ZTE Corporationv.ContentGuard Holdings, Inc.

Patent Trial and Appeal Board

Jul 1, 2014

11198214 (P.T.A.B. Jul. 1, 2014)

Trials@uspto.gov Paper 57
571-272-7822 Entered: July 1, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ZTE CORPORATION AND ZTE (USA) INC.,
Petitioner,

v.

CONTENTGUARD HOLDINGS, INC.,
Patent Owner.
____________

Case IPR2013-00138
Patent 7,139,736 B2
____________

Before JAMESON LEE, MICHAEL W. KIM, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. BACKGROUND
A. Introduction
On February 11, 2013, ZTE Corporation and ZTE (USA) Inc.
(collectively, “ZTE”) filed a Petition requesting inter partes review of
claims 1–57 of U.S. Patent No. 7,139,736 B2 (“the ’736 patent”). Paper 4.
In response to a notice of defect(s) in the Petition, ZTE filed a corrected
Petition (“Pet.”) on February 15, 2013.
1
Paper 9. ContentGuard Holdings
Inc. (“ContentGuard”)
2
timely filed a Patent Owner Preliminary Response.
Paper 16. Taking into account ContentGuard’s Preliminary Response, the
Board determined that the information presented in the Petition
demonstrated that there was a reasonable likelihood that ZTE would prevail
in challenging claims 1–18, 20–38, and 40–56 as unpatentable under 35
U.S.C. §§ 102(b) and 102(e). Pursuant to 35 U.S.C. § 314, the Board
instituted this proceeding on July 1, 2013, only as to claims 1–18, 20–38,
and 40–56 of the ’736 patent. Paper 17 (“Dec.”).
After institution of trial, ContentGuard timely filed a Patent Owner
Response (Paper 35, “PO Resp.”), and did not file a motion to amend. ZTE
subsequently filed a Reply. Paper 40 (“Pet. Reply”). A consolidated oral
hearing for IPR2013-00133, IPR2013-00137, IPR2013-00138, and

1
The term “the Petition” in this final written decision refers to the corrected
petition unless indicated otherwise.
2
The mandatory notice filed pursuant to 37 C.F.R. § 42.8(b)(1) indicates
that ContentGuard Holdings, Inc. and Pendrell Corporation are the real
parties in interest. Paper 11, 2.

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IPR2013-00139, each involving the same parties, was held on February 26
and 27, 2014. The transcript of the consolidated hearing has been entered
into the record. Papers 54–56.
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a). Based on the record
before us, ZTE has not demonstrated by a preponderance of the evidence
that the claims 1–18, 20–38, and 40–56 of the ’736 patent are unpatentable.
B. Related Proceedings
ZTE indicated that the ’736 patent was asserted against it in a patent
infringement lawsuit titled ContentGuard Holdings Inc. v. ZTE Corp., No.
1:12-cv-0206-CMH-TCB, filed in the United States District Court for the
Eastern District of Virginia on February 27, 2012. Pet. 1. According to
ZTE, this patent infringement lawsuit was transferred to the United States
District Court for the Southern District of California on May 21, 2012. Id.
ContentGuard does not dispute that it asserted the ’736 patent against ZTE.
ZTE also filed five other petitions seeking inter partes review of the
following patents owned by ContentGuard: U.S. Patent No. 7,523,072
(IPR2013-00133); U.S. Patent No. 7,225,160 (IPR2013-00134); U.S.
Patent No. 7,359,884 (IPR2013-00136); U.S. Patent No. 6,963,859
(IPR2013-00137); and U.S. Patent No. 7,269,576 (IPR2013-00139). Id.
C. The Invention of the ’736 Patent
The invention disclosed in the ’736 patent generally relates to
distributing and enforcing usage rights for digital works. Ex. 1001, 1:20–21.
A digital work refers to any work that has been reduced to a digital
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representation, including any audio, video, text, or multimedia work, and
any accompanying interpreter, e.g., software, which may be required to
recreate or render the content of the digital work. Ex. 1001, 6:45–49. Usage
rights refer to rights granted to a recipient of a digital work that define the
manner in which a digital work may be used and distributed. Ex. 1001, 4:9–
12; 6:51–55. According to the ’736 patent, objectives of the disclosed
invention include the following: (1) providing the owner of a digital work
the flexibility to distribute the digital work as desired; and (2) a distribution
system that transports a means for billing with the digital work. Ex. 1001,
3:14–16, 65–67.
The ’736 patent discloses permanently attaching usage rights to the
digital work. Ex. 1001, 6:59–60. Copies of the digital work also will have
the usage rights attached thereto. Ex. 1001, 6:60–61. Therefore, any usage
rights and associated fees assigned by the creator and subsequent distributor
of the digital work always will remain with the digital work. Ex. 1001,
6:61–64. The ’736 patent discloses that repositories enforce the usage rights
of digital works. Ex. 1001, 4:23–24; 6:65–66. In particular, repositories
store digital works, control access to digital works, bill for access to digital
works, and maintain the security and integrity of the digital works stored
therein. Ex. 1001, 6:66–7:2.
Figure 1 of the ’736 patent, reproduced below, illustrates the basic
operations of the disclosed invention. Ex. 1001, 4:48–50; 7:14–16.
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As shown in step 101 of Figure 1 of the ’736 patent, a creator creates
a digital work. Ex. 1001, 7:16–17. At step 102, the creator determines the
appropriate usage rights and fees, attaches them to the digital work, and
stores the digital work with the associated usage rights and fees in
repository 1. Ex. 1001, 7:17–19. At step 103, repository 1 receives a
request to access the digital work from repository 2. Ex. 1001, 7:21–25.
Such a request, or session initiation, includes steps that help ensure that
repository 1 and repository 2 are trustworthy. Ex. 1001, 7:25–27. At step
104, repository 2 requests access to the digital work stored in repository 1
for a stated purpose, e.g., to print the digital work or obtain a copy of the
digital work. Ex. 1001, 7:28–31. At step 105, repository 1 checks the usage
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rights associated with the digital work stored therein to determine if access
to the digital work may be granted. Ex. 1001, 7:32–35. At step 106, if
access is denied, repository 1 terminates the session with repository 2 by
transmitting an error message. Ex. 1001, 7:39–40. At step 107, if access is
granted, repository 1 transmits the digital work to repository 2. Ex. 1001,
7:40–42. At step 108, both repository 1 and 2 generate billing information
prior to transmitting the billing information to a credit server. Ex. 1001,
7:42–45. The use of both repositories 1 and 2 for billing prevents attempts
to circumvent the billing process. Ex. 1001, 7:45–46.
Figure 2 of the ’736 patent, reproduced below, illustrates the various
types of repositories and the transaction flow between them. Ex. 1001,
4:51–54; 7:47–48.

As shown in Figure 2 of the ’736 patent, repository 201 represents the
general instance of a repository having the following two modes of
operation: (1) a server mode; and (2) a requester mode. Ex. 1001, 7:52–55.
When repository 201 is in server mode, it receives and processes access
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requests for digital works. Ex. 1001, 7:55–57. When repository 201 is in
requester mode, it initiates requests to access digital works. Ex. 1001, 7:57–
58.
During the course of operation, repository 201 may communicate with
a plurality of other repositories, including rendering repository 203.
Ex. 1001, 7:60–65. Communication with rendering repository 203 occurs in
connection with rendering a digital work. Ex. 1001, 8:8–9. According to
the ’736 patent, rendering repository 203 is coupled to a rendering device,
e.g., a printer device, to comprise a rendering system. Ex. 1001, 8:9–12.
Figure 12 of the ’736 patent, reproduced below, illustrates the
hardware components of a repository. Ex. 1001, 5:13–15, 14:12–14.

