Apple Inc.v.Contentguard Holdings, Inc.

Patent Trial and Appeal Board

Jul 15, 2015

13585408 (P.T.A.B. Jul. 15, 2015)

Trials@uspto.gov Paper No. 10
571.272.7822 Filed: July 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

CONTENTGUARD HOLDINGS, INC.,
Patent Owner.
____________

Case IPR2015-00449
Patent 8,393,007 B2
____________

Before BARBARA A. PARVIS, KERRY BEGLEY, and
KEVIN W. CHERRY, Administrative Patent Judges.

BEGLEY, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a), 37 C.F.R. § 42.108

Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
review of claims 1–15 of U.S. Patent No. 8,393,007 B2 (Ex. 1007, “the ’007
patent”). ContentGuard Holdings, Inc. (“Patent Owner”) filed a Preliminary
Response to the Petition. Paper 9 (“Prelim. Resp.”).
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Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
instituted unless “the information presented in the petition . . . and any
response . . . shows that there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.” Having considered the Petition and the Preliminary Response, we
determine that there is not a reasonable likelihood that Petitioner would
prevail in establishing that any of the challenged claims of the ’007 patent
are unpatentable. For the reasons that follow, we deny institution of inter
partes review.
I. BACKGROUND
A. THE ’007 PATENT
The ’007 patent relates to “distribution and usage rights enforcement
for digitally encoded works.” Ex. 1007, 1:26–27. According to the
’007 patent, the ease with which electronically published materials can be
reproduced and distributed is a major concern and presents a fundamental
issue: “how to prevent the unauthorized and unaccounted distribution or
usage of [these] materials.” Id. at 1:31–45.
The ’007 patent explains several known techniques for preventing
such “unauthorized and unaccounted distribution or usage,” including
preventing unauthorized copying and transmission as well as distributing
software that requires a “key” to enable its use. Id. at 1:63–2:18. These
techniques, however, operate by preventing subsequent distribution of a
work and “sacrifice[e] the potential for subsequent revenue bearing uses.”
Id. at 3:4–8. The ’007 patent notes that it would be desirable for the owner
of a digital work to have flexibility in how the work may be distributed. Id.
at 3:12–14. For example, it may be desirable to allow lending of a
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purchased work to expose the work to potential buyers, creation of a
derivative work for a fee, or copying of the work for a fee. Id. at 3:8–12.
The ’007 patent purports to solve these problems by permanently
attaching usage rights to digital works and by placing digital works in
repositories. Id. at 6:24–44. Repositories are trusted systems, which support
usage rights. Id. at 6:24–44, 11:63–12:63, 49:63–67.
Claims 1, 6, and 11 of the ’007 patent are independent claims.
Claim 1 is illustrative of the claimed subject matter:
1. A computer-implemented method of distributing digital
content to at least one recipient computing device to be
rendered by the at least one recipient computing device in
accordance with usage rights information, the method
comprising:
determining, by at least one sending computing device, if the
at least one recipient computing device is trusted to
receive the digital content from the at least one sending
computing device;
sending the digital content, by the at least one sending
computing device, to the at least one recipient computing
device only if the at least one recipient computing device
has been determined to be trusted to receive the digital
content from the at least one sending computing device;
and
sending usage rights information indicating how the digital
content may be rendered by the at least one recipient
computing device, the usage rights information being
enforceable by the at least on recipient computing device.
Id. at 50:31–49.
B. ASSERTED PRIOR ART
The Petition relies upon the following asserted prior art references, as
well as the supporting Declaration of Alan Sherman, Ph.D. (Ex. 1013, “the
Dr. Sherman Declaration”):
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European Patent Application Publication No. EP 0 567 800 A1
(published November 3, 1993) (Ex. 1021, “Hartrick”),
DOROTHY ELIZABETH ROBLING DENNING, CRYPTOGRAPHY AND DATA
SECURITY (1983) (Ex. 1017, “Denning”), and
Steve R. White & Liam Comerford, ABYSS: A Trusted Architecture
for Software Protection (IEEE 1987) (Ex. 1016, “ABYSS”).
C. ASSERTED GROUNDS OF UNPATENTABILITY
Petitioner challenges claims 1–15 of the ’007 patent on the following
grounds. Pet. 3.
Challenged Claims Basis References
1–15 § 103 ABYSS and Denning
1–15 § 103 ABYSS, Denning, and Hartrick

