Opinion
Case No. 19-cv-03371-EMC
02-03-2021
DOLBY LABORATORIES, INC., Plaintiff, v. INTERTRUST TECHNOLOGIES CORPORATION, Defendant.
CLAIM CONSTRUCTION ORDER
I. INTRODUCTION
This case involves ten patents that Defendant and Counterclaimant Intertrust Technologies Corp. ("Intertrust") accuses Declaratory-Judgment Plaintiff Dolby Laboratories, Inc. ("Dolby") of infringing. On November 3, 2020, the parties appeared before the Court for a claim construction hearing. The parties have asked the Court to interpret thirteen terms (several of which will share the same construction) that appear in various claims of the patents-in-suit. See Docket No. 101 ("Joint Stip."). For the reasons given in the following discussion, the Court adopts the constructions identified below.
II. BACKGROUND
A. Earlier Proceedings
The patents at issue in this action relate to rights management of digital cinema technology. Dolby describes itself as "a global leader in the design, development, and distribution of audio and video solutions." Docket No. 61-4 ("SAC") ¶ 3. Intertrust claims to have "pioneered digital rights management" and, more specifically, to have "invented methods and systems for protecting high-value content, such as original-release commercial motion pictures, when these content assets are distributed to exhibitors, such as commercial movie theaters." Docket No. 63 ("Counterclaim") ¶¶ 8, 10.
"Digital cinema refers generally to the use of digital technology to master, transport, store or present motion pictures as opposed to the historical use of reels of motion picture film." Docket No. 61-4 ("SAC") ¶ 20.
In 2002, several major motion-picture studios launched a joint venture known as Digital Cinema Initiatives, LLC ("DCI"). SAC ¶ 21. "Among the specifications promulgated by DCI are the Digital Cinema System Specifications ('DCSS'), which define[] technical specifications and requirements for technology used in the mastering, distribution, and theatrical presentation" of commercial films. Id. ¶ 22. "Such technology includes servers used in the storage or playback of digital cinema content, sometimes referred to as . . . media block servers" or image media blocks. Id.; see also Counterclaim ¶ 15-16. Dolby's product offerings include media block servers. See SAC ¶ 26.
In early 2018, Intertrust sent letters to some of the largest movie-theater chains—all Dolby customers—alleging that they "were infringing the Patents-in-Suit by rendering movies" on "digital cinema equipment compliant with" DCSS and other DCI requirements. SAC ¶ 25. After corresponding with the theaters, in early 2019 "Intertrust directed communications to Dolby regarding licensing of the Patents-in-Suit, including multiple emails and several in-person meetings." Id. ¶ 28. Dolby ultimately "rejected Intertrust's royalty demands and communicated to Intertrust that it did not agree that compliance with the DCI specification showed infringement of Intertrust's Patents-in-Suit." Id. ¶ 31.
Dolby initiated this action against Intertrust in June 2019, seeking a declaratory judgment of non-infringement of the asserted patents. See Docket No. 54 ("Order") at 6. Around the same time, Intertrust sued three of Dolby's customers (i.e., the aforementioned movie-theater chains) in the Eastern District of Texas, asserting infringement of the same patents. Id. at 6-7; see also Docket No. 107-4, Intertrust Techs. Corp. v. Cinemark Holdings, Inc., No. 2:19-cv-00266-JRG (E.D. Tex. July 7, 2020) ("Cinemark"). Dolby filed the operative complaint in this case in November 2019. See SAC. Intertrust responded by filing an answer, affirmative defenses, and counterclaims for patent infringement. See Docket No. 63.
Earlier, Intertrust successfully moved to dismiss Dolby's First Amended Complaint ("FAC"). Intertrust argued (1) that the Court lacked subject-matter jurisdiction because there was no case or controversy between the parties and (2) that the FAC failed to state a claim for relief. Order at 1. The Court rejected the first argument but agreed with the second. See id. at 14-15. The Court thus dismissed Dolby's complaint but gave it leave to amend. Id. at 15. The SAC was filed on November 27, 2019.
Intertrust alleges past and/or continuing contributory infringement by Dolby of the ten patents-in-suit (four of which have now expired), and seeks relief in the form of, e.g., injunctions, lost-profit damages, reasonable royalties, and treble damages for willful infringement. See Docket No. 63 (Prayer for Relief).
In August 2020, the Court approved the parties' Joint Stipulation Regarding Claim Terms, which identified the thirteen contested terms that were addressed at the hearing and set forth the parties' proposed constructions. See Joint Stip. at 2-4. The parties subsequently filed an opening claim construction brief (by Intertrust), a responsive brief (by Dolby), and a reply brief (by Intertrust). See Docket No. 107 ("Opening Br."), No. 109 ("Responsive Br."), and No. 110 ("Reply Br."). On October 20, 2020, the parties conducted a technology tutorial. See Docket No. 116. The claim construction hearing followed on November 3, 2020. See Docket No. 125. B. Patents-in-Issue
Intertrust alleges that Dolby has infringed ten patents: No. 6,157,721 (the "'721 Patent"), No. 6,640,304 (the "'304 Patent"), No. 6,785,815 (the "'815 Patent"), No. 7,340,602 (the "'602 Patent"), No. 7,406,603 (the "'603 Patent"), No. 7,694,342 (the "'342 Patent"), No. 8,191,157 (the "'157 Patent"), No. 8,191,158 (the "'158 Patent"), No. 8,931,106 (the "'106 Patent"), and No. 9,569,627 (the "'627 Patent").
The '721 Patent is titled "Systems and Methods Using Cryptography to Protect Secure Computing Environments." See Docket No. 107-21 ("'721 Patent"). According to the patent's abstract, the invention protects "[s]ecure computation environments . . . from bogus or rogue load modules, executables and other data elements through use of digital signatures, seals and certificates issued by a verifying authority." Id. That verifying authority, "which may be a trusted independent third party," "tests the load modules or other executables to verify that their corresponding specifications are accurate and complete, and then digitally signs the load module or other executable based on tamper resistance work factor classification." Id. The patent also describes how "digital signature algorithms" (or subsets thereof) may be used to limit security breaches. See id.
The '304, '157, and '158 Patents arise from a common "family" of inventions. See Docket No. 121 ("Tutorial Tr.") at 18. All three are titled "Systems and Methods for Secure Transaction Management and Electronic Rights Protection." See Docket Nos. 107-3 ("'304 Patent"), 107-7 ("'157 Patent"), and 107-2 ("'158 Patent"). The abstract of the '304 Patent states that the invention is installed on electronic appliances (e.g., computers) in order to "provide a distributed virtual distribution environment (VDE) that may enforce a secure chain of handling and control, for example, to control and/or meter or otherwise monitor use of electronically stored or disseminated information." See '304 Patent. The VDE "may be used to protect rights of various participants in electronic commerce and other . . . electronic-facilitated transactions," and it is capable of establishing security along multiple "node[s]" of an operating system. Id.
The '342 and '106 Patents also share a common family. See Tutorial Tr. at 25. They are titled "Systems and Methods for Managing and Protecting Electronic Content and Applications." See Docket Nos. 107-19 ("'342 Patent") and 107-8 ("'106 Patent"). The '342 Patent's abstract discloses that the inventions use "[r]ights management software/hardware . . . to attach and detect [various types of] credentials, and to enforce rules that indicate how content and applications may be used if certain credentials are present or absent." See '342 Patent. In one preferred embodiment of the patents, "an application may condition access to a piece of electronic content upon the content's possession of a credential from a first entity, while the content may condition access upon the application's possession of a credential from a second entity and/or the user's possession of a credential from a third entity." Id. Using credentials in this way allows for "complex and flexible control arrangements" but is based on "simple rights management technology." Id.
The '602 Patent is titled "Systems and Methods for Authenticating and Protecting the Integrity of Data Streams and Other Data." See Docket No. 107-27 ("'602 Patent"). The abstract states that this invention "enable[es] a recipient of a cryptographically-signed electronic communication to verify the authenticity of the communication on-the-fly using a signed chain of check values," where "each check value in the chain" is "constructed from the original content of the communication." Id. The patent provides "[f]ault tolerance" as part of this process "by including error-check values in the communication that enable a decoding device to maintain the chain's security in the face of communication errors." Id. In one preferred embodiment, the patent enables secure access to a content file "by constructing a hierarchy of hash values from the file," which can ultimately "be used to efficiently verify the authenticity of arbitrary portions of the content file." Id.
The '815, '603, and '627 Patents at issue elsewhere in the litigation do not contain any disputed claim terms and are not addressed here.
III. DISCUSSION
A. Legal Standard
Claim construction is a question of law, although it may have factual underpinnings. See, e.g., Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1357 (Fed. Cir. 2016). The process "serves to define the scope of the patented invention and the patentee's right to exclude." HTC Corp. v. Cellular Commc'ns Equip., LLC, 877 F.3d 1361, 1367 (Fed. Cir. 2017); see also O2 Micro Int'l Ld. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (stating that the purpose of claim construction is "to determin[e] the meaning and scope of the patent claims asserted to be infringed") (internal quotation marks omitted).
Claim construction follows longstanding principles of interpretation in patent law. First, "the claims of a patent define the invention." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). The words of a claim are generally given their "ordinary and customary meaning," which is the "meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (internal quotation omitted). Such a person "read[s] the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id. at 1313.
"The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation." Phillips, 415 F.3d at 1313.
"In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314. At other times claim language requires more active interpretation, especially since "patentees frequently use terms idiosyncratically." Id. In such situations, the court looks to "those sources [of information] available to the public that show what a person of skill in the art would have understood disputed claim language to mean," such as "the words of the claims themselves, the . . . specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Id. (quotations and citations omitted).