As shown in Figure 12 of the ’736 patent, the repository comprises
processing means 1200, storage system 1207, clock 1205, and external
interface 1206. Ex. 1001, 14:14–16. Processing means 1200 comprises
processor element 1201 and processing memory 1202. Ex. 1001, 14:16–18.
Processor element 1201 serves as a controller that performs the following
functions: (1) processes repository transactions; (2) processes usage rights
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transactions; (3) decrypts both digital works and transaction messages; and
(4) decompresses both digital works and transaction messages. Ex. 1001,
14:18–23. Processor memory 1202 typically comprises Read Only
Memories and Random Access Memories that store software instructions
used by processor element 1201 to perform the aforementioned functions.
Ex. 1001, 14:25–30.
The ’736 patent further discloses that storage system 1207 comprises
descriptor storage 1203 and content storage 1204. Ex. 1001, 14:31–32.
Descriptor storage 1203 stores the description tree corresponding to the
digital work, and content storage 1204 stores the associated content.
Ex. 1001, 14:32–35. Clock 1205 provides time stamps for various time
based conditions for usage rights, or for metering usage fees, which may be
associated with the digital work. Ex. 1001, 14:42–44. Clock 1205 contains
an uninterruptable power supply, e.g., a battery, in order to maintain the
integrity of the time stamps. Ex. 1001, 14:44–46. External interface means
1206 provides a signal connection to other repositories and to a credit server.
Ex. 1001, 14:46–48. External interface means 1206 also may provide
network connectivity. Ex. 1001, 14:52–53.
D. Illustrative Claim
Claims 1, 20, and 40 are independent claims. Claims 2–18 depend
directly from independent claim 1, claims 21–38 depend directly or
indirectly from independent claim 20, and claims 41–56 depend directly or
indirectly from independent claim 40. Independent claim 1 is illustrative of
the disclosed invention and is reproduced below:
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1. A rendering system adapted for use in a distributed
system for managing use of content, the rendering system being
operative to rendering content in accordance with usage rights
associated with the content, the rendering system comprising:
a rendering device configured to render the content; and
a distributed repository coupled to the rendering device
and including a first mode of operation and a second mode of
operation;
wherein the first mode of operation is operative to
receive content from another distributed repository and enforce
usage rights associated with the content and permit the
rendering device to render the content in accordance with the
manner of use specified by the usage rights, and
the second mode of operation is operative to request the
rendering by the rendering device of the content received from
said another distributed repository; and
the distributed repository is operative to permit the
content to be rendered only if a manner of use specified in the
request corresponds to a manner of use specified in the usage
rights.

Ex. 1001, 52:59–53:12 (emphasis added).
E. Prior Art Relied Upon
ZTE relies upon the following prior art references:
Leroux US 5,588,146 Dec. 24, 1996 Ex. 1011
(filed Oct. 21, 1993)

Comerford EP 0268139 A2 May 25, 1988 Ex. 1012
(hereinafter “EP ’139”)

F. Grounds of Unpatentability
We instituted this proceeding based on the grounds of unpatentability
set forth in the table below.
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Claims Basis Reference
1–18, 20–38, and 40–56 § 102(e) Leroux
3

1–18, 20–38, and 40–56 § 102(b) EP ’139

II. ANALYSIS
ZTE has to prove unpatentability by a preponderance of the evidence.
35 U.S.C. § 316(e). In patent law, “the name of the game is the claim.” In
re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Therefore, we begin
our analysis with claim construction, and then follow with our analysis
regarding whether the prior art references anticipate claims 1–18, 20–38, and
40–56.
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable interpretation in light of
the specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012). Under the broadest reasonable interpretation standard, claim terms
are given their ordinary and customary meaning as would be understood by

