Koninklijke Philips N.V.

Patent Trials and Appeals Board

Aug 31, 2021

IPR2021-00547 (P.T.A.B. Aug. 31, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Date: August 31, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

TCL INDUSTRIES HOLDINGS CO., LTD.,
Petitioner,
v.
KONINKLIJKE PHILIPS N.V.,
Patent Owner.

IPR2021-00547
Patent 9,590,977 B2

Before KEVIN F. TURNER, STACEY G. WHITE, and
RUSSELL E. CASS, Administrative Patent Judges.
CASS, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
A. Background
TCL Industries Holdings Co., Ltd. (“Petitioner”) filed a Petition
requesting an inter partes review of claims 22–31 (the “challenged claims”)
of U.S. Patent No. 9,590,977 B2 (Ex. 1001, “the ’977 patent”). Paper 1
(“Pet.”). Koninklijke Philips N.V. (“Patent Owner”) filed a Preliminary
Response. Paper 7 (“Prelim. Resp.”).
We have authority to determine whether to institute an inter partes
review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review
may not be instituted unless it is determined that “the information presented
in the petition filed under section 311 and any response filed under
section 313 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 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The
Board institutes the trial on behalf of the Director.”). The reasonable
likelihood standard is “a higher standard than mere notice pleading,” but
“lower than the ‘preponderance’ standard to prevail in a final written
decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039,
Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (footnote omitted).
For the reasons provided below and based on the record before us, we
determine Petitioner has not demonstrated a reasonable likelihood that it
would prevail in showing the unpatentability of at least one of the
challenged claims. Accordingly, we do not institute an inter partes review.
B. Real Parties in Interest
Petitioner states that the “real parties in interest for this IPR are TCL
Industries Holdings Co., Ltd., TCL Electronics Holdings Ltd., TCL King
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Electrical Appliances (Huizhou) Co. Ltd., TTE Technology, Inc., TCL Moka
International Ltd., TCL Moka Manufacturing S.A. de C.V., TCL Smart
Device (Vietnam) Company Ltd., TCL Industries Holdings (Hong Kong)
Co. Ltd., TTE Corporation, TCL Holdings (BVI) Limited, Shenzhen TCL
New Technology Co., Ltd., and TCL Technology Group Corporation.” Pet.
2. Patent Owner states that “[t]he real parties-in-interest are Koninklijke
Philips N.V. and Philips North America LLC.” Paper 5 (Patent Owner’s
Mandatory Notices), 2.
C. Related Proceedings
Petitioner states that Patent Owner has asserted the ’977 patent and
two other patents assigned to Patent Owner (U.S. Patent Nos. 10,298,564
(the “’564 patent”) and 7,052,152 (the “’152 patent”)) against TTE
Technology in the United States District Court for the Central District of
California in Case No. 2:20-cv-01406. Pet. 2. Petitioner further states that
this district court case has been stayed due to a later filed ITC action, In the
Matter of Certain Digital Video-Capable Devices and Components Thereof,
Investigation No. 337-TA-1224. Id. at 2–3, 4. Petitioner also identifies
other district court litigation proceedings in which Philips has filed
complaints alleging infringement of the ’977 patent. Id. at 3–4.
Petitioner has also challenged the ’977 patent in two additional inter
partes review proceedings: IPR2021-00495 and IPR2021-00496. IPR2021-
00495, Paper 3; IPR2021-00496, Paper 1. Petitioner also has challenged the
’564 patent in IPR2021-00497. IPR2021-00497, Paper 1.
D. The ’977 Patent (Ex. 1001)
The ’977 patent relates to a system for communicating secure content
from a first communication device to a second communication device by
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using a commonly-shared secret to perform a distance measurement between
the first and second communication devices. Ex. 1001, code (57). The ’977
patent explains that this system allows a user to watch a movie the user owns
on a neighbor’s television screen if the user (or a device that the user owns)
is near the neighbor’s television screen, but prevents the movie from being
played from a transmitting device at a remote location (for example over the
Internet). Id. at 2:12–25.
An overview of the steps performed by the first communication
device and second communication device is shown in Figure 2, reproduced
below.