As the previous statement suggests, courts first look to intrinsic evidence, as "the claims themselves provide substantial guidance as to the[ir] meaning." Id. The "context in which a term is used in the asserted claim," "[o]ther claims of the patent in question, both asserted and unasserted," and "[d]ifferences among claims" are all instructive. Id. The claims must also "be read in view of the specification," which is "the single best guide to the meaning of a disputed term" and often "dispositive." Id. at 1315.
Courts "normally do not interpret claim terms in a way that excludes disclosed examples in the specification." Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007). At the same time, "limitations from the specification are not to be read into the claims." Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). This is because "the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so." Phillips, 415 F.3d at 1323. Further, the effect and force of the specification may vary. "[U]pon reading the specification in . . . context, it will [often] become clear whether the patentee is setting out specific examples of the invention to accomplish [its] goals, or whether the patentee instead intends for the claims and the embodiments in the specifications to be strictly coextensive." Id.
In addition to consulting the specification, "the court should also consider the patent's prosecution history," which is another form of intrinsic evidence. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996) (citing Graham v. John Deere Co., 383 U.S. 1, 33 (1966)). However, because the "prosecution history represents an ongoing negotiation between the [Patent and Trademark Office] and the applicant," it "often lacks the clarity of the specification" and is therefore "less useful" for purposes of claim construction. Phillips, 415 F.3d at 1317.
Though intrinsic evidence—the claims, specification, and prosecution history—has primacy at claim construction, courts may also consider the extrinsic record, including expert and inventor testimony, dictionaries, and learned treatises. See id. at 1317-18. Technical dictionaries in particular "can assist the court in determining the meaning of particular terminology to those of skill in the art," as they "endeavor to collect the accepted meanings of terms used in various fields of science and technology." Id. at 1318. And expert testimony can "provide background on the technology at issue," helping "to explain how an invention works, to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." Id. "[C]onclusory, unsupported assertions," however, are not helpful, nor should the court accept expert testimony "that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history." Id. (internal quotation omitted). B. Analysis
The parties have identified thirteen claim terms, divided into nine groups, for the Court to construe. The Court addresses each group in turn. /// /// /// /// ///
1. "rule" & "control information"
| Claim Term | Claim(s) | Intertrust'sProposedConstruction | Dolby's ProposedConstruction | Court'sConstruction |
|---|---|---|---|---|
| "rule" | '158 Patent(claim 4) | "informationand/orprogrammingcontrollingoperations on oruse of resources" | "information, suchas executable codeor associated data,related tocontrolling use ofa digital file" | "informationand/orprogrammingcontrollingoperations on oruse of a digitalfile or electroniccontent item" |
| "controlinformation" | '304 Patent(claim 24) |
Claim 4 of the '158 Patent recites "[a] method utilizing an electronic appliance comprising a processor and a memory encoded with program instructions that, when executed by the processor, cause the processor to perform the method." '158 Patent at Clm. 4. The steps comprising the method include:
• receiving, at the electronic appliance, independently from the electronic content item via separate delivery and protected separately from the electronic content item, a rule specifying one or more permitted uses of the electronic content item;Id. Claim 24 of the '304 Patent recites "[a] method for monitoring use of a digital file at a computing system." '304 Patent" at Clm. 24. The steps comprising the method include:
• determining that the requested use of the electronic content item corresponds to a permitted use of the electronic content item specified in the rule.
• receiving a first entity's control information separately from the digital file;
• using the first entity's control information to govern, at least in part, a use of the
digital file at the computing system.Id.
The question here "is whether 'rule' and 'control information' can only control use of a digital file," as Dolby argues, or whether the claim terms can also apply to the "use of other types of resources," as Intertrust contends. See Docket No. 130 ("Hearing Tr.") at 6-7; see also Responsive Br. at 1 ("The parties' dispute centers on whether the 'rule' / 'control information' is for controlling use of a digital file or any resources ."). Intertrust's primary argument is that its construction is identical to the one recently adopted by the Eastern District of Texas in Cinemark, a case that involves many of the same patents and claim terms as those contested here. See Opening Br. at 1-2; Cinemark at 36. Intertrust characterizes the Cinemark court's construction as "a reasonable middle ground on which all parties [in that case] ultimately agreed" and notes that the court expressly rejected the construction proposed by Dolby here. Opening Br. at 1-2; see also Cinemark at 33, 36 (setting forth the parties' suggested interpretations and "find[ing] the proper construction somewhere between these two proposals"). Dolby counters that Intertrust's "proposal of 'controlling operations on or use of resources ' . . . is not consistent with the actual claim language," which is exclusively directed to a "digital file" in the '304 Patent and to an "electronic content item" in the '158 Patent. Responsive Br. at 1-2. Further, Dolby asserts that "rule" and "control information" cannot encompass all types of "resources," as Intertrust's proposal requires, since the relevant claims themselves distinguish electronic content from such other resources as a "computing system," a "processor," and "memory." Id. at 2.
In its opening brief, Intertrust also objected to Dolby's use of "related to" in its proposed construction. See Opening Br. at 2-4. Dolby subsequently removed that language from its proposed construction "in an effort to narrow the disputes between the parties." Responsive Br. at 1 n.1.
Unless otherwise indicated, additional emphasis is present in the original quotations.
As Intertrust emphasizes, the Cinemark court noted that "[t]he 'importance of uniformity in the treatment of a given patent' suggests a level of deference to previous court constructions." Id. at 11 (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1329 (Fed. Cir. 2008)). A district court's claim constructions "in cases involving the same patent" are therefore "entitled to substantial weight" or, as Intertrust puts it, "reasoned deference." Id. (quoting TPQ Dev., LLC v. Intuit, Inc., 2014 WL 2810016, at *6 (E.D. Tex. June 20, 2014); Reply Br. at 1. Indeed, the Cinemark court tailored its construction of "rule" and "control information" to that of this District in Intertrust Technologies Corp. v. Microsoft Corp., 275 F. Supp. 2d 1031 (N.D. Cal. 2003), a case that involved patents distinct from, but related to, those at issue here and in Cinemark. See Cinemark at 34 n.9, 38-40; Docket No. 107-6 ("Microsoft") at 35-36. Dolby responds by insisting that courts are "not bound to automatically accept the claim construction of another district court" and that they are obliged "to render [their] own independent claim construction." Responsive Br. at 6 (quoting Aircraft Tech. Publishers v. Avantext, Inc., 2009 WL 3817944, at *3 (N.D. Cal. Nov. 10, 2009). But there are strong policy grounds for according "substantial weight" and "reasoned deference" to another district court's construction of identical claim terms, most obviously the benefits of having patents of nationwide scope interpreted the same way throughout the federal system. See TQP Dev., 2014 WL 2810016 at *6 (affirming that "the Court . . . will not depart from [previous claim] constructions absent a strong reason for doing so"). While this Court is therefore not bound by the Cinemark court's rulings, it is nevertheless prudent to hew to that court's substantive constructions unless there are convincing reasons not to.
In this instance, however, Dolby correctly observes that "the Cinemark court's analysis did not discuss the particular issue presented here," i.e., whether "rule" and "control information" should be restricted to the "use of a digital file" or "electronic content item" rather than to the "use of resources" more generally. See Responsive Br. at 1 n.3. Dolby is also correct that the relevant claim language is exclusively directed to either "a digital file" or an "electronic content item." Intertrust responds that "electronic content items and digital files are resources," and that "the specification confirms that controlled content may be contained in 'files and/or other information resources .'" Reply Br. at 1 (quoting '158 Patent at 252:10-11). But the first argument ignores Dolby's point and the second seems to acknowledge that some limitation on "resources" is warranted here. In fact, counsel for Intertrust represented at the claim construction hearing that its proposal was always intended to refer to "information resources" (rather than, for example, hardware resources), Hearing Tr. at 9, and that "electronic content item" would also be an acceptable limitation to impose on these claim terms, id. at 13. Counsel for Dolby likewise agreed that limiting the terms' application to either "a digital file" or an "electronic content item" would be appropriate. Id. at 11-12. As the claims themselves employ the term "electronic content item" but not "information resources," the Court adopts the former (along with the mutually agreed-on "digital file") as part of its construction. See Phillips, 415 F.3d at 1314 (stating that "the claims themselves provide substantial guidance as to the[ir] meaning").
The Court therefore construes the terms "rule" and "control information" to mean "information and/or programming controlling operations on or use of a digital file or electronic content item."
2. "receiving . . . separately" & "receiving, separately"
| Claim Term | Claim(s) | Intertrust'sProposedConstruction | Dolby'sProposedConstruction | Court'sConstruction |
|---|---|---|---|---|
| "receiving . . .separately" /"receiving,separately" | '304 Patent(claim 24)'157 Patent(claims 69,84, 99)'106 Patent(claim 17) | "receiving overdifferent paths, orfrom differentsources, or atdifferent times" | "receiving in adifferent packageand/or viadelivery at adifferent time,over a differentpath, or from adifferent source" | "receiving in adifferentpackage and/orvia delivery at adifferent time,over a differentpath, or from adifferentsource" |
Claim 24 of the '304 Patent, one of the claims in which the contested terms are found, recites "[a] method for monitoring use of a digital file at a computing system." '304 Patent at Clm. 24. The steps comprising the method include:
• receiving a first entity's control information separately from the digital file.Id. Additionally, Claim 69 of the '157 Patent recites "[a] method performed by an electronic appliance comprising a processor and a memory encoded with program instructions that, when executed by the processor, cause the electronic appliance to perform the method." '157 Patent at Clm. 69. The steps comprising the method include:
• receiving, by the electronic appliance, separately from the first piece of electronic content, a first key, the first key being associated with the first piece of electronic content, and the first key being encrypted at least in part.Id. Lastly, Claim 17 of the '106 Patent recites "[a] method for managing the use of electronic content at a computing device." '106 Patent at Clm. 17. The steps comprising the method include:
• receiving, separately from the piece of electronic content, data specifying one or more conditions associated with rendering the piece of electronic content, the one or more conditions including a condition that the piece of electronic content be rendered by a rendering application associated with a first digital certificate.Id.
