used and/or copied.’” Pet. 24 (quoting Ex. 1005, 57:59–
61) (citing Ex. 1005, 56:26–57:4, 57:38–61). Dolby also compares
Katznelson’s credit data signal 14 with various passages in the ’157 patent
describing “rules and controls” which can set budgets, grant usage or
distribution permissions based on credit worthiness, and specify how usage
will be paid for. Pet 36 & n.5 (citing Ex. 1001, 53:21–27, 53:57–58, 54:23–
26, 55:4–9, 57:38–61).
In response, Intertrust argues that Dolby “fails to explain why the
authenticated credit data signal 14 . . . ‘specif[ies] one or more permitted or
prohibited uses.’” Prelim. Resp. 39 (alteration in original) (quoting Ex. 1001,
318:27–28) (citing Pet. 35–39). According to Intertrust, the credit amount
included in Katznelson’s credit data signal 14 “merely serves to facilitate
payment, if needed at all, for encrypted content.” Id. at 40. Intertrust argues
that it “does not directly pay for any one particular data file to be decrypted
and used,” and by itself, credit data signal 14 “lacks any meaningful
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connection to the data file and cannot specify its permitted or prohibited
uses.” Id. at 41 & n.11.
We agree with Intertrust that Dolby has not sufficiently explained how
Katznelson’s credit data signal 14 specifies “permitted or prohibited uses” of
the piece of electronic content. Although credit data signal 14 is part of the
“rules and controls” involved in granting users permission to retrieve
encrypted content, Dolby has not shown that credit data signal 14, by itself,14
specifies any permitted or prohibited uses of that content.
Generally, we interpret claims in a way that gives meaning to
limitations introduced in the dependent claims. See Phillips, 415 F.3d at
1315 (“[T]he presence of a dependent claim that adds a particular limitation
gives rise to a presumption that the limitation in question is not present in
the independent claim.” (citing Liebel–Flarsheim Co. v. Medrad, Inc., 358
F.3d 898, 910 (Fed. Cir. 2004)). Therefore, to understand the meaning of the
phrase “specifying one or more permitted or prohibited uses of the piece of
electronic content” recited in claim 53, we can look to the limitations of
dependent claims 54–68, which depend from claim 53. See Ex. 1001,
318:38–319:22.
In particular, claim 65 reads, “The electronic appliance of claim 53, in
which at least one of the one or more electronic objects specifies at least one
condition associated with a permitted use of the piece of electronic content.”

14 Dolby has not argued that credit data signal 14 specifies permitted or
prohibited uses in conjunction with other electronic objects that are also
received separately from the piece of electronic content. Therefore, we do
not address that question in our decision.
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Id. at 319:10–13 (emphasis added). Thus, claim 65 introduces a condition
associated with a permitted use specified in claim 53.
Dolby identifies credit data signal 14 as meeting both the limitation in
independent claim 53 of “specifying one or more permitted or prohibited
uses of the piece of electronic content” and the limitation in dependent claim
65 of “specif[ying] at least one condition associated with a permitted use of
the piece of electronic content.” See Pet. 35–37, 46–47; see also Pet. 71
(arguing in the context of claim 66 that “the at least one condition associated
with the permitted use includes specifying the authenticated credit data
signal”). Dolby’s reasons for why credit data signal 14 meets each of the two
limitations are essentially the same. See id. In other words, Dolby makes no
meaningful distinction between the two “specifying” limitations in claims 53
and 65.
Based on the current record and in light of the related disclosures in
the ’157 patent, we are not persuaded by Dolby’s interpretation of claim 53,
especially when comparing the language of claim 53 with the language of
claim 65 and the other dependent claims. Based on this comparison, the ’157
patent distinguishes between a “permitted or prohibited permitted use” of
electronic content and a “condition associated with a permitted use” of the
content.
“[P]ermitted or prohibited uses of the piece of electronic content” may
include, for example, “viewing,” “distributing,” “printing,” “copying,”
“editing,” “embedding,” or “extracting” the electronic content. Ex. 1001,
318:59–319:9 (claims 60–64, which depend from challenged independent
claim 53). “Uses” may also include decrypting or displaying the content. See
id. at 45:26–28 (listing decryption, display, and printing as possible uses of
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the digital content). In general, the ’157 patent describes a category of rules
and controls that “specify what kinds of content usage are permitted, and
what kinds are not.”). Id. at 55:7–8.