II. ANALYSIS
A. ASSERTED GROUND BASED ON ABYSS AND DENNING
1. Non-Compliance with 35 U.S.C. § 312(a)(3) and 37 C.F.R.
§§ 42.22(a)(2), 42.104(b)(4)–(5)
Under 35 U.S.C. § 312(a)(3), a petition for inter partes review “may
be considered only if . . . the petition identifies, in writing and with
particularity, each claim challenged, the grounds on which the challenge to
each claim is based, and the evidence that supports the grounds for the
challenge to each claim.” 35 U.S.C. § 312(a)(3) (emphases added). Our
rules further address the showing required in a petition. In particular,
37 C.F.R. § 42.104(b)(4) provides that “[t]he petition must specify where
each element of the claim is found in the prior art patents or printed
publications relied upon,” 37 C.F.R. § 42.104(b)(4) (emphasis added), and
37 C.F.R. § 42.104(b)(5) adds that the Petition must “identify[] specific
portions of the evidence that support the challenge,” 37 C.F.R.
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§ 42.104(b)(5) (emphasis added). Similarly, 37 C.F.R. § 42.22(a)(2) states
that a petition “must include . . . [a] full statement of the reasons for the
relief requested, including a detailed explanation of the significance of the
evidence.” 37 C.F.R. § 42.22(a)(2) (emphases added). For the reasons
discussed below, we agree with Patent Owner’s assertions that the Petition
fails to comply with each of these requirements in addressing the asserted
ground based on ABYSS and Denning. See Prelim. Resp. 4–10.
As background, we provide an overview of the structure of the
Petition, which informs the deficiencies we explain below. The Petition
starts its analysis of the asserted ground of obviousness over ABYSS and
Denning with a general discussion of each reference. Pet. 22–33 (§§ IV.A–
B). This discussion includes characterizations of what a person of ordinary
skill in the art “would have understood” from each reference and what was
known in the art, with supporting citations to the Dr. Sherman Declaration.
Id.; see, e.g., id. at 30 (citing Ex. 1013 ¶¶ C70, C159–C165); id. at 31 (citing
Ex. 1013 ¶¶ C81–C94, C159–C170); id. at 33 (citing Ex. 1013 ¶ C164–
C168). Then, the Petition proffers a hypothetical system that purports to
integrate Denning’s public-key encryption (“PKI”) techniques into
ABYSS’s system (“Hypothetical ABYSS-Denning System”), using the
knowledge of a person of ordinary skill in the art. Id. at 36–39 (§ IV.D.1).
The Petition proceeds to discuss the hypothetical operation of a particular
proposed implementation of this Hypothetical ABYSS-Denning System. Id.
at 39–42 (§ IV.D.2). Next, the Petition argues that the Hypothetical
ABYSS-Denning System teaches three sets of claim terms: (1) “usage
rights,” (2) “sending computing device” (or “sending apparatus”) and
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“recipient computing device,”
1
and (3) “authorization object.” Id. at 42–48
(§ IV.E). Finally, the Petition asserts that the Hypothetical ABYSS-Denning
System would meet each limitation of the fifteen challenged claims. Id. at
48–57 (§ IV.F). This section relies on the previous descriptions,
characterizations, and proposed combination of ABYSS and Denning.
As a result, the Petition’s obviousness analysis, which generally
compares the ’007 patent claims to the Hypothetical ABYSS-Denning
System, is at least two or three levels removed from the actual disclosures of
ABYSS and Denning. These multiple levels of abstraction obscure
Petitioner’s position regarding which reference, and which portion of which
reference, teaches or suggests the claim limitations. It also blurs the actual
teachings and suggestions of each reference from Petitioner’s
characterizations and modifications of these teachings and suggestions in
creating the Hypothetical ABYSS-Denning System.
In addition, the entire Petition is riddled with vague, nested citations
to broad sections of ABYSS, Denning, the Dr. Sherman Declaration, other
exhibits, and other sections of the Petition. See, e.g., id. at 36 (“See
§ IV.B.1; Ex. 1016 at 42; Ex. 1013 at ¶ C83-89, -105, C111-22, C158-70.”);
id. at 37 (“Ex. 1013 at ¶ C83-85, C87-89, C118-22, A148-52; Ex. 1017 at
170, 175, 178-179; see § IV.B.1.”); id. at 43 (“See § IV.A.1, A.3-4; Ex. 1016