The parties agree that the contested terms "should be construed to include receiving delivery at a 'different time,' over a 'different path,' or from a 'different source.' The dispute centers on whether the term also covers receiving 'in a different package.'" Opening Br. at 4; see also Responsive Br. at 2.
Intertrust points out that the parties in Cinemark agreed to the construction it now proposes and that the Cinemark court adopted the parties' joint interpretation. Opening Br. at 4-5; Docket No. 107-9 ("Tex. Agreed Terms") at 6-13. Intertrust also argues that the specification of the '157 Patent defines the "separate[]" delivery of rules and controls (as distinct from content) as including "delivery 'at a different time, over a different path, and/or by a different party.'" Id. at 4 (quoting '157 Patent at 127:24-27). In contrast, Intertrust contends, the specification does not define delivery "simply by virtue of receipt in 'different package[s],'" which the disjunctive "and/or" construction proposed by Dolby would entail. See id. at 4-5.
Dolby counters "that the 'receiving . . . separately' phrase may include receipt in separate packages" given "the plain and ordinary meaning of 'separate receipt.'" Responsive Br. at 2. Dolby supports this argument with a hypothetical: if "Person A mails Letter 1 and Letter 2 to Person B in two different envelopes on the same day via the same postal service," and "Person B receives Letter 1 and Letter 2 on the same day via the same postal service," the result is "separate receipt in separate envelopes (different packages)," even though the letters were received as part of "the same delivery (same time, path, and source)." Id. Dolby also stresses that the '157 Patent's specification "explicitly contemplates distribution" of electronic content and control information "using separate containers" or packages. Id. at 3 (paraphrasing '157 Patent at 17:21-26). Finally, Dolby ties its proposed construction here to that of the closely related claim terms "receiving . . . separately . . . and via separate delivery," whose construction is addressed below. Dolby points out (and Intertrust acknowledges) that the '157 Patent expressly defines "separate delivery" to mean delivery "at a different time, over a different path, and/or by a different party." Id. at 3-4, Opening Br. at 4; see also '157 Patent at 127:24-27 (stating that content may be "delivered separately (e.g., at a different time, over a different path, and/or by a different party"). Since the parties agree that the "receiving . . . separately . . . and via separate delivery" claim term is narrower than "receiving . . . separately" and adds an additional requirement to the process, see Hearing Tr. at 21, 25-26, 28, 32, Dolby draws the logical conclusion that "receiving . . . separately" must encompass more than receipt at different times, over different paths, or from different sources, id. at 32-33.
The parties explained at the claim construction hearing that a "package," as used by the relevant patents, may refer to an "electronic container," Hearing Tr. at 18, or a non-physical "data structure," id. at 28.
At the hearing the parties addressed these two sets of claim terms together, agreeing that they "are closely related." Hearing Tr. at 14.
In its reply, Intertrust acknowledges that "items, such as content and control information, may be received in different packages," and avers that its "construction is consistent with that disclosure." Reply Br. at 1-2 (emphasis added). It insists, however, that "receiving . . . separately" is not "satisfied merely by receipt in different packages." Id. at 2. Underlying this contention is Intertrust's belief that two pieces of information sent from the same source, along the same path, and at the same time are not received "separately," even if they arrive in different "packages." See id. In this vein, Intertrust suggests that Dolby's mailed letter hypothetical proves the opposite of what it purports to, as it is analogous "to control information being distributed with, not separately from, content." Id. at 2 n.6.
The Court agrees with Dolby's proposed construction. As an initial matter, Intertrust's reliance on the fact that the parties in Cinemark stipulated to the construction Intertrust proposes here is largely misplaced, as Dolby is not a party to that case and is not beholden to the constructions voluntarily agreed to by defendants there. The Cinemark court also did not offer any analysis of the parties' stipulated construction or whether it represented the best interpretation after hearing argument on the issue. See Tex. Agreed Terms at 6-13. The court's adoption of Intertrust's proposed construction is therefore entitled to less weight than it would be if the parties in Cinemark had actually litigated the question. Additionally, Intertrust's and Dolby's contrasting takeaways from the mailed-letter hypothetical here are inconclusive, as both offer colorable arguments for or against the proposition that two letters received at the same time, from the same source, and via the same postal service, but arriving in separate envelopes, are "received separately." More persuasive is the textual evidence Dolby adduces, which shows that the '157 Patent anticipates delivery of information via separate "containers" or packages. That patent's specification, for example, includes an illustration and an accompanying explanation stating that a "rule and control information may be specified entirely in [a single] container . . . and/or may be delivered . . . as part of another container," e.g., "a separately deliverable container." /// /// /// /// /// /// ///
FIG. 73
Image materials not available for display.
execution for example. This rule and control information may be specified entirely in container 300 z, and/or may be delivered as part of container 300, as part of another container (either within container 300 or a separately deliverable container), and/or may be already present at the remote VDE site.Docket No. 124 ("Demonstratives") at 9 (quoting '157 Patent at 236:32-36); see also '157 Patent at 17:21-26 (stating that electronic content and control information may be packaged in "the same VDE container, and/or may involve the delivery . . . in plural separate VDE content containers and/or employing plural different delivery means"). Especially since both parties agree that the claim terms should be construed according to their plain and ordinary meaning, see Responsive Br. at 2, Reply Br. at 2, the Court finds that the receipt of electronic content and control information in separate containers or packages, as the '157 Patent contemplates, amounts to "receiving" such data "separately."
This conclusion is further supported by Intertrust's assertion, at the hearing, that sending information "from the same source, [at] the same time, [and along the] same path but in a different container" would add "an extra level of protection" to the transmission, in much the same way that sending it "over a different path" also would. See Hearing Tr. at 18-19. This acknowledgment suggests that there is a functional difference between otherwise unitary groups of data (sent from the same source, at the same time, and along the same path) that are sent in a single package versus multiple packages, and that the latter scenario thus amounts to separate receipt of the data. And the Court's construction here harmonizes with the one it adopts with respect to the closely related "receiving . . . separately . . . and via separate delivery" term below.
The Court therefore construes the claim terms "receiving . . . separately" and "receiving, separately" to mean "receiving in a different package and/or via delivery at a different time, over a different path, or from a different source," as Dolby proposes.
3. "receiv[ed/ing] . . . separately . . . and via separate delivery" & receiving . . . independently . . . via separate delivery"
| Claim Term | Claim(s) | Intertrust'sProposedConstruction | Dolby'sProposedConstruction | Court'sConstruction |
|---|---|---|---|---|
| "receiv[ed/ing] . . .separately . . . andvia separatedelivery" /"receiving . . .independently . . .via separatedelivery" | '157 Patent(claims 53, 69,86)'158 Patent(claim 4) | "receiv[ed/ing]through adifferent path" | "receiving viadelivery at adifferent time,over a differentpath, or from adifferent source" | "receiving viadelivery at adifferent time,over adifferent path,or from adifferentsource" |
Claim 69 of the '157 Patent, one of the claims in which the contested terms are found, recites "[a] method performed by an electronic appliance comprising a processor and a memory encoded with program instructions that, when executed by the processor, cause the electronic appliance to perform the method." '157 Patent at Clm. 69. The steps comprising the method include:
• receiving, by the electronic appliance, separately from the first piece of electronic content, and via separate delivery, a first electronic object, the first electronic object specifying one or more permitted or prohibited uses of the first piece of electronic content.Id. Similarly, Claim 4 of the '158 Patent recites "[a] method utilizing an electronic appliance comprising a processor and a memory encoded with program instructions that, when executed by the processor, cause the processor to perform the method." '158 Patent at Clm. 4. The steps comprising this method include:
• receiving, at the electronic appliance, independently from the electronic content item via separate delivery and protected separately from the electronic content item, a rule specifying one or more permitted uses of the electronic content item.Id.
Intertrust again proposes the construction that the parties in Cinemark agreed to. See Opening Br. at 5, Tex. Agreed Terms at 13-18. Dolby, meanwhile, suggests substantially the same construction that Intertrust proposed for the previous claim term, i.e., "receiving . . . separately." The parties agree that "that the 'separate delivery' term is the result of a disclaimer adopted to overcome prior art rejections during prosecution of the '157 and '158 Patents." Responsive Br. at 4. They also agree, as mentioned above, that this disclaimer was meant to "narrow [the claims'] scope" from the overly "broad" construction given the patents by the PTO Examiner when they recited only "receiving . . . separately" or "receiving . . . independently" but not "via separate delivery." See Opening Br. at 6-7. The parties disagree, however, about the implications of the prosecution history for construing these terms.
Intertrust explains that during prosecution the original wording of what are now claims 53, 69, and 86 of the '157 Patent, "receiving, separately from the . . . content, a first electronic object specifying one or more permitted or prohibited uses of the . . . content," was rejected as anticipated by prior art. Id. at 5-6 (quoting Docket No. 107-10 at 10-17). The Examiner concluded that the claims' "receiving . . . separately" language failed to capture "the implicitly alleged limitation 'the electronic rule and electronic content are transmitted via two independent (or separate) paths .'" Id. at 6 (quoting Docket No. 107-11 at 2-3). In response, "the Applicant amended the claims to further recite 'receiving . . . separately from the . . . content, and via separate delivery, a first electronic object . . . ,' after which the Examiner promptly allowed the claims." Id. (citing Docket No. 107-13 at 11-19; Docket No. 107-14). A similar amendment process occurred with respect to the '158 Patent, which originally recited "that the claimed rule was 'receiv[ed] . . . independently' from the content." Id. In that case, the same Examiner again found that "the implicitly alleged limitation . . . 'the electronic rule and electronic content are transmitted via two independent (or separate) paths ' (or not transmitted within the same package at one time ' has not been recited into the claim." Id. (quoting Docket No. 107-15 at 3). Intertrust once more amended the claim to add "via separate delivery" to the previously proposed "receiving . . . independently" language, and the claim was allowed. See id. (citing Docket No. 107-16 at 006-008). To Intertrust, the claims' "via separate delivery" language is directly responsive—and so functionally equivalent—to the Examiner's stated interpretation of the claims' implied limitation, "independent (or separate) paths."