By contrast, a “condition associated with a permitted use of the piece
of electronic content” is a different category of rules and controls that may
include, for example, “an indication that the permitted use may be made
only for a certain time period,” “an indication that the permitted use may be
exercised only by a certain user or class of users,” or “a requirement that
auditing information be collected regarding the permitted use.” Id. at
319:14–22 (claims 66–68); see also id. at 55:5–7 (rules and controls “may
grant specific individuals or classes of content users . . . ‘permission’ to use
certain content”).15
Put simply, the plain language of the claims suggests that “specifying
one or more permitted or prohibited uses of the piece of electronic content”
is not the same as “specif[ying] at least one condition associated with a
permitted use.”
Katznelson’s system grants a user permission to “use” electronic
content, at least by decrypting it. Ex. 1005, 4:44–51, Fig. 2 (block 16); see
also Ex. 1001, 45:28 (identifying decryption as one of the ways electronic
content can be “used”). Katznelson also describes various conditions
associated with permitting decryption of an electronic file. One of these
conditions is that credit data signal 14 must contain sufficient credit—as
compared to an internal cost counter—before customer terminal 11 is

15 In the ’157 patent, the term rules and controls appears to include both
specifying permitted or prohibited uses and the conditions associated with
those specified uses. See, e.g., Ex. 1001, 55:2–50.
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permitted to decrypt (use) the digital content. See Ex. 1005, 4:11–51. Thus,
credit data signal 14 reflects a condition associated with a permitted use of
the electronic content.
But credit data signal 14 is not, by itself, a permitted or prohibited use
of the electronic content, nor has Dolby shown that credit data signal 14, by
itself, specifies that any use (such as decryption) is permitted or prohibited.
Katznelson’s system must rely on the internal logic and data found in
customer terminal 11—not credit data signal 14 alone—to determine
whether decryption is permitted or prohibited. Stated differently, although
credit data signal 14 indicates the amount of credit to be extended to
customer terminal 11 for data retrieval, this extended credit is not, by itself,
sufficient to specify that decryption is one of the permitted or prohibited use
of the electronic content actually retrieved.
Dolby relies solely on Katznelson with respect to limitation [53e]. See
Pet. 35–39. Dolby’s arguments applying the teachings of ABYSS to other
claim limitations do not remedy the shortcomings in Katznelson identified
above. See Pet. 29–43. Accordingly, we determine that Dolby has not
demonstrated it is reasonably likely to prevail in showing that claim 53 is
unpatentable as obvious over Katznelson in view of ABYSS.
3. Claims 54, 56, 57, 59, and 65
Claims 54, 56, 57, 59, and 65 depend from claim 53, so they include
the limitation “specifying one or more permitted or prohibited uses of the
piece of electronic content.” See Ex. 1001, 318:38–319:13. Dolby’s analysis
of these claims addresses only the added limitations of each dependent claim
and does not provide further argument that would remedy the deficiency in
Dolby’s analysis of Katznelson with respect parent claim 53. See Pet. 43–47.
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Thus, for the same reasons given above as to claim 53, we determine
that Dolby has not demonstrated a reasonable likelihood of success in
showing that claims 54, 56, 57, 59, or 65 are unpatentable based on the
combination of Katznelson and ABYSS. See In re Fine, 837 F.2d 1071, 1076
(Fed. Cir. 1988) (“Dependent claims are nonobvious under section 103 if the
independent claims from which they depend are nonobvious.”).
D. GROUND BASED ON KATZNELSON, ABYSS, AND GAMMIE
Next, Dolby alleges that claims 58 and 64 are unpatentable under 35
U.S.C. § 103(a) as obvious over Katznelson in view of ABYSS and
Gammie. See Pet. 10, 47–56. These claims depend from claim 53, so they
include its limitation “specifying one or more permitted or prohibited uses of
the piece of electronic content.” See Ex. 1001, 318:50–54, 319:4–9.
For claim 58, Dolby’s analysis addresses only the added limitations of
the claim, and does not provide further argument or evidence that would
remedy Dolby’s analysis of Katznelson with respect to parent claim 53. See
Pet. 49–51. Thus, Dolby has not shown sufficient reasons, on the present
record, why the combination of Katznelson, ABYSS, and Gammie teaches
all the limitations of claim 58.
Claim 64 requires that “the one or more permitted or prohibited uses
of the piece of electronic content include . . . extracting content from the
piece of electronic content.” Ex. 1001, 319:4–9. For this limitation, Dolby
relies on a combination of Katznelson and Gammie. See Pet. 51–56.
