Apple Inc.v.Contentguard Holdings, Inc.

Patent Trial and Appeal Board

Jul 6, 2015

10773306 (P.T.A.B. Jul. 6, 2015)

Trials@uspto.gov Paper No. 9
571.272.7822 Filed: July 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

APPLE INC.
Petitioner,

v.

CONTENTGUARD HOLDINGS, INC.,
Patent Owner.
_______________

Case IPR2015-00455
Patent 7,269,576 B2
_______________

Before MICHAEL R. ZECHER, GEORGIANNA W. BRADEN, and
KEVIN W. CHERRY, Administrative Patent Judges.

BRADEN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 312(a)(4) and 37 C.F.R. § 42.108

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I. INTRODUCTION
A. Background
Apple (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an
inter partes review of claims 1, 3, 4, and 7–10 of U.S. Patent No. 7,269,576
B2 (Ex. 1009, “the ’576 patent”). ContentGuard Holdings, Inc. (“Patent
Owner”) timely filed a Preliminary Response (Paper 8, “Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter
partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.”
Upon consideration of the Petition and Patent Owner’s Preliminary
Response, we conclude Petitioner has not established a reasonable likelihood
it would prevail with respect to at least one of the challenged claims.
Accordingly, we deny the Petition.
B. Related Matters
The ’576 patent has been asserted in the following three district court
cases: (1) ContentGuard Holdings, Inc. v. Amazon.com, Inc., No. 2:13-cv-
01112 (E.D. Tex.); (2) Google, Inc. v. ContentGuard Holdings, Inc., No.
3:14-cv-00498 (N.D. Cal.); and (3) ContentGuard Holdings, Inc. v. Google,
Inc., No. 2:14-cv-00061 (E.D. Tex). Pet. 2; Paper 7, 3. In addition to this
Petition, Apple filed at least four other Petitions challenging the patentability
of a certain subset of claims of the ’576 patent: Cases IPR2015-00452,
IPR2015-00453, IPR2015-00454, and IPR2015-00456. Pet. 1; Paper 7, 1–2.
Petitioner does not identify, as a related matter, ZTE Corp. v.
ContentGuard Holdings, Inc., Case IPR2013-00139 (PTAB) (the “ZTE
IPR”), which resulted in a Final Decision (Paper 57) regarding a certain
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subset of claims of the ’576 patent. See Pet. 2. Patent Owner, however,
does identify this related matter. Paper 7, 2.
C. The ’576 Patent
The ’576 patent, titled “Content Rendering Apparatus,” issued
September 11, 2007, from U.S. Patent Application No. 10/773,306, filed on
February 9, 2004. Ex. 1009, at [54], [45], [21], and [22]. The ’576 patent
generally relates to a method and system for distributing and enforcing usage
rights associated with digitally encoded content. Ex. 1009, 1:5–6.
D. Illustrative Claim
Claim 1 is independent, and the remainder of the challenged claims
depend from claim 1. Claim 1 is reproduced below:
1. An apparatus for rendering digital content in
accordance with rights that are enforced by the apparatus, said
apparatus comprising:
a rendering engine configured to render digital content;
a storage for storing the digital content;
means for requesting use of the digital content stored in
the storage; and
a repository coupled to the rendering engine,
wherein the repository includes:
means for processing a request from the means for
requesting,
means for checking whether the request is for a permitted
rendering of the digital content in accordance with rights
specified in the apparatus,
means for processing the request to make the digital
content available to the rendering engine for rendering when the
request is for a permitted rendering of the digital; and
means for authorizing the repository for making the
digital content available for rendering, wherein the digital
content can be made available for rendering only by an
authorized repository, the repository comprising:
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means for making a reauest [sic] for an authorization
obiect [sic] required to be included within the repository for the
apparatus to render the digital content; and
means for receiving the authorization obiect [sic] when it
is determined that the request should be granted.
Ex. 1009, 52:45–53:5.
E. The Evidence of Record
Petitioner relies upon the following references, as well as the
Declaration of Alan Sherman, Ph.D. (Ex. 1013):
Reference Patent/Printed Publication Date Exhibit
Rosen U.S. Patent No. 5,557,518 Sept. 17, 1996 Ex. 1020
Hartrick EP 0 567 800 A1 Nov. 3, 1993 Ex. 1021
F. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of certain claims of the ’576
patent based on the following ground:
References Basis Claims Challenged
Rosen and Hartrick § 103(a) 1, 3, 4, and 7–10

II. DISCUSSION
In an inter partes review, we construe claims by applying the broadest
reasonable interpretation in light of the specification.1 37 C.F.R.
§ 42.100(b). 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Tech., LLC, 778