To Dolby, this prosecution history shows instead that Intertrust chose not to adopt the examiner's suggested construction, as "the 'via separate delivery' language actually claimed . . . in the patent" differs from the examiner's "via two independent (or separate) paths." Responsive Br. at 4; see also Howmedica Osteonics Corp. v. Wright Med. Tech Inc., 540 F.3d 1337, 1344 (Fed. Cir. 2008) (noting that "if the patentee had intended" a particular limitation to exist "he could have drafted [the claim] to require that" limitation). Dolby also points to statements from the '158 Patent file history, where the amendment Intertrust ultimately adopted was described as " a common agreement . . . for allowance " between the Examiner and the patentee—i.e., the result of a negotiation between the two and not merely a borrowing by the patentee from the Examiner. Responsive Br. at 5 (quoting Docket No. 107-16 at 10); see also Reply at 3-4 (describing the same process). Dolby further observes that Intertrust "d[id] not concede" that the Examiner's interpretation of the prior art scope was correct when it sought allowance for the amended claim language featuring "via separate delivery." Demonstratives at 14 (quoting Docket No. 107-13 at 24-25). This somewhat opaque prosecution history is important, Dolby stresses, because the Federal Circuit has held that it is only when a patentee "makes clear and unmistakable prosecution arguments limiting the meaning of a claim term in order to overcome a rejection" that "courts limit the relevant claim term to exclude the disclaimed matter." Id. at 13 (quoting SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005)). Where a patentee's disclaimer during the prosecution history is "ambiguous," in contrast, a "court will not use [the disclaimer] to limit a claim term's ordinary meaning." Id. (citing SanDisk, 415 F.3d at 1287). Dolby then argues, as described above, that the '157 Patent itself defines "separate delivery" when it states that, through the invention, information may be "delivered separately (e.g., at a different time, over a different path, and/or by a different party." Id. at 12 (quoting '157 Patent at 127:24-27); see also Opening Br. at 4 (quoting the same passage).
The Court again agrees with Dolby, as its proposed construction has the virtue of being rooted in "the actual claim language adopted by the patentee." See Responsive Br. at 4; see also Innova/Pure Water, 381 F.3d at 1115 (affirming that "the claims of a patent define the invention"). Again, the '157 Patent expressly identifies "separate delivery" with delivery "at a different time, over a different path, and/or by a different party," '157 Patent at 127:24-27, an identification that Intertrust also acknowledged in its discussion of the "receiving . . . separately" claim terms. See Opening Br. at 4. This explicit claim language sets a high bar for Intertrust to clear in arguing for an alternative construction, and it fails to do so here. As with the previous claim terms, the defendants' stipulation in Cinemark to the construction Intertrust proposes is mostly irrelevant here, as the court in that case did not offer any analysis of the issue beyond accepting the parties' proposal. See Tex. Agreed Terms at 13-18. And while Intertrust is correct that "statements by an examiner that shed light on the examiner's understanding of the claim scope are probative in determining the proper scope of [a] claim," Reply at 4 (citing Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d 1173, 1182-83 (Fed. Cir. 2006)), the Examiner here did not unmistakably equate the addition of the phrase "via separate delivery' with "via two independent (or separate) paths," as Intertrust suggests. Moreover, Intertrust did not incorporate language otherwise adopting the Examiner's position." Taken alongside Intertrust's refusal to concede the propriety of the Examiner's findings during prosecution, this ambiguity does not satisfy the Federal Circuit's requirement that a patentee "make[ ] clear and unmistakable prosecution arguments limiting the meaning of a claim term in order to . . . exclude the disclaimed matter." See SanDisk Corp., 415 F.3d at 1286.
The Court therefore construes the claim terms "receiv[ed/ing] . . . separately . . . and via separate delivery" and "receiving . . . independently . . . via separate delivery" to mean "receiving via delivery at a different time, over a different path, or from a different source," as Dolby proposes.
4. "secure processing unit"
| Claim Term | Claim(s) | Intertrust'sProposal | Dolby'sProposal | Court'sConstruction |
|---|---|---|---|---|
| "secure processingunit" | '157 Patent(claims 69, 87,89)'158 Patent(claim 4) | "processing unitthat makesinformation andprocessesresistant tounauthorizeduse" | "processingcircuitry thatfunctions in aself-contained,trustedcomputingenvironment" | "processing unitthat makesinformation andprocessesresistant tounauthorizeduse" |
Claim 69 of the '157 Patent, a representative claim in which the disputed term is found, recites "[a] method performed by an electronic appliance comprising a processor and a memory encoded with program instructions that, when executed by the processor, cause the electronic appliance to perform the method." '157 Patent at Clm. 69. The steps comprising the method include:
• decrypting, by the electronic appliance, the first key using (a) a second key and (b) a secure processing unit running on the electronic appliance, the second key being stored in memory of the secure processing unit.Id. Additionally, Claim 4 of the '158 Patent recites "[a] method utilizing an electronic appliance comprising a processor and a memory encoded with program instructions that, when executed by the processor, cause the processor to perform the method." '158 Patent at Clm. 4. The steps comprising the method include:
• using, at least in part, a decryption key to decrypt the electronic content item, the decryption key being stored in a secure processing unit contained in the electronic appliance.Id.
The issue here concerns the scope of the secure processing unit ("SPU"), namely whether the SPU must take the form of the "special purpose hardware" that is shown in certain figures of the applicable patents' specifications. See Hearing Tr. at 35-36.
Intertrust again proposes the construction that the Cinemark court adopted (this time after the parties litigated the issue), while Dolby suggests the same interpretation as the defendants in that case, which the court declined to adopt. See Opening Br. at 7, Cinemark at 12-17. Intertrust's basic point is that the SPUs described in the relevant claims "may take many different forms," including various types of hardware or software embodiments. Opening Br. at 7; see also, e.g., '157 Patent at 20:48-54 (providing that the SPU may be a "special purpose processor," or hardware); id. at 44:57-61 (providing that the SPU can be "emulated in software"). An SPU is simply technology that "protects against tampering" or "unauthorized observation." Hearing Tr. at 36. Dolby's more restrictive construction, however, "improperly excludes preferred embodiments" of the invention. Reply at 5-6. In sum, Intertrust faults Dolby's proposal for simply not being "broad enough to cover every disclosed embodiment of an SPU." Id. at 6. Intertrust also contends that Dolby's construction is "overly confusing" because it fails to explain what it "means for 'processing circuitry' (physical hardware) to 'function[] in a self-contained, trusted computing environment,'" which is merely "a logical construct referring to the capabilities available to a software program." Id.
For example, the '157 Patent's specification discloses "that a secure processing environment (SPE) is a 'self-contained computing . . . environment[]' that may be ' loadable into . . . [an] SPU[]." Opening Br. at 8 (quoting '157 Patent at 77:52-78:3). Dolby's proposal, however, requires the SPU to "function[] in" a "self-contained, trusted computing environment," i.e., an SPE. See id.
Dolby counters that the '157 Patent does not "disclose or claim the SPU as software," but only as hardware. See Responsive Br. at 7. The specification merely mentions "emulating an SPU in software," which is not the same thing as disclosing an SPU that is itself software. Id. at 6; see also '157 Patent at 44:57-61 (providing that the "SPU is emulated in software"). Moreover, the '157 Patent consistently refers to hardware that requires such features as "processing circuitry," "a microprocessor," and "memory." Hearing Tr. at 40-41. Dolby thus proposes the term "processing circuity" to encompass these mandatory hardware characteristics. It also defends its proposition that the SPU hardware operates within "a self-contained, trusted computing environment" by citing figures 6 and 9 in the '157 Patent's specification, which situate the SPU inside a "tamper-resistant barrier." See id. (quoting '157 Patent at Figs. 6, 9). Dolby's use of "self-contained" and "trusted" is thus meant to capture the "notion that the [tamper-resistant] barrier is an enclosure." Id. at 43-44.
Regarding this issue, Dolby offers the example of a PC computer running a Windows operating system that also has Apple emulation software installed on it: the emulation software endows the PC "with certain Apple functionality," but "one would not refer to the PC device as now being an Apple device." Responsive Br. at 6. "Likewise, an emulation of an SPU can function like a true SPU, but that does not convert the emulation into an actual SPU." Id. For its part, Intertrust acknowledged at the hearing that an SPU cannot be "purely software" and that it must include at least some hardware. Hearing Tr. at 35.
As with this case's first set of disputed terms, the Cinemark court staked out something of a middle ground between the constructions of an SPU proposed by the parties there. The court found that "secure" in the '157 and '158 Patents "refers to resistance to unauthorized use of information and processes." Cinemark at 14. Beyond this, the court observed that the relevant claims "provide little guidance as to the meaning of 'secure processing unit,'" but concluded that they "primarily situate the 'secure processing unit' within the claimed invention" as hardware. Id. at 14-15. At the same time, the claims also explain "that the SPU may be implemented in software." Id. at 16. Thus, while the hardware-focused construction that Dolby here urges is accurate as to many of the patents' preferred embodiments, the Cinemark court held that "the defining nature of the SPU is that it protects information and processes against unauthorized use such as tampering and unauthorized viewing." Id. at 17; see also '157 Patent at 20:24-34 (stating that the SPU "protect[s] against tampering with, or unauthorized observation of, information and functions").