According to Dolby, Katznelson teaches that the encrypted data file can be
“divided into data fields, and users may be authorized in different tiers that
determine which data fields a specific user may access.” Pet. 52 (citing
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Ex. 1005, 9:24–53). Dolby contends that a person of ordinary skill in the art
would have modified Katznelson to receive such user tier authorizations as
an “electronic object,” as taught by Gammie. Pet. 53.
Gammie describes a descrambler for encoded satellite television
signals. Ex. 1031, code (57). The encoded television signal may include
“authorization and control data, e.g., the key of the month, subscriber
authorization data such as user tier information, pay-per-view information,
or other subscriber specific or decoder specific data.” Id. at 12:56–59. Dolby
contends that Gammie teaches “extracting content from the piece of
electronic content” as a permitted use according to claim 64, because it
“discloses that permissions and prohibitions such as tier authorizations may
be embodied in electronic objects (as encrypted authorization data).” Pet. 53
(citing Ex. 1031, 12:55–66). Dolby argues that combining Gammie’s tier
authorizations with Katznelson’s system amounts to applying a “known
technique . . . to similar devices . . . in the same way to yield the predictable
result of informing the user’s appliance of its permissions with respect to the
electronic content.” Pet. 55 (citing Ex. 1002 ¶ 137).
We find Dolby’s argument insufficiently persuasive on the present
record. In addition to the requirement “specifying one or more permitted or
prohibited uses of the piece of electronic content” discussed above, the
limitation also requires that the one or more electronic objects be “received
by the electronic appliance separately from the piece of electronic content
and via separate delivery.” Ex. 1001, 318:25–27; see supra note 13 (noting
that Intertrust did not contest Dolby’s application of this part of limitation
[53e] to Katznelson). Dolby has not explained why user tier information,
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such as Gammie teaches, would have been received separately from the
electronic content in either Gammie or in Katznelson’s modified terminal.
Thus, we determine that Dolby has not sufficiently shown that claims
58 or 64 would have been obvious over Katznelson in combination with
ABYSS and Gammie.
E. GROUNDS BASED ON KATZNELSON, ABYSS, AND BRACHTL OR
COOPER
In one ground, Dolby alleges that claim 59 is unpatentable under 35
U.S.C. § 103(a) as obvious over Katznelson in view of ABYSS and Brachtl.
See Pet. 10, 57–61. In another ground, Dolby alleges that claim 66 is
unpatentable under 35 U.S.C. § 103(a) as obvious over Katznelson in view
of ABYSS and Cooper. See Pet. 10, 70–73. These claims depend from claim
53, and thus include the limitation “specifying one or more permitted or
prohibited uses of the piece of electronic content.” See Ex. 1001, 318:55–58,
319:14–16.
Dolby’s analysis addresses only the added limitations of claims 59
and 66, and does not provide further argument or evidence that would
remedy Dolby’s analysis of Katznelson with respect to parent claim 53. See
Pet. 57–61, 70–73. Thus, for the same reasons given above as to claim 53,
we determine that Dolby has not demonstrated a reasonable likelihood of
success in showing that claims 59 or 66 are unpatentable based on the
combination of Katznelson, ABYSS, and Brachtl or Cooper.
F. GROUND BASED ON KATZNELSON, ABYSS, AND NARASIMHALU
Next, Dolby alleges that claims 60 and 66 are unpatentable under 35
U.S.C. § 103(a) as obvious over Katznelson in view of ABYSS and
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Narasimhalu. See Pet. 10, 61–66. These claims depend from claim 53, so
they include the limitation “specifying one or more permitted or prohibited
uses of the piece of electronic content.” See Ex. 1001, 318:59–61, 319:14–
16.
Claim 60 requires that “the one or more permitted or prohibited uses
of the piece of electronic content include viewing the piece of electronic
content.” Ex. 1001, 318:59–61. For this limitation, Dolby concedes that
Katznelson “does not explicitly disclose how its electronic content is used.”
Pet. 64 (citing Ex. 1005, 1:27–29, 9:24–53). But Dolby argues that a person
of ordinary skill in the art “would have been motivated to modify
Katznelson to display the contents of its electronic content (in which case
authorization to access the content is authorization to view the content, as in
claim 60).” Pet. 64. Dolby also argues that “Narasimhalu teaches that visual
data was a prevalent type of electronic content on computer platforms.” Id.
(citing Ex. 1002 ¶ 160; Ex. 1004, 1:15–21, 4:47–57 (mentioning text,
graphics, animation, and video)).
Further, Dolby argues that, “[s]ince ‘files’ would have been used to
encapsulate information of practically any and every type, it would have
been simple design choice—guided by the distribution needs of the parties—
to provide text and/or video for viewing.” Pet. 65. Dolby contends that “the
requests and authorizations (permissions/prohibitions) to access content in
Katznelson would have been recognized as requests and authorizations to
‘view’ content when the content is produced for consumption by the user.”