3
The ’736 patent claims priority to application No. 08/344,760, filed
Nov. 23, 1994. Leroux was published on December 24, 1996, and was filed
on October 21, 1993. Accordingly, even though the Petition identifies
Leroux as prior art to the ’736 patent under 35 U.S.C. § 102(b) (Pet. 16),
Leroux is actually only prior art to the ’736 patent under 35 U.S.C. § 102(e).
Accord Pet. 15 (confirming that Leroux only qualifies as prior art to the
’736 patent under 35 U.S.C. § 102(e)).
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one of ordinary skill in the art in the context of the disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, if
an inventor acts as his or her own lexicographer, the definition must be set
forth in the specification with reasonable clarity, deliberateness,
and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
1243, 1249 (Fed. Cir. 1998).
An extraneous limitation should not be read into the claims from the
specification. See e.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum
Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is one
where its presence in a claim is unnecessary to make sense of the claim.
See, e.g., In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994); Renishaw
PLC, 158 F.3d at 1249. The construction that stays true to the claim
language and most naturally aligns with the inventor’s description is likely
the correct interpretation. See Renishaw PLC, 158 F.3d at 1250. The
challenge is to interpret claims without unnecessarily importing limitations
from the specification into the claims. See E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
“Repository” (Claims 1, 20, and 40)
In its Petition, ZTE contended that the specification of the ’736 patent
never mentions nor explains the claim term “repository,” and therefore, ZTE
did not provide an explicit construction for that claim term. Pet. 19, n.7. In
its Patent Owner Preliminary Response, ContentGuard contended that
“repository” should be construed as “a trusted system for supporting usage
rights.” Prelim. Resp. 17. ContentGuard then cited to several portions of
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the specification of the ’736 patent that allegedly support its proposed claim
construction. Id. at 17–20 (citing Ex. 1001, 4:23–24, 6:65–7:2, 12:45–54,
13:51–53, 14:4–9, and 52:18–23). When instituting trial, we construed
“repository” as “a trusted system which maintains physical, communications
and behavioral integrity, and supports usage rights.” Dec. 13. For reasons
discussed below, we adhere to the same interpretation for this final written
decision.
The specification provides a glossary that explicitly sets forth a
definition for “repository.” For convenience, that glossary definition is
reproduced below:
Conceptually a set of functional specifications defining core
functionality in the support of usage rights. A repository is a
trusted system in that it maintains physical, communications
and behavioral integrity.
Ex. 1001, 52:20–23 (emphasis added). By setting forth the term in a
glossary and using the verb “is” following “repository” in the second
sentence, the specification sets forth an explicit definition of “repository” as
“a trusted system in that it maintains physical, communications and
behavioral integrity.” The first sentence also is relevant to the definition of
“repository” because it specifies that the repository supports usage rights.
Accordingly, we construe “repository” as “a trusted system which maintains
physical, communications and behavioral integrity, and supports usage
rights.”
However, our analysis does not end here. In order to understand “a
trusted system,” it is necessary to construe “physical integrity,”
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“communications integrity,” and “behavioral integrity.” These terms are
described in a section of the specification labeled “Repositories.” Ex. 1001,
12:44–15:22. For “physical integrity,” the specification describes the
following:
Physical integrity refers to the integrity of the physical devices
themselves. Physical integrity applies both to the repositories
and to the protected digital works. Thus, the higher security
classes of repositories themselves may have sensors that detect
when tampering is attempted on their secure cases. In addition
to protection of the repository itself, the repository design
protects access to the content of digital works. In contrast with
the design of conventional magnetic and optical devices-such as
floppy disks, CD-ROMs, and videotapes-repositories never
allow non-trusted systems to access the works directly. A
maker of generic computer systems cannot guarantee that their
platform will not be used to make unauthorized copies. The
manufacturer provides generic capabilities for reading and
writing information, and the general nature of the functionality
of the general computing device depends on it. Thus, a copy
program can copy arbitrary data. This copying issue is not
limited to general purpose computers. It also arises for the
unauthorized duplication of entertainment “software” such as
video and audio recordings by magnetic recorders. Again, the
functionality of the recorders depends on their ability to copy
and they have no means to check whether a copy is authorized.
In contrast, repositories prevent access to the raw data by
general devices and can test explicit rights and conditions
before copying or otherwise granting access. Information is
only accessed by protocol between trusted repositories.
Ex. 1001, 12:55–13:14 (emphases added). The description reproduced
above makes use of permissive terms such as “may” and “can,” and, thus, do
not reflect or indicate a required limitation for “physical integrity.” The
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specification also appears to use the terms or phrases in each of the
following three groups interchangeably:
1. data, content, digital work, information;
2. non-trusted system, general device; and
3. “never allow access” and “prevent access.”
When referring to the relationship between the repository and data, the
specification uses absolute terms such as “never” and “only.” In light of the
foregoing, we construe “physical integrity” as “preventing access to
information by a non-trusted system.”
For “communications integrity,” the specification describes the
following:
Communications integrity refers to the integrity of the
communications channels between repositories. Roughly
speaking, communications integrity means that repositories
cannot be easily fooled by “telling them lies.” Integrity in this
case refers to the property that repositories will only
communicate with other devices that are able to present proof
that they are certified repositories, and furthermore, that the
repositories monitor the communications to detect “impostors”
and malicious or accidental interference. Thus the security
measures involving encryption, exchange of digital certificates,
and nonces described below are all security measures aimed at
reliable communication in a world known to contain active
adversaries.
Ex. 1001, 13:15–27 (emphases added). We construe “communications
integrity” as “only communicates with other devices that are able to present
proof that they are trusted systems, e.g., by using security measures such as
encryption, exchange of digital certificates, and nonces.” The Encyclopedia
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of Cryptography defines “nonce” as “[a] number used in a cryptographic
protocol to indicate the unique character of a message.” ENCYCLOPEDIA OF
CRYPTOGRAPHY 197 (1997) (Ex. 3001).
For “behavioral integrity,” the specification describes the following:
Behavioral integrity refers to the integrity in what repositories
do. What repositories do is determined by the software that
they execute. The integrity of the software is generally assured
only by knowledge of its source. Restated, a user will trust
software purchased at a reputable computer store but not trust
software obtained off a random (insecure) server on a network.
Behavioral integrity is maintained by requiring that repository
software be certified and be distributed with proof of such
certification, i.e. a digital certificate. The purpose of the
certificate is to authenticate that the software has been tested by
an authorized organization, which attests that the software does
what it is supposed to do and that it does not compromise the
behavioral integrity of a repository. If the digital certificate
cannot be found in the digital work or the master repository
which generated the certificate is not known to the repository
receiving the software, then the software cannot be installed.
Ex. 1001, 13:28–44 (emphases added). We construe “behavioral integrity”
in the context of a repository as “requiring software to include a digital
certificate in order to be installed in the repository.”
We acknowledge that the record is not without evidence contrary to
our claim interpretation. The nature of claim interpretation is to come to the
appropriate conclusion in light of all of the evidence. All of the evidence
does not have to point uniformly in a single direction.
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For instance, Table 2 in the specification indicates ten different levels
of security for repositories. The lowest level, i.e., level “0,” is described as
follows:
Open system. Document transmission is unencrypted. No
digital certificate is required for identification. The security of
the system depends mostly on user honesty, since only modest
knowledge may be needed to circumvent the security measures.
The repository has no provisions for preventing unauthorized
programs from running and accessing or copying files. The
system does not prevent the use of removable storage and does
not encrypt stored files.
Ex. 1001, 15:54–60. Thus, according to Table 2, repositories are not all
trusted systems. Level “0” security means having an open system lacking in
physical, communications, and behavioral integrity, and without support for
managing usage rights. That is directly contrary to the meaning of
“repository” as defined in the glossary. For reasons discussed below, we
adhere to the definition provided in the glossary. The contrary evidence
based on level “0” security shown in Table 2 is insufficient to outweigh the
rest of the evidence including, in particular, the explicit definition provided
in the glossary. We make our determination based on the totality of the
evidence.
As noted above, the disclosed invention is about distribution and
usage rights enforcement of digital works. The problems described in the
background portion of the specification concern unauthorized and
unaccounted distribution or usage of electronically published materials. See
generally Ex. 1001, 1:25–3:3. The ’736 patent states that it solves
preexisting problems by both permanently attaching usage rights to digital