Given the "reasoned deference" that the Cinemark court is owed, see Reply at 1, this Court presumes that the earlier construction is proper unless Dolby offers "a strong reason" not to, see TQP Dev., 2014 WL 2810016 at *6. Dolby has not done so here. Most problematically, its proposed construction contains numerous terms—"processing circuity," "self-contained," and "trusted"—that are not found in the language of the applicable patents themselves. Dolby's proposal is therefore linguistically imprecise. It also appears to be conceptually imprecise, as Dolby argued at the hearing both that the SPU must be hardware and that "[t]he SPU operates within" a secure processing environment, which can evidently take the form of software. See Demonstratives at 22, 24. As Intertrust argued during the hearing, it is not clear how "circuitry can function in software." Hearing Tr. at 45 (emphasis added). Intertrust's proposed construction, meanwhile, is far better than Dolby's at accommodating the many exemplary embodiments described in the patents' specifications. See Verizon, 503 F.3d at 1305 (stating that courts "normally do not interpret claim terms in a way that excludes disclosed examples in the specification"). And Intertrust's proposal has the virtue of simplicity, defining the claim term as a commonplace "processing unit" that delivers a heightened level of security, i.e., "resistance to unauthorized use of information and processes." See Cinemark at 14.
As Intertrust explained at the hearing, "[p]rocessing units are well-known components," contained "in every single computer" and including such devices as a CPU. Hearing Tr. at 35-36.
The Court therefore construes the claim term "secure processing unit" to mean "processing unit that makes information and processes resistant to unauthorized use," as Intertrust proposes. /// /// /// /// /// /// ///
5. "rendering application" / "application program capable of rendering electronic content"
| Claim Term | Claim(s) | Intertrust'sProposedConstruction | Dolby'sProposedConstruction | Court'sConstruction |
|---|---|---|---|---|
| "renderingapplication" /"applicationprogram capableof renderingelectroniccontent" | '106 Patent(claim 17)'342 Patent(claims 1,12) | "applicationprogram thatprocesses contentto play it throughan audio output(e.g., speakers) ordisplay it on avideo output (e.g.,a screen)" | "softwareprogram thatpresentselectronic contentin a formdesigned forhuman perceptionor viewing" | "applicationprogram thatprocesses contentto present itthrough an audiooutput (e.g.,speakers) ordisplay it on avideo output (e.g.,a screen)" |
Claim 17 of the '106 Patent recites "[a] method for managing the use of electronic content at a computing device." '106 Patent at Clm. 17. The steps comprising the method include:
• executing a rendering application on the computing device, the rendering application being associated with at least the first digital certificate, the first digital certificate having been generated by a first entity based at least in part on a determination that the rendering application will handle electronic content with at least a predefined level of security;Id. Claim 1 of the '342 Patent, a representative claim in which the disputed term is found, similarly recites "[a] method for managing the use of electronic content at a user's computing device." '342 Patent at Clm. 1. The steps comprising the method include:
• requesting, through a rights management engine executing on the computing device, permission for the rendering application to render the piece of electronic content.
• executing an application program on the user's computing device, the application program being capable of rendering electronic content, the application program having at least a first digital certificate associated therewith . . . .Id.
The issue here is whether "rendering application" encompasses the processing of electronic (or audiovisual) content in addition to the presentation (or playing) of that content. See Hearing Tr. at 37. Intertrust argues that the Court's construction must account for the processing of content, while Dolby argues that it need only capture presentation.
Intertrust once more proposes the construction adopted in Cinemark after the parties in that case litigated the issue. See Opening Br. at 9, Cinemark at 49. As with other disputed claim terms, the Cinemark court settled on a compromise interpretation, concluding (based on the '106 Patent in particular) that "the defining characteristic of the 'rendering application'" is "rendering" or "presenting" content, but that the application "may have functionality beyond rendering." Cinemark at 47-48. The court also found that "the 'presenting' that the 'rendering application' effects includes both audio (e.g., music players) and images (e.g., document editors)." Id. The court thus endorsed Intertrust's argument that a rendering application not only "plays" but may also "process[]" content, while also agreeing with defendants' position there (and Dolby's here) that the term applies primarily to presenting audio and visual outputs. See id. at 45.
The court derived its construction in part from this District's ruling in the related Microsoft case. See Cinemark at 48-49.
In support of the Cinemark decision, Intertrust cites various examples from the '106 Patent where the specification "states that a rendering application . . . processes content" and "describes various ways [that] rendering applications process content, such as by accessing, using, moving, or otherwise manipulating the content." Opening Br. at 9; see, e.g., '106 Patent at 10:8-11 (describing how rendering "applications [may] be operable to retrieve . . . instructions and use them to process . . . protected content"); id. at 17:5-11 (stating that "the rendering application" may be "capable of applying policies, rules, and/or controls to govern the use of content or the performance of events"). Intertrust also argues that a person of ordinary skill in the art ("POSITA") "would have understood" that the '106 Patent's "numerous examples of rendering applications . . . process content prior to or during presentation by accessing and interpreting the content, applying rules and controls to govern use," and so on. Opening Br. at 10. Intertrust contends that Dolby's construction, in contrast, "arguably only covers the final transmission of content, and excludes all other tasks that must take place before that transmission can occur." Id.
Intertrust argued at the hearing that whereas Dolby conceives of the rendering application as "only the device . . . that is going to show content for human perception," the patents indicate that they include such varied technology as "document editors or viewers, electronic book readers, video players, music players, electronic mail or messaging programs[,] or the like." Hearing Tr. at 47-48.
Dolby insists that a rendering application must "actually perform the central function of rendering." Responsive Br. at 9. It argues that Intertrust impermissibly seeks to enlarge the scope of the applicable patents to encompasses an application that "'processes' the content in any manner before final transmission." Id. Such a broad interpretation is unwarranted, Dolby asserts, because the pre-presentation processes that Intertrust says a POSITA would have associated with a rendering application are typically performed, per the relevant claim language, by a rights management engine. Id. at 10; see, e.g., '106 Patent at Clm. 17 (reciting "requesting, through a rights management engine," permission to render content); '342 Patent at Clm. 1 (reciting "using a rights management program . . . to examine the data"). "In any event," Dolby avers, its proposed "construction does not preclude [the] processing" functions that Intertrust claims since those "capabilities are encompassed in 'present[ing] electronic content in a form designed for human perception or viewing." Id. at 10 n.5.
As before, the Court accords "substantial weight" to the Cinemark court's construction, see TPQ Dev., 2014 WL 2810016 at *6, which borrowed from both parties' proposals in that case and drew on this District's Microsoft decision involving related patents. Focusing on the specification of the '106 Patent, the Cinemark court found both that "the 'rendering application' may have functionality beyond rendering (presenting)" and "that 'rendering' is the defining characteristic of the 'rendering application.'" Cinemark at 48 (discussing '106 Patent at 16:67-17:11). It therefore tailored a construction—"application program that processes content to play it through an audio output (e.g., speakers) or display it on a video output (e.g., a screen)," id. at 49—that incorporated the rendering application's capacity for processing content (e.g., by "applying policies, rules, and/or controls to govern the use of content,"'106 Patent at 17:7-8) as well as its primary function in presenting content.
This Court agrees with the substance of that decision. Intertrust has demonstrated that the relevant patents disclose many "processes" performed by the rendering application that go beyond the mere end-stage presentation of audiovisual content. This conclusion is not contradicted by Dolby's arguments about the role of the rights management program in processing content. As Intertrust puts it, "[j]ust because a rights management program may perform some of the rendering application's processing functions does not mean that the rendering application does not perform any of them." Reply at 7 (emphasis added). And while Dolby is correct in arguing that the Court's construction should not encompass content processing that only potentially relates to presentation, see Hearing Tr. at 53-54, the Court is satisfied that the Cinemark construction effectively limits content processing to that which is necessary for, and inextricably linked with, eventual presentation.
The Court concludes, however, that insofar as Dolby's preferred term "present" has special meaning in the applicable patents that the Cinemark construction's "play" might fail to fully capture, it is proper to substitute the former for the latter. Doing so reinforces Dolby's point, which the Cinemark court also recognized, that the rendering application's "defining characteristic" is its presentation of audiovisual content. See Responsive Br. at 9-10, Cinemark at 48.
The Court therefore construes the claim terms "rendering application" and "application program capable of rendering electronic content" to mean "application program that processes content to present it through an audio output (e.g., speakers) or display it on a video output (e.g., a screen)."
6. "wherein the piece of electronic content comprises an authorizing document . . ."
| Claim Term | Claim(s) | Intertrust'sProposedConstruction | Dolby'sProposedConstruction | Court'sConstruction |
|---|---|---|---|---|
| "wherein the piece ofelectronic contentcomprises an authorizingdocument, and thesecond entity associatesthe second digitalcertificate with theauthorizing document ifthe authorizing documentoriginated from acertified entity" | '342Patent(claim 1) | Clause islimiting, butdoes not add anadditional stepperformed by asecond entity | The claimedmethod includesan action("associates . . .")to be performedby the secondentity | The claimedmethod includesan action("associates . . .")to be performedby the secondentity |
Claim 1 of the '342 Patent, as described above, recites "[a] method for managing the use of electronic content at a user's computing device." 342 Patent at Clm. 1. The claim discloses six steps that comprise the method. The full claim is quoted below (with the disputed term bolded), as the claim's organization is crucial to the parties' arguments.
1. A method for managing the use of electronic content at a user's computing device, the method including:
executing an application program on the user's computing device, the application program being capable of rendering electronic content, the application program having at least a first digital certificate associated therewith, the first digital certificate being generated by or on behalf of a first entity comprising an association of one or more content providers, the first digital certificate being associated with the application program if the application program meets certain predefined criteria set by the association, the
predetermined criteria including that the application program will handle the electronic content with at least a predefined level of security;Id.
requesting the application program to render a piece of electronic content, the piece of electronic content having at least a second digital certificate associated therewith, the second digital certificate being generated by or on behalf of a second entity different from the first entity, and the piece of electronic content further having associated therewith at least one electronic rule, the at least one electronic rule including data specifying one or more conditions associated with rendering the piece of electronic content, the one or more conditions including a condition that the piece of electronic content may be rendered by an application program having the first digital certificate associated therewith;
verifying, at the user's computing device, the association of the second digital certificate with the piece of electronic content;
using a rights management program running on the user's computing device to examine the data included in the at least one electronic rule and to determine that the piece of electronic content may be rendered by an application program having the first digital certificate associated therewith;
verifying the association of the first digital certificate with the application program using the rights management program; and
rendering the piece of electronic content using the application program, wherein the piece of electronic content comprises an authorizing document, and the second entity associates the second digital certificate with the authorizing document if the authorizing document originated from a certified entity.