As shown in Figure 2, first device 201 has content that second device
203 has requested. Ex. 1001, 5:20–25. In step 205, first device 201
authenticates second device 203, for example, by checking whether device
203 is a compliant device and really is the device identified to the first
device. Id. at 5:26–31. Then, in step 207, first device 201 exchanges a
secret with second device 203, such as a randomly generated bit word,
which may be carried out using a key management protocol. Id. at 5:31–36.
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Then, in step 209, first device 201 transmits a signal for distance
measurement to second device 203. Ex. 1001, 5:38–39. The second device
modifies the received signal according to the secret, and retransmits the
modified signal back to the first device. Id. at 5:39–41. First device 201
measures the round trip time between the transmission and receipt of the
signal and checks to see if the returned signal was modified according to the
exchanged secret. Id. at 5:41–45. If the round trip time is less than a
predetermined interval, first device 201 is allowed to send protected content
to second device 203. Id. at 6:24–27.
The step of performing an authenticated distance measurement is
shown in Figure 3, illustrated below.

In Figure 3, first device 301 and second device 303 have exchanged a
secret, which is stored in memory 305 of the first device and memory 307 of
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the second device. Ex. 1001, 6:28–32. In order to perform the distance
measurement, transmitter 3051 transmits a signal to second device 302,
which receives the signal using receiver 311. Id. at 6:34–35. Second device
303 modifies the signal (313) using the locally stored secret according to
rules known by first device 301, and transmits the modified signal back to
the first device. Id. at 6:35–39. First device 301 receives the modified
signal using receiver 317 and compares it to a locally modified signal, which
is created by taking the original signal transmitted by the first device to the
second device and modifying it using the first device’s locally stored secret
(319). Id. at 6:39–45. If the received modified signal and the locally
modified signal are identical, the received signal is authenticated. Id. at
6:45–49. In 323, first device 301 calculates the distance between the first
and second devices, such as by measuring the time from the transmission of
the signal from the first device to the receipt of the signal by the second
device. Id. at 6:52–57.
E. Illustrative Claims
Of the challenged claims, claim 22 is independent. Claim 22 is
illustrative and is reproduced below.
22. [Pre] A method for a second device controlling of
receiving a protected content, the method comprising:
[a] sending a certificate to a first device, the certificate
providing information regarding the second device;
[b] receiving a first signal from the first device after the first
device determines, based on the certificate, whether the
second device is compliant with a set of compliance rules;

1 The ’977 patent appears to erroneously refer to the transmitter using
reference number 309. Ex. 1001, 6:34.
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[c] sending a second signal to the first device after receiving
the first signal;
[d] generating a secure authenticated channel using the
secret;
[e] receiving over the secure authenticated channel the
protected content after the first device determines that the
second signal is derived using the secret and a time
between a transmission of the first signal and receipt of the
second signal by the first device is less than a
predetermined time.
Ex. 1001, 8:39–57 (bracketed paragraph identifiers added).
F. Evidence of Record
Petitioner relies upon the following references found in the record:
Maillard et al., EP 1045585 A1, pub. Oct. 18, 2000 (Ex.
1004, “Maillard”);
Davis et al., WO 97/39553 A1, pub. Oct. 23, 1997 (Ex.
1005, “Davis”);
Lundkvist, WO 02/35036 A1, publ. May 2, 2002 (Ex.
1006, “Lundkvist”); and
Alfred Menezes et al., Handbook of Applied
Cryptography (1997) (Ex. 1009, “HAC”).
Pet. iii, 1.
Petitioner submits the Declaration of Dr. Seth James Nielson (“Dr.
Nielson,” Ex. 1003).
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G. Challenges to Unpatentability
Petitioner challenges the patentability of claims 22–31 of
the ’977 patent based on the following grounds:
Claims Challenged 35 U.S.C. § Reference(s)/Basis
22–25, 29–31 103(a)2 Maillard, Davis, Lundkvist
26–28 103(a) Maillard, Davis, Lundkvist, HAC

