ZTE Corporationv.ContentGuard Holdings, Inc.

Patent Trial and Appeal Board

Jul 1, 2014

10345390 (P.T.A.B. Jul. 1, 2014)

Trials@uspto.gov Paper 58
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.,
Petitioners,

v.

CONTENTGUARD HOLDINGS, INC.,
Patent Owners.
____________

Case IPR2013-00137
Patent 6,963,859
____________

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

KIM, 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
Petitioners (“ZTE”) filed a corrected Petition for inter partes review
of claims 1-84 of U.S. Patent No. 6,963,859 (“the ’859 patent”). Paper 12
(“Pet.”). The Patent Owner (“ContentGuard”) timely filed a Patent Owner
Preliminary Response. Paper 16 (“Prel. Resp.”) On July 1, 2013, the Board
instituted trial for claims 1-5, 9-11, 15-17, 19, 21-33, 37, 38, 42-44, 46, 48-
62, 66, 67, 71-73, 75, and 77-84, under 35 U.S.C. § 102(e), as anticipated by
U.S. Patent No. 5,588,146 to Leroux (Ex. 1011). Paper 17 (“Dec.”).
After institution of trial, Patent Owners (“ContentGuard”)
1
filed a
Patent Owner Response (Paper 34, “PO Resp.”), but did not file a motion to
amend. Petitioner subsequently filed a Reply. Paper 39 (“Reply”).
A consolidated oral hearing for IPR2013-00133, IPR2013-00137,
IPR2013-00138, and IPR2013-00139, each involving the same Petitioners
and Patent Owners, was held on February 26 and 27, 2014. The transcript of
the consolidated hearing has been entered into the record. Papers 55-57.
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a).
Claims 1-5, 9-11, 15-17, 19, 21-33, 37, 38, 42-44, 46, 48-62, 66, 67,
71-73, 75, and 77-84 of the ’859 patent are not unpatentable.

1
The mandatory notices filed pursuant to 37 C.F.R. § 42.8(b)(1) indicate
that both ContentGuard Holdings, Inc. and Pendrell Corporation are the real
parties in interest. Paper 15, 2.
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B. Related Proceedings
ZTE indicates that the ’859 patent is involved in co-pending district
court case titled ContentGuard Holdings Inc. v. ZTE Corp., No. 3:12-cv-
01226 (S.D. Cal.). Pet. 1. ZTE also filed five other Petitions seeking inter
partes review of the following patents of 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. 7,139,736
(IPR2013-00138); and U.S. Patent No. 7,269,576 (IPR2013-00139). Id.
C. The ’859 patent
The subject matter of the ’859 patent relates to distribution of and
usage rights enforcement for digitally encoded works. Ex. 1001, 1:12-13.
According to the ’859 patent, an issue facing the publishing and information
industries is how to prevent the unauthorized and unaccounted distribution
or usage of electronically published materials. Ex. 1001, 1:16-19. In
particular, a major concern is the ease in which electronically published
works can be “perfectly” reproduced and distributed. Ex. 1001, 1:30-31.
One way to curb unaccounted distribution is to prevent unauthorized
copying and transmission. Ex. 1001, 1:49-51. Another way is to distribute
software, which requires a “key” to enable its use. Ex. 1001, 1:65-66.
However, the ’859 patent discloses that, although such distribution and
protection schemes prevent unauthorized distributions, it does so by
sacrificing the potential for subsequent revenue bearing uses. Ex. 1001,
2:61-65. For example, the ’859 patent discloses that it may be desirable to
allow the lending of a purchased work to permit exposure of the work to
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potential buyers, permit the creation of a derivative work for a fee, or permit
copying the work for a fee. Ex. 1001, 2:65-3:3. The ’859 patent discloses
that it solves these problems by both permanently attaching usage rights to
digital works, and by placing elements in repositories, which store and
control the digital works, that enforce these usage rights. Ex. 1001, 6:11-21.
D. Illustrative Claim
Claims 1, 29, and 58 are independent claims. Independent claims 1,
29, and 58 are directed to a system, a method, and a computer readable
medium, respectively. Claims 2-28 directly or indirectly depend from claim
1, claims 30-57 directly or indirectly depend from claim 29, and claims 59-
84 directly or indirectly depend from claim 58. Claims 1, 29, and 58 are
exemplary of the claimed subject matter of the ’859 patent, and are
reproduced as follows (emphasis added):
1. A rendering system adapted for use in a distributed
system for managing use of content, said rendering system
being operative to rendering content in accordance with usage
rights associated with the content, said rendering system
comprising:

a rendering device configured to render the content; and

a distributed repository coupled to said rendering device
and including a requester mode of operation and server mode of
operation,

wherein the server mode of operation is operative to
enforce usage rights associated with the content and permit the
rendering device to render the content in accordance with a
manner of use specified by the usage rights,
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the requester mode of operation is operative to request
access to content from another distributed repository, and

said distributed repository is operative to receive a
request to render the content and 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.