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works and placing elements in repositories that enforce those usage rights.
Ex. 1001, 6:59–7:2.
Here, the definition set forth in the glossary for “repository” is
consistent fully with the description of the acknowledged prior art, and the
objective or goal to be achieved by the invention of the ’736 patent. The
specification also contains detailed preferred embodiments utilizing
repositories, which are trusted systems to provide usage control for digital
works. Ex. 1001, 7:48–8:18, 8:36–37, 13:62–14:3, 14:10–12, 14:64–15:9,
18:29–31, 27:2–29:62, 41:60–42:61.
The bulk of the disclosure consistently is directed to repositories,
which are trusted systems for providing usage control for digital works. For
example, the specification states:
The enforcement elements of the present invention are
embodied in repositories. Among other things, repositories are
used to store digital works, control access to digital works, bill
for access to digital works and maintain the security and
integrity of the system.
Ex. 1001, 6:65–7:2 (emphasis added). Other references to “repository” in
the specification recite necessary features of repositories and also support
the definition in the glossary that a repository is a trusted system. For
example, the specification states:
The core repository services 1302 comprise a set of functions
required by each and every repository. The core repository
services 1302 include the session initiation transactions which
are defined in greater detail below. This set of services also
includes a generic ticket agent which is used to “punch” a
digital ticket and a generic authorization server for processing
authorization specifications.
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Ex. 1001, 14:64–15:3 (emphasis added). In another example, the
specification discloses that “[a]s a prerequisite to operation, a repository will
require possession of an identification certificate,” and that “identification
certificates 1306 are required to enable the use of the repository.” Ex. 1001,
13:62–63, 15:9–10 (emphasis added). In yet another example, the
specification states “[p]rovisions for security and privacy are part of the
requirements for specifying and implementing repositories and thus form the
need for various transactions.” Ex. 1001, 26:65–67 (emphasis added).
Indeed, by using words such as “require” and “requirements,” these
examples amply support the definition provided in the glossary that a
repository is a trusted system.
In summary, even applying the rule of broadest reasonable
interpretation consistent with the specification, the weight of the evidence
supports the definition provided in the glossary. We regard as significant
that the definition states in an unequivocal manner that a repository “is a
trusted system.”
ContentGuard’s Contentions
According to ContentGuard, our claim interpretation of “repository”
is incorrect because it is too broad in one respect and too narrow in another.
PO Resp. 8–11. For the reasons discussed below, however, the specification
of the ’736 patent does not support adequately either contention. As a
consequence, we are not persuaded by ContentGuard’s contentions.
We first address ContentGuard’s contention that our construction is
too broad, and then its contention that our construction is too narrow.
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1.
ContentGuard contends that our claim construction regarding
“behavioral integrity” as “requiring software to include a digital certificate
in order to be installed in the repository” is “excessively broad” and should
be limited to software that makes the repository operative—otherwise
known as “repository software.” Id. at 8. For convenience, ContentGuard’s
argument is reproduced below:
[The Board’s construction] is too broad because it is not
restricted to what the ’736 patent refers to as “repository
software”—that is software that makes the repository operative.
(See Ex. 1001, 13:28–44.) According to the ’736 patent
specification, “[b]ehavioral integrity refers to the integrity in
what repositories do.” (Ex. 1001, 13:28–29.) What repositories
do, in turn, “is determined by the software that they execute.”
(Id., 13:29–30.)
But not all software relates “to the integrity in what
repositories do.” (Ex. 1001, 13:28–29) Repositories, along
with usage rights, are used to manage the use and distribution
of digital content. (See, e.g., id., 52:20–21, 6:28–29, 14:64–
15:9.) For example, part of a repository’s function is to permit
the rendering of content in accordance with the usage rights
associated with the content. (E.g., id., cl. 1.) But content itself
does not supply that function to a repository. (Ex. 2013,
[Declaration of Dr. Michael T. Goodrich] ¶¶ 40–41.) Rather,
repository software implements the repository functions that are
used to manage the use and distribution of the content. (Ex.
1001, 14:4–9, 27–30.) Thus, since “[b]ehavioral integrity refers
to the integrity in what repositories do,” the relevant software is
not any “software . . . to be installed in the repository,” but the
software the repository uses to manage the use and distribution
of content. (Ex. 2013 ¶¶ 40–41.)
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PO Resp.8–9.
With respect to what repositories do, ContentGuard’s argument
overlooks and fails to discuss the portions of the specification which indicate
that repositories, themselves, also can be rendering devices that run and
execute the software type digital works, the usage rights of which they
control. For instance, the ’736 patent states the following with regard to
software capable of being run on a repository:
An Install transaction is a request to install a digital work as
runnable software on a repository. In a typical case, the
requester repository is a rendering repository and the software
would be a new kind or new version of a player.
Ex. 1001, 42:46–49 (emphases added). This disclosure in the specification
does not support ContentGuard’s contention that a repository merely
manages the use and distribution of digital content, such as software, and
does not perform, run, or execute that digital content. The disclosure quoted
above refers to a digital work that is “runnable software on a repository,”
and states that, in a typical case, the repository asking for the digital work is
itself a rendering repository that identifies the software digital work as
application software—not as operating software. As such, the specification
conveys information contrary to ContentGuard’s contention. ContentGuard
does not explain the disclosure identified above, nor does it point to any
testimony of its expert witness that addresses such disclosure in light of its
“excessively broad” contention.
Because a repository, itself, may run and execute software, the usage
and distribution of which is managed by the repository, we are not persuaded
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that the reference to “repository software” in the portion of the specification
discussing “behavioral integrity” (Ex. 1001, 13:28–44) is restricted to
software that only manages usage rights. Indeed, in the context of installing
software identified as “a new kind or new version of a player,” which does
not control usage rights, the specification discusses extracting a copy of the
digital certificate for that software (Ex. 1001, 42:58–61), in the same manner
that the specification describes requiring a digital certificate in the digital
work to ensure behavioral integrity of the repository (Ex. 1001, 13:34–37).
Moreover, some repositories are rendering repositories. Ex. 1001, 42:46–49.
“Repository software,” as used in the specification, is broad enough to cover
application software, such as the “player” referenced in the specification
(id.), as well as what ContentGuard refers to as “operating software,” which
enables the repository to regulate usage rights.
We do not credit the testimony of ContentGuard’s expert, Dr. Michael
T. Goodrich, in paragraphs 40 and 41 of his Declaration (Ex. 2013). In
those paragraphs, Dr. Goodrich attests that, in his opinion, a person of
ordinary skill in the art in 1994 would have understood that the term
“repository software” in the ’736 patent identifies and refers to the operating
software of the repository, and not the software digital works the usage
rights of which are controlled by the repository. Dr. Goodrich’s testimony is
unpersuasive because it does not account for the disclosure of the
specification, discussed above, which conveys that some repositories are
rendering depositories that run and execute the software digital works the
rights of which they control, such as a new version of a “player.”
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2.
ContentGuard contends that our claim construction regarding
“behavioral integrity” as “requiring software to include a digital certificate
in order to be installed in the repository” is “excessively narrow” because it
unnecessarily requires the inclusion of a “digital certificate” to maintain
behavioral integrity. PO Resp. 9–11. According to ContentGuard, in order
to maintain behavioral integrity, it is necessary only that the broader purpose
of a repository doing what it is supposed to do is satisfied. Id. at 10.
ContentGuard’s contention that our construction is too narrow is
inconsequential to the outcome of this proceeding because a broader
interpretation of “behavioral integrity” would not render inapplicable any
teaching of the prior art which was applied under the narrower construction.
For convenience, ContentGuard’s argument is reproduced below:
The Board’s construction is also too narrow because it
requires “a digital certificate.” After explaining that
“[b]ehavioral integrity refers to the integrity in what
repositories do” and that “[w]hat repositories do is determined
by the software that they execute,” the ’736 patent says that
“[t]he integrity of the software is generally assured only by
knowledge of its source.” (Ex. 1001, 13:30–31.) Although the
specification does say that “behavioral integrity is maintained
by requiring that repository software be certified and be
distributed with proof of such certification, i.e., a digital
certificate,” the specification continues by explaining the
broader purpose of the certificate. (Id., 13:34–37.) “The
purpose of the certificate is to authenticate that the software has
been tested by an authorized organization, which attests that
the software does what it is supposed to do and that it does not
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compromise the behavioral integrity of a repository.” (Id.,
13:37–41 (emphasis added).[] So, as long as there is some
assurance that “the software does what it is supposed to do,”
whether by source certification or otherwise, behavioral
integrity can be maintained. (Ex. 2013 ¶¶ 38–39.)