II. DISCUSSION
A. Claim Construction
A claim “shall be construed 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). Petitioner states that, “for the
purposes of this Petition, the claim terms are to be understood according to
their plain and ordinary meaning.” Pet. 15. Patent Owner does not provide
any proposed claim constructions at this stage of the proceeding. See
generally Prelim. Resp. Based on our review of the Petition and Preliminary
Response, we do not believe that any claim terms require express
construction at this stage of the proceeding. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803

2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), included revisions to 35 U.S.C. § 103 that became effective
as of March 16, 2013. The application for the ’977 patent was filed after
March 16, 2013, but includes a priority claim to an application filed before
this date. Ex. 1001, code (22), (63). Petitioner asserts that the ’977 patent
has an effective filing date of June 27, 2003, and Patent Owner asserts that
the ’977 patent has a priority date of July 26, 2002. Pet. 7; Prelim. Resp. 4.
For purposes of institution, we apply the pre-AIA versions of 35 U.S.C.
§ 103.
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(Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
controversy, and only to the extent necessary to resolve the controversy.”).3
B. Principles of Law
A claim is unpatentable under 35 U.S.C. § 103 if “the differences
between the subject matter sought to be patented 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). The question of obviousness is resolved on the basis of underlying
factual determinations, 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 (4) where in evidence, objective evidence
of non-obviousness.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
When evaluating a combination of teachings, we must also “determine
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)). Whether a combination of prior
art elements would have produced a predictable result weighs in the ultimate
determination of obviousness. Id. at 416–417.
In an inter partes review, the petitioner must show with particularity
why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,

3 On March 16, 2021, the ITC issued an order construing certain claims of
the ’977 patent. In the Matter of Certain Digital Video-Capable Devices
and Components Thereof, Investigation No. 337-TA-1224, Order No. 16
(Mar. 16, 2021). We have reviewed the ITC’s claim construction order and
find it to be consistent with our Decision.
4 At this stage of the proceeding, Patent Owner has not presented objective
evidence of non-obviousness.
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Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
We analyze the challenges presented in the Petition in accordance
with the above-stated principles.
C. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art at the time
of the alleged invention “would have had at least a bachelor’s degree in
Computer Science, Computer Engineering, or Electrical Engineering and 1–
2 years of industry or research experience in the area of secure cryptographic
communications.” Pet. 14. Petitioner further asserts that “[t]his description
is approximate and additional education could make up for less work
experience and vice versa.” Id. (citing Ex. 1003 ¶¶ 105–108). At this stage
of the proceeding, Patent Owner does not set forth a definition of the level of
ordinary skill. See generally Prelim. Resp. For the purposes of this
Decision, we adopt Petitioner’s assessment of the level of skill in the art,
which is consistent with the ’977 patent and the asserted prior art of record.
D. Ground 1: Alleged Obviousness of Claims 22–25 and 29–31 Over
Maillard, Davis, and Lundkvist
Petitioner contends that claims 22–25 and 29–31 are obvious in view
of Maillard, Davis, and Lundkvist. Pet. 19–72. Patent Owner disagrees,
arguing, inter alia, that the Petition does not sufficiently establish that it
would have been obvious to combine the distance measurement security
techniques disclosed by Davis and Lundkvist into Maillard. Prelim. Resp.
45–46, 48–50. For the reasons discussed below, we find that Petitioner has
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not demonstrated a reasonable likelihood that the claims challenged in this
ground are unpatentable.
1. Overview of Maillard (Ex. 1004)
Maillard discloses a system for securely communicating digitally
recorded data between devices to prevent illegal copying and redistribution.
Ex. 1004 ¶ 1. For example, a DVD player may provide content to a TV and
a video recorder. Id. at ¶¶ 75–76. Before communication, a security module
may be used to validate one or more of the devices, such as by using an
exchange of certificates. Id. ¶¶ 78–79. The security module may be a
smartcard that can be inserted into a socket of one of the devices, or may be
a separate module connected to one or more of the devices. Id. ¶¶ 9, 11. If
validation is successful, the security module transmits a randomly-generated
session key (SK) to the device(s) in encrypted form, which is decrypted by
the device(s). Id. at ¶¶ 104–106. The session key is thereafter used to
encrypt protected content that is transferred to the device(s). Id. at ¶ 106.
Maillard explains that use of the security module to validate device(s)
provides an extra level of security to the system. Ex. 1004 ¶ 8. The security
module can also be used to create a personalized digital audio-visual system
by allowing a DVD player to send data to a digital television only if both the
player and the television are validated by the security module, thus
restricting a user’s viewing of the digital data to their own personal
television. Id. at ¶ 9. Additionally, the security module receives device
identifiers and validates devices (such as a DVD and television) separate
from the communication link between the devices themselves, so that the
device identifiers cannot be obtained if the communication link between the
devices is intercepted by a third party. Id. at ¶ 10.
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The security module may contain a “revocation list” for blacklisting
non-compliant devices and an “authorization list” for allowing transfer of
data between pre-registered devices only. Ex. 1004 ¶ 15. Device identifiers
intentionally published by third parties, for example on the Internet, can be
added to the revocation list when periodically updating the security module
in order to prevent data from being transferred to or from these devices. Id.
The use of an authorization list can also block use of device identifiers
intentionally published on the Internet because those identifiers will not be
valid anywhere except in, for example, a home network. Id.
2. Overview of Davis (Ex. 1005)
Davis discloses a system that prevents unauthorized use of a device
(such as a computer) by a user. Ex. 1005, code (57). Davis explains that
existing systems allow a user to insert a smartcard to gain access to a
computer, but these systems can be vulnerable when the user leaves the
computer unattended without removing the card or disabling the computer
during the user’s absence. Id. at 2:28–3:19. Davis’s system addresses this
problem by providing a wireless device carried by the user that: (1)
communicates with the PC to establish authorization using a challenge-
response protocol, and (2) ensures proximity of the user to the PC by
requiring the response to be received within a prescribed period of time. Id.
at 4:1–19, 11:8–13:16, Fig. 5.
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An overview of Davis’s system is shown in Figure 1, reproduced
below.