29. A rendering method adapted for use in a distributed
system for managing use of content, and operative to render
content in accordance with usage rights associated with the
content, said method comprising:

configuring a rendering device to render the content;

configuring a distributed repository coupled to said
rendering device to include a requester mode of operation and
server mode of operation;

enforcing usage rights associated with the content and
permitting the rendering device to render the content in
accordance with a manner of use specified by the usage rights,
when in the server mode of operation;

requesting access to content from another distributed
repository, when in the requester mode of operation; and

receiving by said distributed repository a request to
render the content and permitting 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.

58. A computer readable medium including one or more
computer readable instructions embedded therein for use in a
distributed system for managing use of content, and operative
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to render content in accordance with usage rights associated
with the content, said computer readable instructions
configured to cause one or more computer processors to
perform the steps of:

configuring a rendering device to render the content;

configuring a distributed repository coupled to said
rendering device to include a requester mode of operation and
server mode of operation;
enforcing usage rights associated with the content and
permitting the rendering device to render the content in
accordance with a manner of use specified by the usage rights,
when in the server mode of operation;

requesting access to content from another distributed
repository, when in the requester mode of operation; and

receiving by said distributed repository a request to
render the content and permitting 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, 51:16-38, 52:45-65, 54:6-28 (emphasis added).
II. ANALYSIS
The only ground instituted for trial is that of the alleged anticipation,
under 35 U.S.C. § 102(e), of claims 1-5, 9-11, 15-17, 19, 21-33, 37, 38, 42-
44, 46, 48-62, 66, 67,71-73, 75, and 77-84 by Leroux. 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 with claim construction,
and then follow with specific analysis of the prior art.
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A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction 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 construction standard, claim terms are
given their ordinary and customary meaning, as would be understood by 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). 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).
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Repository (Claims 1, 29, and 58)
In its Petition, ZTE did not provide an explicit construction for
“repository.” In the Patent Owner Preliminary Response, ContentGuard
contended that “repository” should be interpreted as “a trusted system for
supporting usage rights.” Prelim. Resp. 17. When instituting trial, we
construed “repository” as “a trusted system which maintains physical,
communications and behavioral integrity, and supports usage rights.”
Dec. 9. For reasons discussed below, we adhere to the same interpretation
for this final written decision.
The specification provides a glossary which recites the following
meaning for “repository”:
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, 50:47-51 (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 is relevant also 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.”
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Our analysis does not end here. In order to understand “a trusted
system,” it is necessary to construe “physical integrity,” “communications
integrity,” and “behavioral integrity.” Those terms are described in a section
of the specification labeled “[r]epositories.” For “physical integrity,” the
specification describes:
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, 11:62-12:20 (emphases added). Much of the above description
makes use of permissive terms such as “may” and “can” and, thus, does not
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reflect or indicate a required limitation for physical integrity. The
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, 12:21-33 (emphases added). We construe “communications
integrity” as “only communicates with other devices that are able to present
proof that they are trusted systems, for example, by using security measures
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such as encryption, exchange of digital certificates, and nonces.” The
Encyclopedia 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:
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, 12:34-50 (emphasis 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 interpretation. That is not unusual. The nature of 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 example, the specification in Table 2 indicates ten different levels
of security for repositories, and 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, 14:58-64. 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 of and
usage rights enforcement of digital works. The problems described in the
background portion of the specification concerns unauthorized and
unaccounted distribution or usage of electronically published materials. See
generally Ex. 1001, 1:30-48. The ’859 patent states that it solves preexisting
problems by both permanently attaching usage rights to digital works and
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placing elements in repositories which enforce those usage rights. Ex. 1001,
6:11-21.
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 ’859 patent. The
specification also contains detailed preferred embodiments utilizing
repositories which are trusted systems to provide usage control for digital
works. Ex. 1001, 3:57-62, 6:66-7:37, 7:54-55, 13:1-9, 16-18; 14:3-15,