1
The relevant section of the Petition specifically argues that the
Hypothetical ABYSS-Denning System would include “repositories.”
Pet. 44–46. The term “repository” is not recited in the ’007 patent claims,
but the Petition elsewhere argues that the claim terms “sending computing
device” (or “sending apparatus”) and “recipient computing device” must be
repositories. Id. at 15–17. Thus, we understand the relevant section to argue
that the Hypothetical ABYSS-Denning System would meet these claim
terms.
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at 39, 40; Ex. 1013 at ¶ C146-47, C3-12, C40-43, C56-57, C155.”). This
practice is most problematic in the section addressing how the Hypothetical
ABYSS-Denning System allegedly would meet the limitations of the
’007 patent claims. See Pet. 48–57. The sentences in this section routinely
are followed by incomprehensible citations to vast portions of the record,
such as “See Ex. 1016 at 38-40, 42, 49, 50; § IV.A.3-4; Ex. 1013 at ¶ C106-
26” (Pet. 49), “See § IV.D.2; Ex. 1016 at 44, 49, 50; Ex. 1017 at 178-79;
Ex. 1013 at ¶ C81-89” (Pet. 49–50), “See Ex. 1016 at 49; Ex. 1017 at 178-
179; § IV.D.2; Ex. 1013 at ¶ C122-24” (Pet. 50), and “See § IV.A.3-4;
Ex. 1016 at 44, 38-40, 42-43, 50; Ex. 1013 at ¶ C5-13, C55-58, C34-43”
(Pet. 51). See Pet. 48–57.
In a representative example, the Petition features one page of analysis
addressing how the Hypothetical ABYSS-Denning System allegedly would
meet the limitation of independent claim 1: “determining, by at least one
sending computing device, if the at least one recipient computing device is
trusted to receive the digital content from the at least one sending computing
device,” and the corresponding limitations in independent claims 6 and 11.
Id. at 49–50 (§ IV.F.1.c). This analysis directly cites: (1) four other sections
(§§ III.D.4, IV.D.1–2, IV.E.2) or approximately ten pages, of the Petition;
(2) thirty-four paragraphs (¶¶ C81–C89, C118–C124, C153–C170), or
approximately twelve pages, of the Dr. Sherman Declaration; (3) three full
pages of ABYSS; and (4) two full pages of Denning. See id. Similarly, in a
half page of analysis, the Petition argues that the Hypothetical ABYSS-
Denning System would meet the final limitation of each of the independent
claims, namely sending “usage rights information indicating how the digital
content may be rendered by the at least one recipient computing device, the
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usage rights information being enforceable by the at least on recipient
computing device.” Id. at 51 (§ IV.F.1.e). This cursory analysis includes
citations to: (1) three other sections (§§ IV.A.2–4), or nearly six pages, of
the Petition; (2) twenty-six paragraphs (¶¶ C5–13, C34–43, C55–58, C124–
C126), or approximately nine pages, of the Dr. Sherman Declaration; and
(3) nine of the thirteen pages of ABYSS. Id. Our counts do not include the
extensive further internal citations and cross-references in the cited sections
of the Petition and the Dr. Sherman Declaration.
The pervasive use of internal cross-references within the Petition and
the Dr. Sherman Declaration further obfuscates the evidentiary support for
the Petition’s assertions. For example, the three-page section of the Petition
that addresses how the Hypothetical ABYSS-Denning System would satisfy
the three independent claims of the ’007 patent (§ IV.F.1) features more than
twenty internal cross-references to nine different sections of the Petition
(§§ III.D.4, IV.A.1–4, IV.D.1–2, IV.E.1–2), which span approximately
twenty pages. Id. at 48–51. Further, Dr. Sherman’s declaration testimony—
cited extensively in the Petition—is routinely, and often exclusively,
supported by internal cross references to other paragraphs of the Declaration.
See, e.g., Ex. 1013 ¶ C157 (citing ¶¶ B65–B66, ¶¶ C55–C67); id. ¶ C249
(citing ¶¶ A148–A153, C81–C89). Petitioner’s claim charts, which appear
only in the Dr. Sherman Declaration, are supported exclusively by internal
cross-references, generally to vast sections of the Declaration. See id.
¶¶ C221–C224, C234, C243, C250; see, e.g., id. ¶ C223 (claim chart for