Ex. 1005, Fig. 1. As shown in Figure 1, wireless authentication system 100
includes a personal computer 110, a security device (not shown)
implemented within computer 110, and user authorization token 120 worn
by authorized user 130. Id. at 6:28–7:1. Personal computer 110 periodically
attempts to establish a wireless communication link 140 with token 120,
which can be established and maintained only when token 120 is within a
predetermined distance from personal computer 110. Id. at 7:6–13. Upon
establishing communication link 140, the computer 110 and token 120
exchange information in an encrypted format. Id. at 7:20–22. When the
security device determines that token 120 responded correctly, user 130 is
granted access to personal computer 110. Id. at 7:22–26.
Davis’s wireless authentication process uses a challenge-response
protocol shown in Figure 5, reproduced below.
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Ex. 1005, Fig. 5; see id. at 11:8–13:16. As shown in Figure 5, the computer
prompts the user for a password (step 400). Ex. 1005, 11:12–14. If the
password is correct, the security device within the computer generates a
challenge message and transmits it over a predetermined distance range from
the computer (step 415). Id. at 11:21–24. Thereafter, the security device
awaits a response message from the token. Id. at 11:24–26. If no response
message is received after a prescribed period of time, access is denied (step
425). If a response message is received, the node verifies whether the
response message is correct (step 430). Id. at 11:28–30. If the response
message is not correct, access is denied (step 425). Id. at 11:30–12:3. If the
response message is correct, the user is granted access to the computer and
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the computer sets a timing circuit to signal when the computer will generate
another challenge message and undergo another challenge/response session
(steps 435–445). Id. at 12:3–6. This ensures that the computer will
periodically require authentication and determine that the user is in
proximity to the computer while the computer is operational. Id. at 12:6–9.
3. Overview of Lundkvist (Ex. 1006)
Lundkvist discloses a method for authorizing access to an object, in
which communication “is established between the object and a wireless
portable unit when a tripping device on the object is actuated.” Ex. 1006,
1:5–8. The invention is described for controlling access to a vehicle, such as
a car or truck, and in that case, “the tripping device normally consists of a
door handle on the vehicle.” Id. at 1:23–25. The signal communication
verifies the identity of the wireless portable unit and determines whether the
distance between the vehicle and the portable unit is less than a maximum
permitted distance. Id. at 1:8–17.
The signaling method between the vehicle and the portable unit when
the door handle is actuated is illustrated in Figure 2, reproduced below:
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Ex. 1006, Fig. 2. As shown in Figure 2, when the tripping device (door
handle) is actuated, the vehicle 1 creates a message that includes first
information x that is intended to be used to verify the identity of the portable
unit. Id. at 8:11–14. First information x consists of identity information
unique to the vehicle and a random number generated by the vehicle. Id. at
8:14–16. The message is encrypted and sent to the portable unit in first
signal X. Id. at 8:16–17. The portable unit receives first signal X, and
decrypts the message to obtain first information x. Id. at 8:19. The portable
unit processes first information x to generate second signal Y1, which is a
function f(x) of first information x, and sends second signal Y1 to the
vehicle. Id. at 8:19–23. The vehicle receives and decrypts second signal
Y1, and measures time T1 from the transmission of first signal X until the
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receipt of second signal Y1. Id. at 8:23–26. The vehicle is unlocked if the
decrypted information matches first information x and measured time T1 is
less than a predetermined value. Id. at 8:26–28.
4. Analysis of Independent Claim 22
Petitioner asserts that Maillard’s security module is the claimed “first
device,” and that Maillard’s digital TV or recorder corresponds to the
claimed “second device.” Pet. 34–35. Petitioner further asserts that
Maillard’s security module can be a smart card inserted into a DVD player
that may send content to the digital TV or recorder. Id. at 35. Petitioner