17:30-32; 25:62-28-56; 40:42-41:44.
The bulk of the disclosure 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, 6:17-21 (emphasis added). Other references to “repository” in the
specification that recite necessary features of repositories also support the
definition in the glossary that a repository is a trusted system:
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, 14:3-9 (emphasis added). In yet 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,
13:1-2, 14:14-15. Indeed, by using words such as “require” and “required,”
such 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
construction 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 interpretation of “repository” is
incorrect because it is too broad in one respect and too narrow in another.
PO Resp. 8-11. For reasons discussed below, however, the specification of
the ’859 patent does not support adequately either contention. On the record
before us, we are unpersuaded 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.
1.
ContentGuard contends that our 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
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software that makes the repository operative—that which ContentGuard
believes is referred to in the specification as “repository software.” Id. at 8.
We reproduce ContentGuard’s argument, in more detail, below:
[The Board’s construction] is too broad because it is not
restricted to what the ’859 patent refers to as “repository
software”—that is, software that makes the repository
operative. (See Ex. 1001, 12:34-50.) According to the ’859
patent specification, “[b]ehavioral integrity refers to the
integrity in what repositories do.” (Id., 12:34-35.) What
repositories do, in turn, “is determined by the software that they
execute.” (Id., 12:35-36.)
But not all software relates “to the integrity in what
repositories do.” (Ex. 1001, 12:34-35.) Repositories, along
with usage rights, are used to manage the use and distribution
of digital content. (See, e.g., id., 50:48-52, 5:47-48, 14:3-15.)
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 necessarily supply that function to a repository.
(Goodrich Dec[l]., Ex. 2013, ¶ 53.) Rather, repository software
implements the repository functions that are used to manage the
use and distribution of the content. (Ex. 1001, 14:3-15.) 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.
PO Resp. 8-9.
On 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 which run and execute
the software type digital works the usage rights of which they control. For
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instance, the ’859 patent states the following with regard to software
runnable 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, 41:28-31 (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 above-quoted
disclosure 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 not as operating software, but application software. As such, the
specification conveys information contrary to ContentGuard’s contention.
ContentGuard does not explain such disclosure and does not 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, it is unpersuasive
that the reference to “repository software” in that portion of the specification
discussing “behavioral integrity” (Ex. 1001, 12:34-50) 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
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digital certificate for that software (Ex. 1001, 41:41-44), 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, 12:40-43).
Moreover, some repositories are rendering repositories. Ex. 1001, 41:29-31.
“Repository software,” as used in the specification, is broad enough to cover
application software, such as the “player” referenced in column 41, lines 29-
31, of the specification, 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 the expert witness of ContentGuard,
Dr. Michael T. Goodrich, in paragraphs 40 and 41 of his declaration
(Ex. 2013). In those paragraphs, Dr. Goodrich testifies that, in his opinion, a
person of ordinary skill in the art in 1994 would have understood that the
term “repository software” in the ’859 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. The testimony is
unpersuasive, because it does not account for the disclosure of the
specification, discussed above, which conveys that some repositories are
themselves rendering depositories which run and execute the software digital
works the rights of which they control, such as a new version of a “player.”
2.
ContentGuard contends that our 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 ensure behavioral integrity.
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PO Resp. 9-10. 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 9.
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.
We reproduce ContentGuard’s argument, here, in more detail:
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 ’859 patent says that
“[t]he integrity of the software is generally assured only by
knowledge of its source.” (Ex. 1001, 12:36-37.) 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., 12:40-43.) “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.” (Id.,
12:43-47 (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.
PO Resp. 9 (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
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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
construction rule applies for claim interpretation, the construction must be
reasonable in light of the specification. In that connection, the specification
states: “Behavioral 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, 12:40-43 (emphasis added).
Second, ContentGuard does not point to any other means, described in
the specification, for ensuring 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, the
scope of disclosure is not commensurate with the breadth for the
construction of “repository” desired by ContentGuard.
Third, the general articulation 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