Intertrust argues that the contested "wherein" clause "recites a claim element ('associates') that the second entity satisfies elsewhere and in advance of the user's computing device rendering the piece of electronic content." Reply at 7. The clause thus contributes to "the preexisting environment in which the claim steps are performed," and does not refer to a separate step that the second entity undertakes. Id. (emphasis added). Intertrust asserts that because Claim 1 "is expressly limited to 'managing the use of electronic content at a user's computing device ' . . . all six of the recited claim steps are performed at, on, and/or by the user's computing device (not elsewhere by a second entity)." Opening Br. at 11. In other words, "the 'wherein' clause does not impose an additional claim step performed elsewhere by a second entity," which Intertrust believes would be inconsistent with the other claim steps, but is merely "a prerequisite for performance of" those steps. Id. at 12. More specifically, the "wherein" clause "requires that the 'piece of electronic content' recited earlier in the claim [at step 2] must 'comprise[] an authorizing document,' and that the 'second digital certificate'—described earlier in the claim [also at step 2] as 'generated by or on behalf of a second entity' and 'associated [with the piece of electronic content]'—is associated with the content's authorizing document by the second entity." Id. (quoting '342 Patent at Clm. 1). In support of this argument, Intertrust also emphasizes the "grammar and indentation of the claim," where "the six claim steps . . . 'each start on a separate line with a gerund, a verb that acts as a noun, demonstrating how the method should be performed.'" Id. (quoting Core Wireless Licensing S.A.R.L. v. Apple Inc., 2016 WL 6427850, at *5 (N.D. Cal. Oct 31, 2016)). "In contrast, the 'wherein' clause is 'contained within the indentation for [the claim's 'rendering' step] and do[es] not begin with a gerund.'" Id. at 11-12 (quoting Core Wireless, 2016 WL 6427850 at *5).
Dolby counters that "the grammar and context of the claim" prove that the "wherein" clause "recites an action to be performed," "not a mere prerequisite for performing certain actions." Responsive Br. at 11. Dolby divides step 6 of Claim 1 into three parts, the first beginning "rendering the piece . . . ," the second beginning "wherein the piece . . . ," and the third beginning "and the second entity associates . . . ." Id. at 11-12. The third part "is a separate independent clause composed of a subject ('the second entity'), an action verb ('associates'), and an object of that action verb ('the second digital certificate')." Id. at 12. This syntax proves to Dolby that the limitation "requires the second entity to perform the 'associates' step." Id. at 11. Dolby also cites authority from the Federal Circuit and elsewhere holding that a clause may "require a second method step" even when introduced by "wherein." See id. at 12 (citing, e.g., Desenberg v. Google, Inc., 392 Fed. Appx. 868, 871 (Fed. Cir. 2010)). Dolby concludes by distinguishing the instant case from Core Wireless, where "the claim language, specification, and expert testimony all demonstrated that the wherein clauses at issue described the configuration of a radio network and not method steps to be performed by that network." Id. at 13; see also Core Wireless, 2016 WL 6427850 at *3-5. Here, in contrast, "the focus of the invention . . . is on the entire process for managing use of content and includes necessary steps performed by entities other than the user's computer." Responsive Br. at 13.
The Court adopts Dolby's proposed construction. While both parties' arguments are at times abstruse, Intertrust's key contention that the "wherein" clause in step 6 of Claim 1 refers to and limits language in step 2 is implausible. As described above, Claim 1 mentions a "second digital certificate" and "second entity" in its second step, beginning "requesting the application program to render a piece of electronic content . . . ." '342 Patent at Clm. 1. Step 2 states that the application program receives a request "to render a piece of electronic content, the piece of electronic content having at least a second digital certificate associated therewith, the second digital certificate being generated by or on behalf of a second entity different from the first entity." Id. Then, at step 3, "the association of the second digital certificate with the piece of electronic content" is verified. Id. And at step 6, "the second entity associates the second digital certificate with the authorizing document" that is comprised of "the piece of electronic content." Id. This sequence appears to indicate that the second entity's association of the second digital certificate with the authorizing document has not previously been recited. It is therefore hard to understand how, as Intertrust argues, the second entity satisfies the "associates" claim element "elsewhere and in advance of the user's computing device rendering the piece of electronic content." See Reply at 7 (emphasis added).
The organizational logic of Intertrust's proposed construction is likewise difficult to fathom. As Dolby observed at the hearing, Intertrust is "asking the Court . . . to take [the "wherein"] clause . . . and move it up to three limitations earlier" in the claim. Hearing Tr. at 64. Even if the '342 Patent does not provide a model of claim-drafting clarity, the structure that Intertrust posits here defies common sense. Moreover, the Court finds it significant that, as Dolby stresses, the clause beginning "and the second entity" is written in the present, not past, tense and employs an active verb: "the second entity associates the second digital certificate with the authorizing document . . . ." Tellingly, Intertrust is forced to revise the clause's grammar in arguing that the "wherein" clause "do[es] not impose an additional claim step," stating that "the 'second digital certificate' . . . is associated with the content's authorizing document by the second entity." See Opening Br. at 12 (emphasis added). While such a passive construction might support Intertrust's contention that the "wherein" clause is merely "a prerequisite for performance of the recited claim steps," id., the active construction does not. Rather, the grammar of the clause suggests that it "recites an action to be performed as part of the claimed 'method for managing the use of electronic content.'" Responsive Br. at 11.
The Court therefore construes the claim term "wherein the piece of electronic content comprises an authorizing document, and the second entity associates the second digital certificate with the authorizing document if the authorizing document originated from a certified entity" to refer to "an action ("associates . . .") to be performed by the second entity," as Dolby proposes.
7. "the user"
| Claim Term | Claim(s) | Intertrust'sProposal | Dolby'sProposal | Court'sConstruction |
|---|---|---|---|---|
| "the user" | '721 (claims 9and 29) | plain andordinarymeaning | indefinite | "the person orentity using anelectronicappliance" |
Claim 9 of the '721 Patent recites "[a] method of distinguishing between trusted and untrusted load modules." '721 Patent at Clm. 9. The steps comprising the method include:
(a) receiving a load module,Id. Claim 29 of the same patent recites "[a] method of distinguishing between trusted and untrusted executables." Id. at Clm. 29. The steps comprising the method are identical to those in Claim 9, except that "executable" is substituted for "load module." See id.
(b) determining whether the load module has an associated digital signature,
(c) if the load module has an associated digital signature, authenticating the digital signature using at least one public key secured behind a tamper resistant barrier and therefore hidden from the user; and
(d) conditionally executing the load module based at least in part on the results of authenticating step (c).
The issue here is whether the '721 Patent defines "the user" with sufficient specificity so that a POSITA could discern the term's meaning and, as a result, the scope of the invention. Intertrust argues that the claims and specification of the patent make clear "that 'the user' refers to the user of the computing system that is the subject of the claims." Opening Br. at 12. Dolby counters that, because the claims "recite no antecedent basis for 'the user'" and otherwise "fail to provide reasonable notice of the scope of the claimed invention," the claims fail for indefiniteness. Responsive Br. at 14.
"[I]ndefiniteness is a question of law and in effect part of claim construction." ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). Under § 112 of the Patent Act, patent claims must particularly point out and distinctly claim the subject matter of the invention. 35 U.S.C. § 112. A claim, when viewed in light of the intrinsic evidence, must "inform those skilled in the art about the scope of the invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). If it does not, then the claim fails § 112 and is invalid as indefinite. See id. at 901. Whether a claim is indefinite is determined from the perspective of a POSITA at the time the application for the patent was filed. Id. at 911. As a charge of indefiniteness is a challenge to the validity of a patent, the failure of any claim-in-suit to comply with § 112 must be shown by clear and convincing evidence. See BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017).
Intertrust points to numerous passages in the '721 Patent's specification that mention a "user" and so provide an antecedent definition for the claim language. For example, the specification "warns that 'introducing a bogus load module is one of the strongest possible forms of attack (by a protected processing environment user or anyone else),' and touts Intertrust's techniques for 'securing protected processing environments against inauthentic load modules introduced by the computer owner , user , or any other party." Opening Br. at 13 (quoting '721 Patent at 2:66-3:9, 4:1-26). Intertrust also points to language in the specification that refers to "the significant threat that the owner of [a] protected processing environment . . . may himself attack the environment." Id. (quoting '721 Patent at 14:23-38). It then introduces testimony from its expert, Dr. Jakobsson, arguing that "a POSITA would understand that any threat posed by the owner of a protected processing environment could also be posed by a user of a computer." Id. (quoting Docket No. 80-3 ("Jakobsson Decl.") ¶ 49). Intertrust thus contends that "the user" in the '721 Patent bears a plain and ordinary meaning in which, for example, a computer user and owner may in some instances be one and the same and in other instances not. In its reply, however, Intertrust also suggests its amenability to more limited constructions of the claim term, such as the user of "a computer or other electronic system," of "an electronic appliance" that is "part of a computing system," or of "a computer system." See Reply at 9.