PO Resp. 9–10 (emphasis in original).
The breadth argued by ContentGuard is on the extreme end of a
spectrum for the meaning of “repository”—whatever ensures a repository
does what it is supposed to do. ContentGuard would like to generalize the
feature into a generic goal or purpose, entirely removed from any specific
means for its implementation. There are several obstacles precluding such
an interpretation.
First, the restrictive language in the specification does not permit such
an expansive construction. Although it is true that the broadest reasonable
interpretation standard applies for claim interpretation, the construction must
be reasonable in light of the specification. In that connection, the
specification states that “[b]ehavioral integrity is maintained by requiring
that repository software be certified and be distributed with proof of such
certification, i.e., a digital certificate.” Ex. 1001, 13:34–37 (emphasis
added).
Second, ContentGuard does not point to any other means described in
the specification for maintaining behavioral integrity of a repository. The
sole disclosure in that regard, as identified by ContentGuard, relates to the
use of digital certificates. There is no basis to assume, on this record, that
digital certificates are representative of all ways for ensuring that a digital
work is authentic. Even ContentGuard does not make that assertion. Thus,
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the scope of disclosure is not commensurate with the breadth for the
construction of “repository” desired by ContentGuard.
Third, the general assertion that a repository “does what it is supposed
to do” is not accompanied by any well-defined or otherwise recognized
standard for making an objective determination in that regard. If we
accepted ContentGuard’s proposed claim construction, the scope of the
claims would be uncertain and indeterminable.
We do not credit the testimony of ContentGuard’s expert,
Dr. Goodrich, that “a person of ordinary skill in the art of 1994 would [have
understood] that the ’736 patent specification refers to the use of digital
certificates as only an exemplary method of preserving the behavioral
integrity of a repository.” Ex. 2013 ¶ 39. This testimony is unexplained and
conclusory—it does not account for the various factors we have considered
and discussed above.
B. Anticipation by Leroux—Claims 1–18, 20–38, and 40–56
ZTE contends that claims 1–18, 20–38, and 40–56 are anticipated
under § 102(e) by Leroux. Pet. 16–24. In support of that alleged ground of
unpatentability, ZTE provides explanations as to how Leroux describes each
claim limitation. Id. ZTE also submits the Declaration of Dr. Vijay K.
Madisetti (Ex. 1005 ¶¶ 103–107) to support its positions. Upon reviewing
ZTE’s Petition and supporting evidence, as well as ContentGuard’s Patent
Owner Response and supporting evidence, we determine that ZTE has not
demonstrated by a preponderance of the evidence that claims 1–18, 20–38,
and 40–56 are anticipated by Leroux.
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We begin our analysis with the principles of law that generally apply
to a ground of unpatentability based on anticipation, followed by a brief
discussion of Leroux, and then we turn to the arguments presented by both
ZTE and ContentGuard that are directed to whether Leroux describes the
following claim limitations recited in independent claims 1, 20, and 40: (1)
a “distributed repository” that maintains “behavioral integrity”; and (2)
“another distributed repository” that maintains “behavioral integrity.”
1. Principles of Law
To establish anticipation under § 102(e), “all of the elements and
limitations of the claim must be shown in a single prior reference, arranged
as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
1383 (Fed. Cir. 2001). “A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co.
of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We analyze the ground of
unpatentability based on anticipation by Leroux with the principles stated
above in mind.
2. Leroux
Leroux discloses a method of acquiring software programs by
microcomputers. Ex. 1011, 1:8–9. Figure 1 of Leroux, reproduced below,
illustrates a data processing system. Ex. 1011, 3:42–43.
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As shown in Figure 1, Leroux discloses database service center 1 in
which there are stored application software programs 10, microcomputer 2
connected to the service center by interface 3, and removable electronic
memory carrier 4. Ex. 1011, 3:42–46. Memory carrier 4 includes interface
40 for connecting memory 41 to drive 24 of microcomputer 2. Ex. 1011,
3:53–55. Microcomputer 2 is fitted with corresponding drives to read
memory carrier 4. Ex. 1011, 4:60–64. Memory 41 may comprise
programmed security circuitry 410, which monitors access to memory 41
and manages external access to memory carrier 4. Ex. 1011, 4:64–5:3.
Leroux further discloses that communication is set up between
microcomputer 2 and data base service center 1 in order to acquire
application software programs 10. Ex. 1011, 3:61–66. After a prospective
user chooses which application software programs 10 that he/she wishes to
acquire, database service center 1 will check the right of access to software
programs 10 by interrogating carrier 4 through microcomputer 2. Ex. 1011,
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4:1–5. The check is made by using security methods, such as identification
and authentication procedures using enciphering and deciphering algorithms.
Ex. 1011, 4:5–9. If the check is positive, database service center 1 remotely
loads the selected application software programs 10 in the internal memory
of microcomputer 2. Ex. 1011, 4:13–16.
3. “Distributed Repository” (Claims 1, 20, and 40)
Independent claims 1, 20, and 40 each require a “distributed
repository.” Ex. 1001, 52:65–67; 54:4–6; 55:23–25. As discussed above, a
“repository” is construed as “a trusted system which maintains physical,
communications and behavioral integrity, and supports usage rights.”
“Physical integrity” is construed as “preventing access to information by a
non-trusted system.” “Communications integrity” is construed as “only
communicates with other devices that are able to present proof that they are
trusted systems, for example, by using security measures such as encryption,
exchange of digital certificates, and nonces.” “Behavioral integrity” is
construed as “requiring software to include a digital certificate in order to be
installed in the repository.” In its Petition, ZTE takes the position that the
combination of Leroux’s microcomputer 2 and removable carrier 4
constitutes the claimed “distributed repository.” Pet. 17, 19, 23. In our
analysis below, we determine whether the combination of Leroux’s
microcomputer 2 and removable carrier 4 constitutes the claimed
“distributed repository” that maintains “behavioral integrity.”
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a. Behavioral Integrity
ContentGuard contends that the combination of Leroux’s
microcomputer 2 and removable carrier 4 does not amount to the claimed
“distributed repository” because such a combination does not maintain
“behavioral integrity.” PO Resp. 12–16. That contention has three layers of
complexity.
1.
The first relates to ContentGuard’s contention that “behavioral
integrity” of a repository is directed to, and concerns only, the operating
software of the repository, i.e., the software that enables the repository to
control the usage rights and distribution of digital works, and not the
software digital works managed by the repository, itself. PO Resp. 12–13.
In our claim construction analysis, we already found that contention of
ContentGuard unpersuasive.
2.
The second relates to ContentGuard’s contention that “behavioral
integrity” of a repository does not require the presence and use of a digital
certificate to authenticate the software digital work being installed in a
repository. PO Resp. 13–15. Instead, ContentGuard argues that “behavioral
integrity” of a repository merely requires checking that the software loaded
onto the repository is authentic or unaltered prior to rendering the software.
Id. at 14–15. In our claim construction analysis, we also found that
contention of ContentGuard unpersuasive.
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3.
The third relates to ContentGuard’s contention that interrogating the
right of access disclosed in Leroux, which is associated with a particular
software program stored on database service center 1, prior to installing the
software on microcomputer 2, does not require a digital certificate.
PO Resp. 15–16. According to ZTE, Leroux’s disclosure of interrogating
the right of access includes the authentication of a “digital certificate”
required for “behavioral integrity.” Pet. Reply 1–3. Taking into account the
evidence presented by both parties, we determine that ZTE has not
demonstrated by a preponderance of the evidence that, in the disclosed
system of Leroux, the identification and authentication procedures used to
interrogate the right of access associated with a software program
necessarily includes a digital certificate that authenticates the source of the
software.
In its Reply, ZTE contends that the identification and authentication
procedures disclosed in Leroux ensure that software digital works stored on
database service center 1 are authorized before such software is loaded
remotely onto microcomputer 2. Pet. Reply 2. For instance, ZTE argues
that Leroux discloses that removable carrier 4 authorizes database service
center 1 to load remotely software digital works onto microcomputer 2
following a successful safety check that includes identification and
authentication procedures using enciphering and deciphering algorithms. Id.
(citing Ex. 1011, 4:1–16; see Ex. 1025 ¶¶ 10, 11). Based on that disclosure,
ZTE argues that one with ordinary skill in the art would have recognized that
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the authorization of the software includes an authentication of a “digital
certification” corresponding to the software on database service center 1. Id.
As an initial matter, we note that the ground of unpatentability is
based on anticipation by Leroux—not obviousness over Leroux. As such,
the issue is not merely whether one with ordinary skill in the art would have
recognized that Leroux’s identification and authentication procedures used
to interrogate the right of access include using a digital certificate to
authenticate the source of the software, but whether those procedures
necessarily require a digital certificate.
To establish inherency, the extrinsic evidence ‘must
make clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill. Inherency,
however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from
a given set of circumstances is not sufficient.’