1 Petitioner contends that the ’576 patent will expire no later than July 21,
2015, and suggests that the claim construction standard used in district court
would apply here “if trial is instituted.” Pet. 7 (citing In re Rambus, 694
F.3d 42, 46 (Fed. Cir. 2012).” Trial is not being instituted, and our Decision
to Deny Institution would be the same even if we applied the district court
standard for claim construction.
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F.3d 1271, 1281–82 (Fed. Cir. 2015) (“Congress implicitly adopted the
broadest reasonable interpretation standard in enacting the AIA,” and “the
standard was properly adopted by PTO regulation”); Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under the
broadest reasonable interpretation standard, and absent any special
definitions, claim terms or phrases are given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). Any special definitions for claim terms or phrases
must be set forth with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
A petition for an inter partes review must identify how each
challenged claim is to be construed. 37 C.F.R. § 42.104(b)(3). As part of
that requirement, a petitioner must “identify the specific portions of the
specification that describe the structure, material, or acts corresponding to
each claimed function” of any means- or step-plus-function limitation. Id.;
see also 35 U.S.C. § 112 ¶ 6 (“An element in a claim for a combination may
be expressed as a means or step for performing a specified function without
the recital of structure, material, or acts in support thereof, and such claim
shall be construed to cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.”).2

2 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 11229,
125 Stat. 284 (2011) (“AIA”) re-designated 35 U.S.C. § 112 ¶ 6 as
35 U.S.C. § 112(f). Because the ’576 patent has a filing date prior to
September 16, 2012, the effective date of § 4(c) of the AIA, we refer to the
pre-AIA version of 35 U.S.C. § 112.
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Independent claim 1 recites several limitations that presumably are
means-plus-function limitations: “means for requesting . . .”; “means for
processing . . .”; “means for checking . . .”; “means for authorizing . . .”;
“means for making . . .”; and “means for receiving . . . .” See Williamson v.
Citrix Online, LLC, No. 2013-1130, 2015 WL 3687459, at *6–7 (Fed. Cir.
June 16, 2015) (en banc in relevant part) (““use of the word ‘means’ creates
a presumption that § 112, ¶ 6 applies.”).
Petitioner does not rebut the presumption that these limitations are
governed by § 112 ¶ 6. Yet, Petitioner does not “identify the specific
portions of the specification that describe the structure, material, or acts
corresponding to each claimed function.” See 37 C.F.R. § 42.104(b)(3).
Instead, Petitioner states that “[t]he Board construed certain of these means-
plus function elements in IPR2013-00139, Paper No. 15 (July 9, 2013),” and
“Petitioner proposes to use the Board’s constructions of the ‘means’ terms
from IPR2013-00139 where available.” Pet. 18. These statements do not
fulfill Petitioner’s obligation to identify the corresponding structure. First,
the applicable rule requires that “the petition set forth” the identification of
the corresponding structure. 37 C.F.R. § 42.104(b)(3) (emphasis added); see
also 37 C.F.R. § 42.6(a)(3) (prohibiting incorporation by reference).
Second, in the relied-upon decision from the ZTE IPR, the Board denied
institution with respect to claim 1 because the petitioner in that proceeding
(ZTE Corp.) did not identify the correct structure corresponding to each
means-plus-function limitation recited in claim 1. ZTE Corp. v.
ContentGuard Holdings, Inc., Case IPR2013-00139 (PTAB July 9, 2013),
Paper 15, at 27, 33, 35, 37–38.
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Petitioner further states that “[i]n ongoing litigation, Patent Owner has
identified allegedly corresponding structures for each [means-plus-function
limitation recited in claim 1].” Pet. 18 (citing Ex. 1069, 6–15). This
statement also does not fulfill Petitioner’s obligation to identify the
corresponding structure for each means-plus-function limitation. First, as
already discussed, it is the Petition, and not an extraneous document, that
must set forth an identification of the corresponding structure. See 37 C.F.R.
§ 42.104(b)(3); see also 37 C.F.R. § 42.6(a)(3) (prohibiting incorporation by
reference). Second, by requiring an identification of the corresponding
structure be set forth in the Petition, the rule squarely places the burden to
fulfill the requirement on Petitioner. Exhibit 1069 cited in the Petition,
however, is a Declaration by Dr. Michael Goodrich in support of a Patent
Owner claim construction brief filed in ContentGuard Holdings, Inc. v.
Amazon.com, Inc., Case No. 2:13-cv-01112 (E.D. Tex.).3
In asserting its ground of obviousness, the Petition again addresses the
means-plus-function limitations of claim 1, but still does not fulfill its
obligations under the rules. For instance, with respect to the “means for
requesting” limitation, Petitioner acknowledges that the Board did not
construe this limitation in IPR2013-00139, and then states that “[t]he
parties” to the co-pending litigation have agreed the ‘[u]ser interface 1305
described [in Ex. 1009] at 16:35–44’ is this means element.” Pet. 49. Yet,