Id. (citing Ex. 1002 ¶ 161).
We find Dolby’s arguments insufficiently persuasive on the present
record. We agree that a person of ordinary skill in the art may have
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understood that viewing is a possible use of accessible electronic content.
But Dolby has not adequately explained why Katznelson’s modified
terminal would have received an electronic object specifying that viewing is
a permitted or prohibited use, or that this specification would have been
“received . . . separately from the piece of electronic content and via separate
delivery.” Ex. 1001, 318:25–27.
For claim 66, Dolby’s analysis addresses only the added limitation of
the claim, and does not provide further argument or evidence that would
remedy Dolby’s analysis of Katznelson with respect to parent claim 53. See
Pet. 65.
Thus, we determine that Dolby has not sufficiently shown that claims
60 or 66 would have been obvious over Katznelson in combination with
ABYSS and Narasimhalu.
G. GROUND BASED ON KATZNELSON, ABYSS, AND STEFIK
Next, Dolby alleges that claims 60, 64, and 66 are unpatentable under
35 U.S.C. § 103(a) as obvious over Katznelson in view of ABYSS and
Stefik. See Pet. 10, 66–70. These claims depend from claim 53, so they
include limitation “specifying one or more permitted or prohibited uses of
the piece of electronic content.” See Ex. 1001, 318:59–61, 319:4–9, 319:14–
16.
Claim 60 requires that “the one or more permitted or prohibited uses
of the piece of electronic content include viewing the piece of electronic
content.” Ex. 1001, 318:59–61. Claim 64 requires that “the one or more
permitted or prohibited uses of the piece of electronic content include . . .
extracting content from the piece of electronic content.” Ex. 1001, 319:4–9.
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For these limitations, Dolby concedes that Katznelson “does not explicitly
disclose how its electronic content is used, and in discussing authorization
tiers for extracting content, Katznelson does not explicitly describe
authorization tiers being transmitted as electronic objects.” Pet. 68–69
(citing Ex. 1005, 1:27–29, 9:24–53).
But according to Dolby, Stefik teaches that “a digital work may be a
photograph with a usage right to view it but not make a copy of it or embed
it in another work . . . , [or] a text file with a usage right that prohibits
editing or a music file with usage rights to edit the pitch or tempo.” Pet. 69
(citing Ex. 1032, 17:14–17, 41:16–39). Dolby contends that a person of
ordinary skill in the art “would have been motivated to modify Katznelson to
include electronic objects specifying permissions and/or prohibitions related
to viewing (claim 60), editing, embedding, and extracting (claim 64).” Pet.
68.
We find Dolby’s arguments insufficiently persuasive on the present
record. While Dolby has shown that Stefik teaches permissions or
prohibitions relating to uses in claims 60 and 64, Dolby has not adequately
explained why Katznelson’s modified terminal would have received an
electronic object specifying these uses, or that the specification would have
been “received . . . separately from the piece of electronic content and via
separate delivery.” Ex. 1001, 318:25–27.
For claim 66, Dolby’s analysis addresses only the added limitation of
the claim, and does not provide further argument or evidence that would
remedy Dolby’s analysis of Katznelson with respect to parent claim 53. See
Pet. 66–70.
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Thus, we determine that Dolby has not sufficiently shown that claims
60, 64, or 66 would have been obvious over Katznelson in combination with
ABYSS and Stefik.
H. CONCLUSION
After considering the evidence and arguments on the preliminary
record, we determine that Dolby has not demonstrated a reasonable
likelihood of success in showing that at least one challenged claim of the
’157 patent is unpatentable. Therefore, we deny the Petition.
ORDER
In consideration of the foregoing, it is
ORDERED that the Petition is denied, and no trial is instituted.
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For PETITIONER:
Scott McKeown
Mark D. Rowland
Victor Cheung
ROPES & GRAY LLP
scott.mckeown@ropesgray.com
mark.rowland@ropesgray.com
victor.cheung@reopesgray.com

Leslie Spencer
DESMARAIS LLP
lspencer@desmaraisllp.com

For PATENT OWNER:
Christopher Mathews
Razmig Messerian
Tigran Guledjian
Scott Florance
QUINN EMANUEL URQUHART & SULLIVAN LLP
chrismathews@quinnemanuel.com
razmesserian@quinnemanuel.com
tigranguledjian@quinnemanuel.com
scottflorance@quinnemanuel.com