In re Oelrich, 666 F.2d 578, 581–82 (CCPA 1981). Although Leroux’s
identification and authentication procedures may include using a digital
certificate to authenticate the source of the software, mere probabilities or
possibilities fall short of demonstrating that those procedures necessarily
require using a digital certificate. In our discussion of the construction of
“behavioral integrity,” we were not persuaded by ContentGuard’s contention
that a digital certificate is not required, or that anything which accomplishes
a similar objective in substantially the same way is satisfactory.
Insofar as “assurance” means a specifically expressed indication, we
credit the testimony of ContentGuard’s expert, Dr. Goodrich, that “a person
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of ordinary skill in the art [in 1994] would [have understood] a digital
certificate to be an assurance that downloaded software comes from a
reputable source, including a measure of tamper resistance.” Ex. 2013 ¶ 39
(citing the definition of “digital certificate” from the MICROSOFT
COMPUTER DICTIONARY (4th ed. 1999)). An unexpressed and subjective
thought, on the other hand does not qualify. As discussed above, the
identification and authentication procedures disclosed in Leroux that are
used to interrogate the right of access do not include necessarily the
requirements of that definition of “digital certificate.”
4. “Another Distributed Repository” (Claim 1)
Independent claim 1 recites “another distributed repository.”
Ex. 1001, 53:6–8. As discussed previously, a “repository” is construed as “a
trusted system which maintains physical, communications and behavioral
integrity, and supports usage rights.” “Physical integrity” is construed as
“preventing access to information by a non-trusted system.”
“Communications integrity” is construed as “only communicates with other
devices that are able to present proof that they are trusted systems, for
example, by using security measures such as encryption, exchange of digital
certificates, and nonces.” “Behavioral integrity” is construed as “requiring
software to include a digital certificate in order to be installed in the
repository.” In its Petition, ZTE takes the position that the Leroux’s
database service center 1 constitutes the claimed “another distributed
repository.” Pet. 17, 19. In our analysis below, we determine whether
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Leroux’s database service center 1 constitutes the claimed “another
distributed repository” that maintains “behavioral integrity.”
a. “Behavioral Integrity”
ContentGuard contends that Leroux does not disclose the recited
“another distributed repository” because database service center 1 does not
maintain “behavioral integrity.” PO Resp. 17–18. For convenience,
ContentGuard argument is reproduced below:
Leroux does not discuss the software responsible for
implementing the functions of the service center, nor the
manner in which software is installed on the service center.
Therefore, Leroux does not disclose that the service center
possesses behavioral integrity. (Ex. 2013 ¶ 51.) Accordingly,
Leroux does not disclose that the service center has the trust
properties necessary to constitute the “another distributed
repository” required by claim 1.
PO Resp. 18. ZTE disagrees, and contends that:
CG’s assertion ignores relevant disclosures of Leroux, for
example, (1) the software uploaded to the service center 1 is
known to be authentic software from a trusted system (e.g.,
vendor) (Ex. 1011, 2:43–48), and (2) the software loaded onto
the service center 1 in Leroux includes a “digital certificate” so
that the software may later be identified by the
microcomputer 2 when initiating the identification and
authentication procedures to remote-load the software onto the
microcomputer 2. (Ex. 1011, 4:1–12; See also Ex. 1025 ¶ 25).
Pet. Reply 5. We are persuaded by ContentGuard’s argument that database
service center 1 does not maintain “behavioral integrity” and, therefore, does
not amount to the claimed “another distributed repository.”
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Leroux discloses uploading software programs into database service
center 1. Ex. 1011, 1:62–67, 2:43–44. In particular, Leroux also discloses
that a right of access, which ZTE asserts amounts to a digital certificate, is
required to load remotely software from database service center 1 to the
internal memory of microcomputer 2. Ex. 1011, 2:46–48, 3:19–22, 4:1–16.
The aforementioned disclosure in Leroux, however, does not indicate that
Leroux’s database service center 1 maintains “behavioral integrity.” As an
initial matter, we are not persuaded that the “uploading” of software to
Leroux’s database service center 1 properly accounts for “installing” the
software required for “behavioral integrity.” Moreover, even if “uploading”
could be considered “installing,” Leroux is silent as to whether such
“uploading” of software to database service center 1 requires the software to
include a digital certificate that authenticates its source, as required for
“behavioral integrity.”
ZTE relies upon the Declaration of Dr. Madisetti to support its
position. Specifically, Dr. Madisetti asserts the following:
As for behavioral integrity, it is my opinion that the service
center 1 requires software to include a digital certificate in order
to be installed on the service center 1, in accordance with the
Board’s construction. In my opinion, software installed on the
service center 1 includes a digital certificate identifying the
vendor source of the software because the vendor is responsible
for installing the software onto the service center 1. (See supra
¶ 22). Also, in my opinion software installed on the service
center 1 includes a digital certificate identifying the vendor
source of the software so that later the software can be
identified by right of access information stored on a carrier 4,
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thus allowing the software to be remote-loaded onto the
microcomputer 2. (Ex. 1011, 4:1–24).
Ex. 1025 ¶ 25.
We are not persuaded that Dr. Madisetti’s conclusion is credible
because, even though we agree with the underlying facts in the
aforementioned portions of Leroux cited by Dr. Madisetti, those underlying
facts do not support adequately his conclusion. In particular, Dr. Madisetti
asserts that software uploaded to database service center 1 from the vendor
will include a digital certificate, so that later the software can be identified
by microcomputer 2 when it runs the identification and authorization
procedures prior to loading the software from database service center 1.
However, these facts are inapposite to Dr. Madisetti’s conclusion for several
reasons. First, there is no indication that only a vendor is capable of
uploading software to database service center 1. Leroux is silent as to
whether software uploaded into database service center 1 by a non-vendor
requires a digital certificate. “Behavioral integrity” requires that all software
uploaded to database service center 1 include a digital certificate, whether
from a vendor or a non-vendor. Second, just because the uploaded software
includes a digital certificate, such a disclosure, by itself, does not indicate
that the digital certificate is required to upload the software. In other words,
there is no indication in Leroux that the digital certificate has any
relationship to the uploading process when it is uploaded with the software
into database service center 1, as would be required for “behavioral
integrity.”
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Indeed, at oral hearing, ZTE acknowledged that Leroux does not
disclose expressly that database service center 1 has “behavioral integrity.”
The relevant portion of the oral hearing transcript is reproduced below:
MS: SHIN: So, it is my – it is our position that Leroux’s
disclosure does not expressly, literally disclose what I just
described, but it is implicit. And it must be present there, so
that the identification done by the service center can be – can
identify the rights of access stored in the carrier.
JUDGE LEE: So you are relying on inherency?
MS. SHIN: I would like to rely on inherency or implicit
disclosure.
JUDGE LEE: What is implicit disclosure? Do you have
a case for something between express disclosure and inherent
disclosure?
. . .
MS. SHIN: So, in light of your comment, the Judges’
comments, it is inherent in the disclosure of Leroux that –
supporting that another distributed repository maintains
behavioral integrity.
JUDGE LEE: We knew that. You were relying on
inherency. Are you saying you no longer are relying on this so-
called implicit disclosure theory, so we need only concern
ourselves with express disclosure and inherent disclosure? Is
that what you are trying to tell us?
MS. SHIN: Yes, Your Honor.
Paper 55, 14:17–15:2, 17:17–25.
Accordingly, ZTE alternatively asserts that Leroux inherently
discloses that a digital certificate is required in order to upload software into
database service center 1. With respect to whether “behavioral integrity” is
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present necessarily in Leroux’s database service center 1, Dr. Madisetti
attests that:
Under ContentGuard’s construction for behavioral integrity, it
is my opinion that the service center 1 necessarily includes
operational software analogous to the repository software in
order for the service center to operate as described in Leroux.
Such operational software running on the service center 1
serves to manage the use and distribution of the software
content stored on the service center 1. This includes having
software uploaded to the service center 1 by a trusted system
(e.g., software vendor), who is trusted to upload authentic
copies of the software. (See supra ¶ 22; see also Ex. 1011,
2:43–48). The operational software running on the service
center 1 also serves to manage the transfer of software to a
trusted microcomputer 2 under the identification and
authentication procedures described in Leroux. (Ex. 1011, 4:1–
16). It also follows that software installed on the service
center 1 includes a type of “digital certificate”, as still required
under ContentGuard’s construction. (See [pages 34-46 of Dr.
Madisetti’s Declaration]). In this way, the service center 1
transfers the software to another trusted system. Therefore, in
my opinion the service center 1 in Leroux satisfies behavioral
integrity even under ContentGuard’s construction.
Ex. 1025 ¶ 26.
We are not persuaded by Dr. Madisetti’s testimony. In particular, we
are not persuaded that Leroux discloses that the software vendor is a trusted
system. Via paragraphs 22 and 25 of his Declaration, Dr. Madisetti cites the
following portions of Leroux (Ex. 1011) as supporting his position that the
software vendor is a trusted system: column 2, lines 14–20, 43–48; column
3, lines 58–60; and column 4, lines 1–24. The aforementioned portions of
Leroux’s disclosure indicate that software, including the right of access
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associated therewith, is uploaded into database service center 1 from a
software vendor, and that an authentication procedure is required to install
software stored in database service center 1 on microcomputer 2. These
cited disclosures do not support the fact that the Leroux’s software vendor is
a trusted system, as they do not disclose that the software vendor, itself,
exhibits any physical, communications, or behavioral integrity, all of which