Dolby counters that "the claims do not recite a 'computing system'" since, according to its expert, Dr. Chatterjee, they fail to "specify any 'particular device, machine, portion(s) of a device, software or person that is involved with performing any of the steps.'" Responsive Br. at 14 (quoting Docket No. 80-4 ("Chatterjee Decl.") ¶ 31). As a result, "a POSITA would be unable to determine with reasonable certainty whether 'the user' refers to a user of the claimed method (or a portion thereof . . .), a user of the claimed 'load module' (claim 9) or the claimed 'executable' (claim 29), or both." Id. (citing Chatterjee Decl. ¶¶ 30-38). Dolby then identifies multiple references to different kinds of "users" in the '721 Patent's specification, which it argues render the claims' scope uncertain. Dolby also argues that Intertrust's suggestions in its briefing that "the claimed 'the user' includes 'the protected processing environment user ,' ' owner of protected processing environment,' ' user of a computer,' ' computer owner ,' [or] user of a 'computer system' or 'other electronic system'" further highlights the indeterminacy of the term. Id. at 16 (quoting Opening Br. at 14-15). Dolby lastly points out that "the only claim language that could arguably provide any implied antecedent basis" for "user"—"authenticating the digital signature using at least one public key"—only enhances the confusion, as "public key" is in part defined by its being "hidden from the user." Id. at 17 (quoting '721 Patent at Clms. 9 and 29). Dolby thus contends that the claim language is circular and fails to provide adequate notice to a POSITA of the claims' metes and bounds.
The specification, for instance, alternatively mentions "user[s] of executables," "potential users of the load module," "ultimate users," and "a network of users." Id. at 15 (quoting '721 Patent at 6:11-12, 5:52, 5:67, 12:41).
The parties also dispute the significance of the '721 Patent's prosecution history. See Opening Br. at 16-17, Responsive Br. at 15-16. The Court, however, finds these arguments largely unilluminating.
The Court concludes that Dolby has not shown that "the user" is indefinite with clear and convincing evidence, as it is required to do under 35 U.S.C. § 112. Dolby demonstrates that the '721 Patent defines the contested term broadly such that it encompasses many different potential users. But, as Intertrust observes, just because the invention "could be used by a wide variety of computer users" does not prove "that the scope of the claims cannot be reasonably ascertained by a POSITA." Reply at 10. Dolby's protest, for example, that the specification allows for "a government or commercial organization as a whole [to] be the user," as well as "an individual employee," Demonstratives at 47, does not illustrate that the disputed term is indefinite, only that corporate entities and individuals alike may be "users" of the patent. Moreover, Intertrust supports its position with apposite caselaw. In In re Downing, for example, the Federal Circuit rejected the argument that claims were indefinite due to the lack of an explicit antecedent for the term "the end user" because, in the court's view, the "recitation of one end user could only refer to the end user using the product." See Opening Br. at 13 (quoting 754 Fed. Appx. 988, 996 (Fed. Cir. 2018)). "Who else could the end user be?" the court rhetorically asked. 754 Fed. Appx. at 996. Similarly, in Intellectual Ventures II LLC v. BITCO General Insurance, the Eastern District of Texas disagreed with the contention that a claim's references to "many potential users," rather than one "particular user," rendered it indefinite. Reply at 9 (quoting 2016 WL 125594, at *16 (E.D. Tex. Jan. 11, 2016)). The court concluded that "the claim [was] not required to make such an identification" since "the 'particular' user [was] merely one of the 'one or more potential users.'" 2016 WL 125594 at *16. Intertrust persuasively argues that, as in Intellectual Ventures II, "the 'users' described by the specification are [all] potential users of a computer system." Reply at 9.
In sum, the Court agrees with the substance of Intertrust's argument here. It nevertheless concludes that some additional clarification regarding the object of the "use" would be helpful. As Intertrust argued at the hearing (consistently with its briefing; see Reply at 9) that "the user" refers to "the person or entity using an electronic appliance," the Court adopts that formulation.
The Court therefore construes the claim term "the user" to mean "the person or entity using an electronic appliance."
8. "generating a progression of check values, each check value in the progression being derived from a portion of the block of data and from at least one other check value in the progression"
| Claim Term | Claim(s) | Intertrust'sProposedConstruction | Dolby'sProposedConstruction | Court'sConstruction |
|---|---|---|---|---|
| "generating a progressionof check values, eachcheck value in theprogression being derivedfrom a portion of the blockof data and from at leastone other check value inthe progression" | '602 Patent(claim 25) | plain andordinarymeaning | indefinite | plain andordinarymeaning |
Claim 25 of the '602 Patent recites "[a] method for encoding a block of data in a manner designed to facilitate fault-tolerant authentication." '602 Patent at Clm. 25. The first step comprising the method is:
Intertrust explains that a "problem that arises in the authentication of data streams and other data files is that of errors introduced by the communication system and/or storage media." Id. (quoting '602 Patent at 12:4-12). "These errors . . . can cause authentication to fail, potentially requiring re-transmission of the encoded data," id., and so creating "a need for authentication schemes that exhibit fault tolerance," id. at 18 (quoting '602 Patent at 12:33-41); see also Responsive Br. at 18 (describing the invention's purpose, as stated in '602 Patent at 6:35-41, as "obviating the need to receive and store [an] entire [encrypted] communication before verifying its signature and releasing it to the end user").
• generating a progression of check values, each check value in the progression being derived from a portion of the block of data and from at least one other check value in the progression.Id.
The issue here concerns the requisite initial check value in the claimed progression, specifically whether it can be derived as part of a progression in which "each check value" is derived "from at least one other check value in the progression." While Intertrust contends that progressions of the type referenced in Claim 25 implicitly require a predefined initial value, Opening Br. at 18-19, Dolby argues that "a POSITA would not understand how to generate the progression because the first check value in the progression could not possibly depend from 'at least one other check value in the progression ,' as the claim requires," Responsive Br. at 19 (citing Docket No. 80-5 ("Black Decl.") ¶ 36). Dolby therefore concludes that the contested claim term is indefinite.
Dolby's argument is based on the expert testimony of Dr. Black, who asserts that "a POSITA would not have been reasonably certain . . . how the progression starts, where the progression starts, or whether there is a starting point at all." Responsive Br. at 19 (citing Black Decl. ¶¶ 35-38. Dolby stresses that the claim language "provides that ' each check value in the progression' is ' derived from a portion of the block of data and from at least one other check value in the progression ." Id. (quoting '602 Patent at Clm. 25). This wording raises the question of where the initial check value comes from, as it cannot logically be "derived from . . . one other check value in the progression": at the time that it is generated, it is the first and only check value. See id. (citing Black Decl. ¶ 36). Intertrust itself acknowledges "that the initial term in the claimed 'progression' cannot be based on a predecessor value because such a value cannot possibly exist." Opening Br. at 19 (citing Jakobsson Decl. ¶ 72). A POSITA is therefore "left with no objective boundaries on what comprises the first check value in the progression, how it relates to any other check values, and what about that relationship makes the check values a progression." Responsive Br. at 19.
Intertrust responds by suggesting, via its expert Dr. Jakobsson, that the type of "progression" referred to in Claim 25 "typically" begins with a given, or "predefined," initial term. Opening Br. at 19 (citing Jakobsson Decl. ¶ 68). Intertrust offers as a well-known example of such a progression the Fibonacci sequence, which necessarily "has two initial values on which the other values of the progression depend[]," id., but which need not specify the "specific value(s) of the initial value(s)" for the progression to work, Reply at 11 n.13. As further evidence of this tacit requirement, Intertrust points to the '602 Patent's specification, which (in figure 4) "teaches use of a predefined value—a 'pattern'—in combination with a hash of the last sub-block of data." Opening Br. at 19 (citing '602 Patent at Fig. 4). This preferred embodiment, Intertrust argues, must be taken into account when construing claim language that does not explicitly include a given requirement. See id. at 20; see also Nat'l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1336 n.19 (Fed. Cir. 2004) (stating that claim constructions "that do not read on the preferred embodiment are rarely, if ever, correct and would require highly persuasive evidentiary support") (internal quotations omitted). Additionally, Dr. Jakobsson cites to dictionaries (technical and otherwise) to show that a progression, by definition, "requires an initial term" based on "an algorithm, uniform law, or constant law." Opening Br. at 21; see also Jakobsson Decl. ¶¶ 62 (quoting multiple dictionaries that define "progression" as, e.g., "a sequence of numbers or terms in which each can be derived from its predecessor using a constant formula"). Dr. Jakobsson posits that "just as the definitions do not specify the algorithm, law or a formula that would be used to determine the subsequent terms of the 'progression', they do not expressly call out that the 'progression' must contain an initial term" because this commonsensical requirement "would be understood by the POSITA reading these definitions." Jakobsson Decl. ¶ 71.
Intertrust also suggests that Dolby's arguments go more to issues of enablement than indefiniteness, as the question of how to generate the initial check value is irrelevant to the definiteness inquiry concerning the clarity of the invention's scope. Opening Br. at 21.
The Court finds that Intertrust has presented sufficient evidence to show that a POSITA would have understood that the claimed progression requires a predefined initial value, and that the disputed term is not indefinite. There is little question that Dolby has identified a flaw in the wording of Claim 25, at least when read literally. But claim terms are to be construed "not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313. Here, Intertrust has shown that the specification, in figure 4, "teaches use of a predefined initial value . . . to start the claimed progression." Reply at 12 (citing '602 Patent at 9:18-27).
Image materials not available for display.
FIG. 4
As the parties clarified at the hearing, box 406 in figure 4 represents the predefined value, from which is ultimately derived the subsequent check values (represented by boxes H(Cn), H(C1), and so on) in the progression. See Hearing Tr. at 81-82, 85. The specification thus provides compelling intrinsic evidence that the disputed term presupposes a given initial value even though Claim 25 does not expressly require one.
As noted above, while "limitations from the specification are not to be read into the claims," Comark, 156 F.3d at 1186, courts generally "do not interpret claim terms in a way that excludes disclosed examples in the specification." Verizon, 503 F.3d at 1305.