does not rely on Maillard for claim limitation 22(e) requiring that protected
content is received after the first device determines that “a time between a
transmission of the first signal and receipt of the second signal by the first
device is less than a predetermined time,” but instead relies on Davis and
Lundkvist for this limitation. Pet. 56–61.
Petitioner argues that a person of ordinary skill
would have found it obvious to combine the complementary
teachings of these references to authorize the transfer of
protected content to the (second) device over the channel upon:
(A) first validating the identity of the device (as explained in
Elements 22[a] and 22[b-1] per Maillard), and if the validation
is successful, (B) determining that a time between a
transmission of the first signal and receipt of the second signal
by the first device is less than a predetermined time (per
combination of Davis and Lundkvist), and (C) determining that
the second signal is derived using the secret (per combination
of Davis and Lundkvist).
Pet. 58 (citing Ex. 1003 ¶¶ 188–197).
More specifically, Petitioner argues that Maillard, Davis, and
Lundkvist “all relate to providing secure access that is conditioned on
successful completion of exchanges between two devices.” Pet. 31 (citing
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Ex. 1004, code (57), ¶¶ 79, 104–108; Ex. 1005, 1:18–21, 2:28–3:30, 4:2–19,
11:8–12:9; Ex. 1006, code (57), 3:14–4:5). According to Petitioner, a
person of ordinary skill would have been motivated to combine Maillard
with Davis because Davis recognizes that smartcard systems can be
vulnerable when “the user accesses his or her personal computer and leaves
the personal computer unattended for some duration without removing the
card or disabling the personal computer during his or her absence.” Pet. 31
(quoting Ex. 1005, 3:15–19).
Petitioner further argues that one of ordinary skill would have
“recognized that Maillard’s technique, which was described using an
example home network using [an] IEEE 1394 communication link . . . could
be susceptible to attacks that would allow devices outside of the home
network to infiltrate the home network.” Pet. 31 (citing Ex. 1003 ¶¶ 131–
135). Thus, according to Petitioner, one of ordinary skill would have “been
motivated to look for additional security procedures such as those in Davis,
and would have found it obvious[] to utilize Davis’[s] additional and
complementary authentication steps that ensured proximity of the user
device to the node by requiring the response to be received within a
predetermined time.” Id. (citing Ex. 1005, code (57), 4:2–19, 11:8–12:9,
Fig. 5; Ex. 1003 ¶¶ 132–137). Petitioner also argues that it would have been
obvious to combine Davis and Lundkvist because Davis stated that other
challenge-response protocols can be used, and Lundkvist’s challenge-
response protocol is one of a limited number of alternatives. Id. at 32 (citing
Ex. 1003 ¶¶ 138–140).
Patent Owner argues that the Petition “fails to identify a legitimate
reason that it was obvious to combine [Davis and Lundkvist] with Maillard.”
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Prelim. Resp. 48. According to Patent Owner, Maillard does not address the
problem of ensuring that the first and second devices are within a
predetermined distance “because there is no need to do so—in Maillard, the
purported first device (security module 64) and purported second device
(television or recorder) preferably are physically connected to one
another, such as by a cable or by inserting the security module smart card in
a port in the television or recorder.” Id. at 48 (emphasis omitted). Thus,
Patent Owner asserts, “[t]here is no need to determine the proximity of
devices that are already physically connected to one another.” Id. at 48–49.
As for Petitioner’s argument that one of ordinary skill would have
recognized that Maillard’s implementation using IEEE 1394 is susceptible to
attacks allowing devices outside of a home network to infiltrate the network
(Pet. 31), Patent Owner argues that Maillard only mentions IEEE 1394 in the
form of “a physical cable that connects two devices together.” Prelim. Resp.
50 (emphasis omitted). According to Patent Owner, Petitioner is
“essentially arguing that a bad actor could enter a user’s home and
physically plug an IEEE 1394 bus link into a DVD player to transmit to
another unauthorized TV.” Id. at 50. Thus, Patent Owner argues, the
distance between Maillard’s transmitting and receiving devices is irrelevant,