3 Exhibit 1069 also is captioned for ContentGuard Holdings, Inc. v. Google
Inc., Case No. 14-cv-0061 (E.D. Tex.). As indicated by the header,
however, the copy that is Exhibit 1069 is from ContentGuard Holdings, Inc.
v. Amazon.com, Inc., Case No. 2:13-cv-01112 (E.D. Tex.).
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disclosing what Petitioner allegedly agreed to in district court4 and simply
citing to “user interface 1305” as this means element does not identify how
this structure functions to request use of the digital content stored in the
storage, as required by claim 1.
For the remainder of the means-plus-function limitations, Petitioner
cites to the claim construction provided by the Board in IPR2013-00139,
Paper 15 (July 9, 2013), but does not set forth an identification of
corresponding structure from the ’576 patent. For example, with respect to
the “means for authorizing” limitation, Petitioner states the following:
The Board found the following means for this element,
which Patent Owner has not disputed in litigation:
[1], a communication channel is set up between the
server and the remote repository. [2], the server repository
performs a registration process with the remote repository. [3],
the server repository invokes a “play” transaction to acquire the
authorization object. [4], the server repository performs tests on
the authorization object or executes a script before signaling
that authorization has been granted for rendering content. ZTE
Inst. Dec. at 24 (internal citations omitted); Ex. 1069 at 13.
Pet. 55. Petitioner then proceeds to map elements from the cited prior art to
the challenged claims based on the Board’s claim construction in in
IPR2013-00139, Paper 15 (July 9, 2013). Neither this recitation of steps
performed by an unidentified structure nor the mapping of claim elements

4 Petitioner’s statement that the parties allegedly agreed on a construction in
district court is contradicted by Dr. Goodrich’s declaration. Specifically, Dr.
Goodrich states that Petitioner asserts in court that the “means for
requesting” limitation is indefinite and, thus, is not the user interface 1305
described at column 16, lines 35–44 of the ’576 patent. Ex. 1069 ¶ 16.
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onto the prior art amounts to identification of corresponding structure for the
“means for authorizing” element.
Another example is the following statement from Petitioner regarding
the “means for making a request for an authorization object required to be
included within the repository” limitation:
The Board held (and Patent Owner does not dispute) that this
means element performs the first three steps of the “means for
authorizing” except the server repository does so to “request”
rather than “acquire” the authorization object. ZTE Inst. Dec.
at 25; Ex. 1069 at 13-14. When the CTA is renewing a digital
certificate or requesting an authentication message, it is both
requesting and acquiring the digital certificate or authentication
message, respectively. See Ex. 1020 at 11:14-25, 6:38-55.
Pet. 57. Stating the recited function of a means-plus-function limitation,
however, does not provide an identification of the specific portions of the
specification corresponding to the structure of that limitation. Put simply,
the Petition does not identify a structure for a “means for making a request
for an authorization object required to be included within the repository.”
III. CONCLUSION
Petitioner does not identify the specific portions of the specification of
the ’576 patent that describe the structure corresponding to each recited
function of the means-plus-function limitations of claim 1. The means-plus-
function limitations of claim 1 are incorporated by reference into dependent
claims 3, 4, and 7–10 by virtue of their dependency on claim 1.
There is no exemption from the requirement to identify corresponding
structure for means-plus-function limitations under 37 C.F.R. § 42.104(b)(3)
for claims that may have been construed previously in a related matter. By
failing to identify the corresponding structure or to provide even the alleged
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prior constructions, the Petition does not show how the challenged claims
are to be construed, see 37 C.F.R. § 42.104(b)(3), and also does not show
how, as so construed, they are unpatentable under the statutory ground
identified in the Petition. See id. at (b)(4).
Therefore, Petitioner fails to show there is a reasonable likelihood that
it would prevail with respect to at least one of the claims challenged in the
Petition. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.8(b)(2).
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied and no trial is instituted.

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FOR PETITIONER:
Jeffrey P. Kushan
Michael Franzinger
SIDLEY AUSTIN LLP
jkushan@sidley.com
mfranzinger@sidley.com
iprnotices@sidley.com

FOR PATENT OWNER:
Nicholas T. Peters
Timothy Maloney
FITCH, EVEN, TABIN & FLANNERY LLP
ntpete@fitcheven.com
tpmalo@fitcheven.com

Robert A. Cote
McKOOL SMITH, P.C.
rcote@mckoolsmith.com