that is the claim construction, the scope of the claims would be uncertain and
indeterminable.
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We do not credit the testimony of the expert witness of ContentGuard,
Dr. Goodrich, that “a person of ordinary skill in the art of 1994 would [have
understood] that the ’859 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. The testimony is unexplained and
conclusory; it does not account for the various factors we have considered
and discussed above.
B. Alleged Anticipation by Leroux
ZTE contends that claims 1-5, 9-11, 15-17, 19, 21-33, 37, 38, 42-44,
46, 48-62, 66, 67, 71-73, 75, and 77-84 are unpatentable under 35 U.S.C.
§ 102(e) as anticipated by Leroux. Pet. 40-46. ZTE relies on claim charts to
explain how Leroux allegedly describes the claimed subject matter, and also
on the Declaration of Dr. Vijay K. Madisetti to support its positions.
Ex. 1005. To establish anticipation, each and every element in a claim,
arranged as is recited in the claim, must be found in a single prior art
reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed.
Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001).
Leroux discloses a method of acquiring software programs by
microcomputers. Ex. 1011, 1:8-9. Figure 1 of Leroux is set forth as
follows:
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Figure 1 illustrates a data-processing system.
As shown in Figure 1, Leroux discloses data base service center 1 that stores
application software programs 10, microcomputer 2 connected to service
center 1 by interface 3, and removable electronic memory carrier 4.
Ex. 1011, 3:42-46. Leroux discloses that memory carrier 4 includes
interface 40 for connecting memory 41 to drive 24 of microcomputer 2.
Ex. 1011, 3:53-55. Leroux discloses that microcomputer 2 is fitted with
corresponding drives to read memory carrier 4. Ex. 1011, 4:60-64. Leroux
discloses that 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 discloses that to carry out
acquisition of application software program 10, communication is set up
between microcomputer 2 and data base service center 1. Ex. 1011, 3:61-66.
Leroux discloses that after a user chooses which application software
programs 10 that he/she wishes to acquire, service center 1 will check a right
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of access to application software programs 10 by interrogating carrier 4
through microcomputer 2. Ex. 1011, 4:1-5. According to Leroux, the check
is made by using security methods, such as with identification and
authentication procedures that use enciphering and deciphering algorithms.
Ex. 1011, 4:5-8. If the check is positive, service center 1 remotely loads
application software program 10 in the internal memory of microcomputer 2.
Ex. 1011, 4:13-16.
As discussed above, “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.” ZTE
relies on a combination of microcomputer 2 and removable carrier 4 as
corresponding to the claimed “distributed repository,” and service center 1
as corresponding to the “another distributed repository” recited in each of
independent claims 1, 29, and 58. Pet. 42-43.
1. “distributed repository” (claims 1, 29, and 58)
Independent claims 1, 29, and 58 each require a “distributed
repository.” As discussed above, a “repository” is construed as “a trusted
system which maintains physical, communications and behavioral integrity,
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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. 43. 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.”
”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. 11-15. That contention has three layers of
complexity.
a.
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
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software digital works managed by the repository, itself. PO Resp. 11-12.
In our claim construction analysis, we already found that contention of
ContentGuard unpersuasive.
b.
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. 12-15. 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. In our claim construction analysis, we also found that contention
of ContentGuard unpersuasive.
c.
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. 14-15. According to ZTE, Leroux’s disclosure of interrogating the
right of access includes the authentication of a “digital certificate” required
for “behavioral integrity.” 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
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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. 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 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,
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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
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 that
requirement of that definition of “digital certificate.”
2. “another distributed repository” (claims, 1 29, and 58)
Independent claims 1, 29, and 58 each recite “another distributed
repository.” ContentGuard asserts that Leroux does not disclose the recited
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“another distributed repository” because service center 1 does not exhibit
“behavioral integrity.” PO Resp. 16-17. Specifically, ContentGuard asserts
the following:
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. 17. ZTE disagrees, and asserts the following:
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; see also supra), 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-
26).
Reply 5-6. We are persuaded that service center 1 does not exhibit
“behavioral integrity,” and, thus, cannot correspond properly to the recited
“another distributed repository.”
As set forth above, “behavioral integrity” is construed as “requiring
software to include a digital certificate in order to be installed in the
repository.” Leroux discloses that software programs are uploaded into