and adding a distance measurement would add no additional protection. Id.
We do not find that Petitioner has articulated sufficient reasoning for
combining Maillard with Davis and Lundkvist based on the present record.
First, Petitioner’s assertion that the references “all relate to providing secure
access that is conditioned on successful completion of exchanges between
two devices” (Pet. 31), fails to sufficiently explain why one would have used
a distance measurement in Maillard’s system. Second, Petitioner’s argument
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that Davis recognizes the vulnerability of smartcard systems when a user
leaves a computer unattended (Pet. 31), fails to sufficiently explain why this
problem would apply to Maillard’s system, i.e., why it would be a problem
for the user to leave the security module unattended while connected to the
DVD player.
Finally, Petitioner’s argument that one would have been motivated to
add a distance measurement to prevent an unauthorized person from
breaking into Maillard’s home network from a remote location lacks
sufficient evidentiary support. See Pet. 31–32; Ex. 1003 ¶¶ 131–135.
Petitioner does not point to any statements in Maillard or other prior art
references suggesting that this could be a problem. Instead, Petitioner relies
on the following testimony from Dr. Nielson:
135. A POSITA, however, would recognize that while
Maillard’s white-list would provide the necessary step of
identifying authorized devices, it does not provide a mechanism
for enforcing that those devices are on the “home network,” i.e.,
physically within the bounds of the home network. It was
known to a POSITA that data signals of one communication
type, such as IEEE 1394 as mentioned in Maillard, can be
vulnerable to attacks, where signals could be adapted and
retransmitted over more traditionally long distance
mechanisms, such as Ethernet. US patent 6,496,862, with a
priority date of 1998, describes a “gateway” that interconnects
ethernet and IEEE 1394 specifically for media and television.
A POSITA would readily comprehend that Maillard’s security
module for device authorization and authentication in a home
network could be exfiltrated to a remote location. Thus,
instead of a DVD player transmitting data to a local TV on a
home network, Maillard’s security module would enable the
DVD player to transmit to another unauthorized TV anywhere
in the world so long as the security module is connected in this
way. Maillard 0055.
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136. Thus, the POSITA would have been motivated to
find mechanisms for enforcing the security module and
associated devices were on the “home network.” Maillard in
view of Davis provides an obvious solution.
Ex. 1003 ¶¶ 135–136 (emphases added), cited in Pet. 31–32.
Neither Petitioner nor Dr. Nielson, however, point to any statements
in Maillard, Davis, Lundkvist, or any other reference in the record
supporting Dr. Nielson’s assertions that: (1) “[i]t was known to a POSITA
that data signals of one communication type, such as IEEE 1394 as
mentioned in Maillard, can be vulnerable to attacks, where signals could be
adapted and retransmitted over more traditionally long distance mechanisms,
such as Ethernet,” or (2) “[a] POSITA would readily comprehend that
Maillard’s security module for device authorization and authentication in a
home network could be exfiltrated to a remote location.” See Pet. 30–33,
56–61; Ex. 1003 ¶¶ 131–141. Dr. Nielson cites U.S. Patent No. 6,496,862,
but that patent is not part of the record and, in any event, is only cited for its
disclosure of “a ‘gateway’ that interconnects Ethernet and IEEE 1394
specifically for media and television,” not to show that the problem of
exfiltrating a device like Maillard’s security module would have been well
understood by a person of ordinary skill in the art. Ex. 1003 ¶ 135.
Moreover, as Patent Owner explains, Maillard discloses IEEE 1394 in
the form of “a[n] IEEE 1394 bus link” connecting the first and second
devices. Ex. 1004 ¶ 53. Patent Owner introduces evidence that an IEEE
1394 bus link is a physical cable that connects two devices together. See Ex.
2001, 94 (“First introduced as Firewire by Apple Computer in the late
1980s, the now-approved IEEE 1394 standard was designed to support high
bandwidth requirements of devices such as digital video equipment and high
performance mass storage. . . . The 1394 spec calls for six wires—two
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Patent 9,590,977 B2