are required in a trusted system. Accordingly, because Leroux does not
discloses that a software vendor is a trusted system, we are not persuaded
that Dr. Madisetti has expressed an adequate underlying factual basis to
conclude that a digital certificate is required necessarily to upload software
from a software vendor into database service center 1 in order to show that
database service center 1 maintains “behavioral integrity.”
At oral hearing, ZTE asserted that, when the aforementioned portions
of Leroux are considered as a whole, one of ordinary skill would have
understood that “behavioral integrity” is necessarily present in Leroux’s
database service center 1. See, e.g., Paper 56, 11:19–22. For the reasons
discussed previously, we are not persuaded that just because software is
uploaded to Leroux’s database service center 1 with its corresponding right
of access, it follows necessarily that service database service center 1
maintains “behavioral integrity.” See Oelrich, 666 F.2d at 581–82
(“Inherency [] may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.”).
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5. Summary
In summary, the combination of Leroux’s microcomputer 2 and
removable carrier 4 does not amount to the “distributed repository,” as
required by independent claims 1, 20, and 40, because ZTE has not
persuaded us that the identification and authentication procedures used to
interrogate the right of access associated with the software stored on
removable carrier 4 necessarily includes a digital certificate that
authenticates the source of the software. In addition, Leroux’s database
service center 1 does not amount to the “another distributed repository,” as
recited in independent claim 1, because ZTE has not persuaded us that a
digital certificate is required necessarily to upload software from a software
vendor into database service center 1. For the foregoing reasons, we
conclude that ZTE has not demonstrated by a preponderance of the evidence
that independent claims 1, 20, and 40 are anticipated by Leroux.
6. Claims 2–18, 21–38, and 41–56
As we indicated previously, claims 2–18, 21–38, and 41–56 depend
directly or indirectly from independent claims 1, 20, and 40, respectively.
Therefore, each of claims 2–18, 21–38, and 41–56 incorporate the same
limitations as their underlying base claim. For the same reasons discussed
above with respect to independent claims 1, 20, and 40, we conclude that
ZTE has not demonstrated by a preponderance of the evidence that
dependent claims 2–18, 21–38, and 41–56 are anticipated by Leroux.
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C. Anticipation by EP ’139—Claims 1–18, 20–38, and 40–56
ZTE contends that claims 1–18, 20–38, and 40–56 are anticipated
under § 102(b) by EP ’139. Pet. 32–40. In support of that alleged ground of
unpatentability, ZTE provides explanations as to how EP ’139 describes
each claim limitation. Id. ZTE also submits the Declaration of
Dr. Madisetti (Ex. 1005 ¶¶ 115–120) to support its positions. Upon
reviewing ZTE’s Petition and supporting evidence, as well as
ContentGuard’s Patent Owner Response and supporting evidence, we
determine that ZTE has not demonstrated by a preponderance of the
evidence that claims 1–18, 20–38, and 40–56 are anticipated by EP ’139.
We begin our analysis with a brief discussion of EP ’139, and then we
turn to the arguments presented by both ZTE and ContentGuard that are
directed to whether EP ’139 describes a “distributed repository” that
maintains “behavioral integrity,” as required by independent claims 1, 20,
and 40.
1. EP ’139
EP ’139 discloses a data processing system with a software copy
protection mechanism. Ex. 1012, 1:4–6. To provide security, each
computer or host that runs a protected software application is associated with
a logically and physically secure coprocessor. Ex. 1012, 1:25–29. Figure 1
of EP ’139, reproduced below, describes the important components of the
software protection mechanism and how they interact. Ex. 1012, 21:29–31.
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According to the embodiment shown in Figure 1, EP ’139 discloses a
software protection mechanism embodied in a composite computing system.
Ex. 1012, 21:58–22:2. This composite computer system includes host 10
and coprocessor 20 connected via communication link 14. Ex. 1012, 22:3–
6. Coprocessor 20 also includes permanent, non-volatile memory 25 and
temporary memory 26. Ex. 1012, 22:19–21. In order to execute a protected
application, a user must install a right to execute the application, in the form
of a software decryption key, in permanent memory 25. Ex. 1012, 22:22–
32. To install this right to execute, the user receives from a software vendor
hardware cartridge 30 and distribution disk 16. Ex. 1012, 22:32–36.
In one embodiment, distribution disk 16 stores the following three
files: (1) the protected software application including an encrypted portion;
(2) software decryption key AK, encrypted by a different decryption key
CSK provided by the vendor and already stored in coprocessor 20; and
(3) token data encrypted by the software decryption key. Ex. 1012, 22:23–
27, 36–48. To install the right to execute, coprocessor 20 decrypts the
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software decryption key in temporary memory, and then verifies that the
hardware cartridge is authentic by querying the token data included in the
cartridge to determine if they match those in the token data file. Ex. 1012,
23:1–8. Hardware cartridge 30 will contain the token data only if it has not
been used. Ex. 1012, 23:8–11.
After verifying that the hardware cartridge is authentic and unused,
coprocessor 20 will accept the right to execute and store the software
decryption key AK in permanent memory 25. Ex. 1012, 23:11–16. With
access to the software decryption key AK, the protected application file can
be decrypted and stored in temporary memory 26 so that it may be executed
by coprocessor 20. Ex. 1012, 23:16–21.
In one embodiment, EP ’139 discloses a source composite processor,
including source host 10 and coprocessor 20, that communicates with a sink
composite processor, including sink host 110 and sink coprocessor 120.
Ex. 1012, 25:49–52. The source and sink processors are interconnected via
communication link 200. Ex. 1012, 26:5–6. EP ’139 discloses that source
coprocessor 20 and sink coprocessor 120 exchange encrypted information.
Ex. 1012, 26:10–20. Only coprocessors that are “member[s] of the family”
are capable of decrypting and recognizing the information transmitted
thereto. Ex. 1012, 26:7–10, 20–23. EP ’139 also discloses that source
coprocessor 20 can encrypt a right to execute a particular software program
and send it to sink coprocessor 120. Ex. 1012, 26:32–35.
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2. “Distributed Repository” (Claims 1, 20, and 40)
Independent claims 1, 20, and 40 each require a “distributed
repository.” Ex. 1001, 52:65–67; 54:4–6; 55:23–25. As discussed above, a
“repository” is construed as “a trusted system which maintains physical,
communications and behavioral integrity, and supports usage rights.”
“Physical integrity” is construed as “preventing access to information by a
non-trusted system.” “Communications integrity” is construed as “only
communicates with other devices that are able to present proof that they are
trusted systems, for example, by using security measures such as encryption,
exchange of digital certificates, and nonces.” “Behavioral integrity” is
construed as “requiring software to include a digital certificate in order to be
installed in the repository.” In its Petition, ZTE takes the position EP ’139’s
source coprocessor 20, which include permanent memory 25 and temporary
memory 26, constitutes the claimed “distributed repository.” Pet. 33, 35,
39–40. In our analysis below, we determine whether EP ’139’s source
coprocessor 20 constitutes the claimed “distributed repository” that
maintains “behavioral integrity.”
a. Behavioral Integrity
ContentGuard contends that EP ’139’s source coprocessor 20 does not
amount to the claimed “repository” because it does not maintain “behavioral
integrity.” PO Resp. 29–33. That contention has three layers of complexity.
1.
The first relates to ContentGuard’s contention that “behavioral
integrity” of a repository is directed to, and concerns only, the operating
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software of the repository, i.e., the software that enables the repository to
control the usage rights and distribution of digital works, and not the
software digital works managed by the repository, itself. PO Resp. 29. In
our claim construction analysis, we already found that contention of
ContentGuard unpersuasive.
2.
The second relates to ContentGuard’s contention that “behavioral
integrity” of a repository does not require the presence and use of a digital
certificate to authenticate the software digital work being installed in a
repository. PO Resp. 30–32. Instead, ContentGuard argues that “behavioral
integrity” of a repository merely requires checking that the software loaded
onto the repository is authentic or unaltered prior to rendering the software.
Id. at 32. In our claim construction analysis, we also found that contention
of ContentGuard unpersuasive.
3.
The third relates to ContentGuard’s contention that software
decryption key AK disclosed in EP ’139, which is associated with the
software digital work being sent to source coprocessor 20, is not a digital
certificate. PO Resp. 32–33. According to ZTE, EP ’139’s software
decryption key AK constitutes the digital certificate. Pet. Reply 9 (citing Ex.
1012, 26:7–48; Ex. 1025 ¶ 46). Taking into account the evidence presented
by both parties, we determine that ZTE has not demonstrated by a
preponderance of the evidence that, in the disclosed system of EP ’139, the
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decryption key AK accompanying a software digital work constitutes a
digital certificate that authenticates the source of the software.
Dr. Madisetti testified that, in his opinion, the source coprocessor 20
encrypting a right-to-execute and transmitting that encrypted right-to-
execute to sink coprocessor 120 indicates that the software in EP ’139 must
include a digital certificate to be installed in a repository. Ex. 1025 ¶ 46
(citing Ex. 1012, 26:32–35). Dr. Madisetti explained that the right-to-
execute is required in order for the protected software to be decrypted,
stored, and executed. Id. (citing Ex. 1012, 23:16–21). On that basis, Dr.
Madisetti concludes that “in EP ’139, the [decryption key] AK serves as a
digital certificate under the Board’s construction as the AK is required in
order to install the software in the repository.” Id.
The reasoning of Dr. Madisetti is tenuous, at best, because the issue is
not whether, in some respect, a decryption key under certain operating
conditions may “serve as” or substitute for a digital certificate that
authenticates the source of the software, but whether a decryption key, itself,
“is” a digital certificate. Dr. Madisetti’s testimony falls short of stating that
EP ’139’s decryption key AK would be referred to, or identified by, one
with ordinary skill in the art as a digital certificate. In our discussion of the
construction of “behavioral integrity,” we were unpersuaded by
ContentGuard’s contention that a digital certificate is not required, and that
anything which accomplishes a similar objective in substantially the same
way is satisfactory.