service center 1. Ex. 1011, 1:62-67, 2:43-44. Leroux also discloses that a
right of access, corresponding to the aforementioned digital certificate, is
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required to remote load software from service center 1 to the internal
memory of microcomputer 2. Ex. 1011, 2:46-48, 3:19-22, 4:1-16. The
aforementioned citations of Leroux, however, do not indicate that Leroux
discloses that service center 1 has “behavioral integrity.” As an initial
matter, we are not persuaded that the “uploading” of software to service
center 1 disclosed in Leroux can correspond properly to the “installing” of
software required for “behavioral integrity.” Moreover, even if “uploading”
could be considered “installing,” Leroux is silent as to whether such
“uploading” of software to service center 1 requires the software to include a
digital certificate, as required for “behavioral integrity.”
ZTE cites 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 the microcomputer 2 running the identification
and authorization procedures to load the software from the
service center 1 to the microcomputer 2. (Ex. 1011, 4:1-12).
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
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facts do not support adequately his conclusion. In particular, Dr. Madisetti
asserts that software uploaded to service center 1 from the vendor will
include a digital certificate, so that later the software can be identified by
microcomputer 2 running the identification and authorization procedures to
load the software from the service center 1 to the microcomputer 2.
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 service center 1. Leroux is silent as to whether
software uploaded into service center 1 by a non-vendor requires a digital
certificate. Behavioral integrity requires that all software uploaded to
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 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, itself, when it is
uploaded with the software into service center 1, as would be required for
“behavioral integrity.”
Indeed, ZTE acknowledged at oral hearing that Leroux did not
disclose expressly that service center 1 has “behavioral integrity” as follows:
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?
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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 56, 14:17-15:2, 17:17-25.
Accordingly, ZTE asserts alternatively that Leroux inherently
discloses that a digital certificate is required in order to upload software into
service center 1. Concerning whether service center 1 of Leroux inherently
has “behavioral integrity,” Dr. Madisetti asserts the following:
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-
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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 22-32 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, because
it is not explained adequately. Specifically, 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 factual basis that the
software vendor is a trusted system: column 2, lines 14-20, 43-48; column
3, lines58-60; and column 4, lines 1-16. The aforementioned portions of
Leroux disclose that software including a right of access is uploaded into
service center 1 from a software vendor, and that an authentication
procedure is required to install software from service center 1 to
microcomputer 2. These disclosures do not support the fact that the software
vendor of Leroux is a trusted system, as it does not disclose that the software
vendor, itself, exhibits any physical, communications, or behavioral
integrity, all of which are required in a trusted system. Accordingly, as
Leroux does not disclose 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
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upload software into service center 1 from a software vendor, as required to
show that service center 1 inherently has “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 Leroux discloses inherently that service center 1 has
“behavioral integrity.” Paper 57, 20:1-21:25. For the reasons discussed
previously, we are not persuaded that just because software is uploaded to
service center 1 with a right of access, and the combination of
microcomputer 2 and carrier 4 has “behavioral integrity,” it follows
necessarily that service center 1 also has “behavioral integrity.”
3. Summary
In summary, the combination of Leroux’s microcomputer 2 and
removable carrier 4 does not constitute the “distributed repository,” as
recited by each of independent claims 1, 29, and 58, 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 constitute the “another distributed repository,” as
recited by each of independent claims 1, 29, and 58, 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
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preponderance of the evidence that independent claims 1, 29, and 58 are
anticipated by Leroux.
Claims 2-5, 9-11, 15-17, 19, 21-28, 30-33, 37, 38, 42-44, 46, 48-57,
59-62, 66, 67,71-73, 75, and 77-84 each depend directly or indirectly from
one of independent claims 1, 29, and 58, and, thus, each recite the
“distributed repository” and “additional distributed repository” of
independent claims 1, 29, and 58. For the same reasons discussed above in
the context of independent claims 1, 29, and 58, ZTE has not shown that
either the recited “distributed repository” or “additional distributed
repository” is disclosed in Leroux.
III. CONCLUSION
ZTE has not proved, by a preponderance of the evidence, that any of
claims 1-5, 9-11, 15-17, 19, 21-33, 37, 38, 42-44, 46, 48-62, 66, 67, 71-73,
75, and 77-84 of the ’859 patent are unpatentable under 35 U.S.C. § 102(e)
as anticipated by Leroux.
IV. ORDER
It is
ORDERED that ZTE has not demonstrated by a preponderance of the
evidence that claims 1-5, 9-11, 15-17, 19, 21-33, 37, 38, 42-44, 46, 48-62,
66, 67, 71-73, 75, and 77-84 of U.S. Patent No. 6,963,859 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