22
differential pairs plus power and ground.”). We agree with Patent Owner
that, in Maillard’s system, where the devices are physically connected,
Petitioner does not sufficiently explain, based on the present record, why
adding a distance measurement between the security module and one of the
other devices would enhance security.
For the foregoing reasons, Petitioner has not demonstrated a
reasonable likelihood of prevailing in showing that claim 22 would have
been obvious over Maillard, Davis, and Lundkvist.
5. Analysis of Dependent Claims 23–25 and 29–31
Claims 23–25 and 29–31 depend from claim 22. Petitioner’s
arguments and evidence regarding these dependent claims do not
compensate for the deficiencies discussed above for claim 22. See Pet. 62–
72. Thus, for the same reasons discussed above for claim 22, Petitioner does
not demonstrate a reasonable likelihood of prevailing in showing that claims
23–25 and 29–31 would have been obvious over Maillard, Davis, and
Lundkvist.
E. Ground 2: Alleged Obviousness of Claims 26–28 Over Maillard,
Davis, Lundkvist, and HAC
Petitioner contends that claims 26–28 would have been obvious in
view of Maillard, Davis, Lundkvist, and HAC. Pet. 72–78. Claim 26
depends from claim 25, which depends from claim 22, and claims 27–28
depend from claim 26. Petitioner’s arguments and evidence regarding these
dependent claims do not compensate for the deficiencies discussed above for
claim 22. See Pet. 72–78. Thus, for the same reasons discussed above for
Ground 1, Petitioner does not demonstrate a reasonable likelihood of
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Patent 9,590,977 B2

23
prevailing in showing that claims 26–28 would have been obvious in view of
Maillard, Davis, Lundkvist, and HAC.
III. CONCLUSION
After considering the evidence and arguments presented in the current
record, we determine Petitioner has not demonstrated a reasonable
likelihood of prevailing with respect to at least one claim challenged in the
Petition. Therefore, we do not institute an inter partes review in this
proceeding.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied and no inter partes review is
instituted in this proceeding.

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Patent 9,590,977 B2

24
For PETITIONER:

Babak Tehranchi
John Schnurer
Bing Ai
Kevin Patariu
Yun Lu
PERKINS COIE LLP
Tehranchi-ptab@perkinscoie.com
Schnurer-ptab@perkinscoie.com
Ai-ptab@perkinscoie.com
Patariu-ptab@perkinscoie.com
Lu-ptab@perkinscoie.com

For PATENT OWNER:

William Meunier
Michael Renaud
Derek Constantine
MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
wameunier@mintz.com
mtrenaud@mintz.com
deconstantine@mintz.com