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ZTE does not account adequately for the fact that, even if decryption
of software with EP ’139’s decryption key AK is regarded as authentication
of the source of the software, the decryption key AK, itself, does not
authenticate anything. Rather, it has to be applied in a decryption process—
it is that process which determines an ascertainable result for further
evaluation. Thus, EP ’139’s decryption key AK is unlike a digital certificate
which, by itself, authenticates the source of the software.
Moreover, ZTE does not explain adequately why decryption indicates
authenticity of the software source. ZTE’s contention assumes that no one
tampered with the software while preserving the proper encryption, or that
no one created a false or unauthorized version having the proper encryption.
Those assumptions are speculative in the context of providing security. ZTE
further contends that EP ’139 consistently describes the software as a
“protected application.” Pet. Reply 9 (citing Ex. 1012, 22:39). For instance,
ZTE argues that EP ’139 discloses that the encrypted application software
cannot be modified by a user. Id. (citing Ex. 1012, 3:49–54). Such
disclosure is evidence that the software disclosed in EP must be decrypted
before it can be modified or executed—it does not indicate that the
decryption process, by itself, authenticates the source of the software.
Once again, insofar as “assurance” means a specifically expressed
indication, we credit the testimony of ContentGuard’s expert, Dr. Goodrich,
that “a person of ordinary skill in the art [in 1994] would [have understood]
a digital certificate to be an assurance that downloaded software comes from
a reputable source, including a measure of tamper resistance.” Ex. 2013
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¶ 39 (citing the definition of “digital certificate” from the MICROSOFT
COMPUTER DICTIONARY (4th ed. 1999)). An unexpressed and subjective
thought, on the other hand, does not qualify. As discussed above, EP’139’s
decryption key AK does not meet the requirements of that definition of
“digital certificate.”
b. Summary
In summary, EP ’139’s source coprocessor 20 does not amount to a
“repository” that maintains “behavioral integrity,” as required by
independent claims 1, 20, and 40, because ZTE has not persuaded us that the
decryption key AK disclosed in EP ’139 constitutes a digital certificate. For
the foregoing reasons, we conclude that ZTE has not demonstrated by a
preponderance of the evidence that independent claims 1, 20, and 40 are
anticipated by EP ’139.
3. Claims 2–18, 21–38, and 41–56
As we indicated previously, claims 2–18, 21–38, and 41–56 depend
directly or indirectly from independent claims 1, 20, and 40, respectively.
Therefore, each of claims 2–18, 21–38, and 41–56 incorporate the same
limitations as their underlying base claim. For the same reasons discussed
above with respect to independent claims 1, 20, and 40, we conclude that
ZTE has not demonstrated by a preponderance of the evidence that
dependent claims 2–18, 21–38, and 41–56 are anticipated by EP ’139.

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III. CONCLUSION
ZTE has not demonstrated by a preponderance of the evidence that
claims 1–18, 20–38, and 40–56 of the ’736 patent are unpatentable based on
the grounds of unpatentability set forth in the table below.
Claims Basis Reference
1–18, 20–38, and 40–56 § 102(e) Leroux
1–18, 20–38, and 40–56 § 102(b) EP ’139

IV. ORDER
In consideration of the foregoing, it is:
ORDERED that ZTE has not demonstrated by a preponderance of
evidence that claims 1–18, 20–38, and 40–56 of the ’736 patent are
unpatentable; and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:
Jon Beaupre
Miyoung Shin
Rickard DeMille
David Bluestone
Peter Lee
Lawrence Chen
BRINKS HOFER GILSON & LIONE
jbeaupre@brinkshofer.com
mshin@brinkshofer.com
rdemille@brinkshofer.com
dbluestone@brinkshofer.com
plee@brinkshofer.com
lchen@brinkshofer.com

For PATENT OWNER:
Robert Sterne
Jon Wright
Jason Eisenberg
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
rsterne-PTAB@skgf.com
jwright-PTAB@skgf.com
jasone-PTAB@skgf.com