This construction finds further support in Intertrust's dictionary definitions, which are often helpful "in determining the meaning of particular terminology to those of skill in the art." See Phillips, 415 F.3d at 1318. The dictionaries cited by Dr. Jakobsson all define "progression," with minor variations, as "a sequence of numbers or terms in which each can be derived from its predecessor using a constant formula." See Opening Br. at 21 n.23. As such a progression evidently requires some initial value that is not expressly accounted for by the definitions, they are either universally incoherent or they silently assume the existence of a predefined value. The Court concludes that the latter scenario is the more likely. In any event, Dolby has not shown with clear and convincing evidence that a POSITA would have failed to understand how the claimed progression works, as it must under 35 U.S.C. § 112.
The Court therefore construes the claim term "generating a progression of check values, each check value in the progression being derived from a portion of the block of data and from at least one other check value in the progression" in accordance with its plain and ordinary meaning, as Intertrust proposes.
9. "each error-check value being operable to facilitate authentication of a portion of the block of data and of a check value in the progression of check values"
| Claim Term | Claim(s) | Intertrust'sProposedConstruction | Dolby'sProposedConstruction | Court'sConstruction |
|---|---|---|---|---|
| "each error-check valuebeing operable tofacilitate authenticationof a portion of the blockof data and of a checkvalue in the progressionof check values" | '602 Patent(claim 25) | plain andordinary meaning | indefinite | plain andordinarymeaning |
As discussed above, Claim 25 of the '602 Patent recites "[a] method for encoding a block of data in a manner designed to facilitate fault-tolerant authentication." '602 Patent at Clm. 25. The second step of the method is:
• generating an encoded block of data, comprising:
Id.inserting error-check values into the block of data, each error-check value being operable to facilitate authentication of a portion of the block of data and of a check value in the progression of check values.
As before, Intertrust proposes that the claim term bears its plain and ordinary meaning to a POSITA, while Dolby argues that the term fails for indefiniteness. In its briefing, Dolby contends that the term lacks "clarity as to the relationship between the claimed error-check value and the check value such that 'each error-check value' is 'operable to facilitate authentication of . . . a check value in the progression of check values.'" Responsive Br. at 22. At the hearing, however, Dolby focused on the term's use of "facilitate," which Dolby argued is "amorphous" and "subjective." Hearing Tr. at 88. Dolby thus urges that "facilitate" does not provide an "objective measure" of how much "easier or more convenient" the claimed method makes fault-tolerant authentication and is therefore indefinite. See id.
Intertrust argues that, in accordance with the plain and ordinary meaning of the contested term, "[a]n error check value is 'operable to facilitate authentication' of a data block portion and a check value if it consists of data that would ease the authentication process." Opening Br. at 22 (emphasis added). Regarding Dolby's argument about the lack of clarity in the relationship between error-check values and check values, Intertrust explains that "both the error-check values and the check values are based on corresponding data block portions" and are therefore "related." Id. at 23. This relationship, in turn, "allows the error-check values to be used to facilitate the authentication of the check values." Id. (citing '602 Patent at 4:36-42). And regarding Dolby's complaints about the term's excessively vague use of "facilitate," Intertrust explains that the claimed method simply "make[s] easier the authentication of a portion of the block of data and of a check value in the progression of check values." See Jakobsson Decl. ¶ 78. Beyond this, Intertrust argues, the claim need not specify "the degree of facilitation" that the method accomplishes in a "quantitative" manner. See Hearing Tr. at 92-93. Intertrust therefore concludes, drawing from the '602 Patent's specification, that "each error-check value being operable to facilitate authentication" simply means "that the error-check values ' can be used to help authenticate the check values in the progression.'" Opening Br. at 24 (quoting '602 Patent at 4:36-42).
Put another way, "claim 25 provides that each corresponding check value and error-check value are related because they derive from the same portion of the block of data. Without this relationship, the error-check value could not serve to facilitate authentication of the check value if that data block portion is corrupted." Opening Br. at 24.
Dolby responds that "the claim requires some relationship between the error-check value and the check value." Responsive Br. at 22. In its view, Intertrust defines that relationship simply as any method "that makes it possible to authenticate a portion of the data and a check value in a more convenient manner than using a method that does not employ its claimed fault-tolerant authentication process." Id. (quoting Opening Br. at 23). This vague construction, Dolby's expert Dr. Black argues, illustrates why "a POSITA would not have been able to reasonably ascertain the bounds of [the relationship between the error-check value and the check value] to determine the scope of Claim 25." Id. (quoting Black Decl. ¶¶ 40-41). Further, Dolby argues that an error-check value cannot "be 'operable' to do anything," since it represents only "a value, not an instruction or operation to be 'done' or 'put into practice.'" Id. at 25 (citing Black Decl. ¶ 43). Intertrust, however, interprets "operable to facilitate" as functionally equivalent to "may facilitate," and so effectively reads "operable" out of the claim language. See id. Such a maneuver, Dolby concludes, contravenes the prosecution history, which suggests that the "operable to facilitate" limitation was important to the examiner's allowance of Claim 25 over the prior art. Id. at 24-25. Lastly, Dolby cited caselaw at the hearing purportedly standing for the proposition that a claim term making a process "more convenient" is indefinite because it does not provide "any objective basis" for determining whether such enhanced convenience has occurred. See Hearing Tr. at 66 (quoting Cypress Lake Software, Inc. v. Samsung Elecs. Am., Inc., 382 F. Supp. 3d 586, 609-10 (E.D. Tex. 2019).
The Court once again finds that Dolby has failed to carry its burden of proving, with clear and convincing evidence, that the claim term is indefinite. Dolby's principal complaint in the briefing is that the claim language does not explicitly require "that the portion of data to which an error check value corresponds is the same portion from which a check value is derived," contrary to Intertrust's representations. Responsive Br. at 23; see also Opening Br. at 23-24 (stating Intertrust's position that in Claim 25 "each check value is derived in part from a portion of the block of the data" and "each error-check value comprises a hash of that portion"). Intertrust seeks to rule out alternative possibilities by pointing out that "the specification does not describe any error detection logic that uses an error check value to authenticate a check value derived from a different block of data." Reply at 14 (emphasis added). And this is unsurprising, Intertrust explains, because error-check values "can only help facilitate the authentication of check values based on the same data block." Id. (citing Jakobsson Decl. ¶ 82). The Court finds this evidence sufficient to conclude that a POSITA would likely have understood the disputed term to include the implied limitation "that the portion of data to which an error check value corresponds is the same portion from which a check value is derived." See Responsive Br. at 23.
The Court is also not persuaded by Dolby's argument, which it focused on almost exclusively at the hearing, that the disputed term must specify the degree of facilitation that the claimed method achieves. While the phrase "operable to facilitate authentication" may be unwieldy, it appears to mean simply that the invention "can be used to help," or make easier, authentication. See Reply at 15 (citing Jakobsson Decl. ¶¶ 78-79). This limitation makes sense in the context of Claim 25 as a whole, which (as noted above) recites a method that "make[s] it easier to authenticate [a block of data] in a fault-tolerant manner." See Opening Br. at 17. Dolby itself explains that the '602 Patent was intended to solve "a problem in the prior art [whereby] 'the recipient must receive the entire [communication] . . . before checking its authenticity,' requiring the recipient to have 'enough storage to hold the entire [communication],' and 'wait however long is needed to receive it.'" Responsive Br. at 18 (quoting '602 Patent at 2:37-41). The invention purports to resolve this problem by "enabling the recipient . . . to verify the authenticity of the communication on-the-fly, thus obviating the need to receive and store the entire communication before verifying its signature and releasing it to the end user." Id. (quoting '602 Patent at 6:35-41). The disputed term's "operable to facilitate authentication" language may therefore be taken to refer to the broader fault-tolerant authentication process of which it is part, Hearing Tr. at 90-92, rather than to an abstract improvement lacking any comparative basis. Cf. Cypress Lake, 382 F. Supp. 3d at 609-10 (finding claims that used the terms "convenient" and "conveniently" to describe a computer interface indefinite where "the intrinsic evidence [did] not provide an[y] objective criterion for determining what is 'more convenient'" than an alternative design).
The Court notes that Dolby's analogy to the Cypress Lake case was inadequately presented, as Dolby neither mentioned the case in its briefing nor provided a thorough discussion of it at the hearing. See Hearing Tr. at 89. --------
The Court therefore construes the claim term "each error-check value being operable to facilitate authentication of a portion of the block of data and of a check value in the progression of check values" in accordance with its plain and ordinary meaning, as Intertrust proposes.
IV. CONCLUSION
For the reasons given above, the Court construes the contested claim terms as follows:
• "rule" & "control information": "information and/or programming controlling operations on or use of digital files or electronic content"
• "receiving . . . separately" / "receiving, separately": "receiving in a different package and/or via delivery at a different time, over a different path, or from a different source"
• "receiv[ed/ing] . . . separately . . . and via separate delivery" / "receiving . . . independently . . . via separate delivery": "receiving via delivery at a different time, over a different path, or from a different source"
• "secure processing unit": "processing unit that makes information and processes resistant to unauthorized use"
• "rendering application" / "application program capable of rendering electronic content": "application program that processes content to present it through an audio output (e.g., speakers) or display it on a video output (e.g., a screen)"
• "wherein the piece of electronic content comprises an authorizing document, and the second entity associates the second digital certificate with the authorizing document if the authorizing document originated from a certified entity": the claimed method includes an action ("associates . . .") to be performed by the second entity
• "the user": "the person or entity using an electronic appliance"
• "generating a progression of check values, each check value in the progression being derived from a portion of the block of data and from at least one other check value in the progression": plain and ordinary meaning
• "each error-check value being operable to facilitate authentication of a portion of the block of data and of a check value in the progression of check values": plain and ordinary meaning
IT IS SO ORDERED. Dated: February 3, 2021
/s/_________
EDWARD M. CHEN
United States District Judge