limitation “6.c,” citing seventy-three paragraphs (¶¶ C23–C59, C81–C89,
C118–C126, C153–C170) of the Dr. Sherman Declaration).
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These defects in the Petition are compounded by the Petition’s
repeated citation to broad sections of the Dr. Sherman Declaration to support
conclusory arguments and reasoning. See Prelim. Resp. 7–9. The
Dr. Sherman Declaration is a 474-page omnibus declaration covering
nineteen petitions for inter partes review challenging the ’007 patent and
four related patents. See generally Ex. 1013. Nearly 200 pages of the
Declaration are relevant to this Petition. See id. §§ I–V.C.2, V.C.4–5, V.C.7,
V.C.11, V.D.1–2, V.D.8, VI.A–C, VI.D.3.
The Petition regularly cites to large sections of the Dr. Sherman
Declaration as support for otherwise unexplained statements. For example,
one sentence of the Petition states: “It would have been obvious for a person
of skill to implement this example using PKI techniques given the guidance
in ABYSS and Denning. Ex. 1013 at ¶ C73, C106-26; see § IV.D.1.”
Pet. 40. The twenty-two paragraphs of the Dr. Sherman Declaration cited as
support for this sentence span nearly ten pages.
More generally, many sections of the Petition feature sparse
explanation and rely heavily on supporting citations to the Dr. Sherman
Declaration to buttress the conclusory analysis. For example, the two-page
section of the Petition arguing that the Hypothetical ABYSS-Denning
System would meet the “sending computing device” (or “sending
apparatus”) and “recipient computing device” limitations recited in the
independent claims of the ’007 patent directly cites more than sixty
paragraphs (¶¶ C1–C22, C82–C89, C95–C103, C146–C170), or twenty
pages, of the Dr. Sherman Declaration. See id. at 44–46 (§ IV.E.2); supra
n.1. Thus, even without accounting for the additional internal cross-
references within these paragraphs of the Declaration, the supporting
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declaration testimony is more than ten times the length of the relevant
discussion in the Petition.
Put simply, the Petition generally does not stand on its own, and its
arguments often are incomprehensible without reviewing broad portions of
the Dr. Sherman Declaration, the length of which exceeds the relevant
discussion in the Petition by multitudes. The Petition’s practice of citing
multiple pages of the Dr. Sherman Declaration to support conclusory
statements and more generally, using the Declaration to vastly expand its
thin analysis and reasoning violates our rules in two respects.
First, this practice amounts to incorporation by reference—which is
impermissible under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments
must not be incorporated by reference from one document into another
document.”); Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-
00454, slip op. at 7–10 (PTAB Aug. 29, 2014) (Paper 12) (informative).
This incorporation by reference from the 474-page Declaration into the
Petition “serves to circumvent the [60-]page limit[] imposed on petitions for
inter partes review, while imposing on our time by asking us to sift through
[hundreds of] pages of [the] Declaration (including numerous pages of claim
charts) to locate the specific [relevant] arguments.” Cisco Sys., Inc.,
IPR2014-00454, slip op. at 10 (Paper 12) (informative); see 37 C.F.R.
§ 42.24(a)(1)(i). Arguments and information that are not presented and
developed in the Petition, and instead are incorporated by reference to the
Dr. Sherman Declaration, are not entitled to consideration.
Second, the Petition’s consistent citation to voluminous portions of
the Dr. Sherman Declaration, which generally include additional internal
cross-references, runs afoul of the particularity and specificity required of
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supporting evidence under our governing statute and rules. See 35 U.S.C.
§ 312(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5).
In sum, the Petition’s conclusory analysis with supporting citations to
an incomprehensible web of internal cross-references to the Petition and the
Dr. Sherman Declaration and imprecise citations to ABYSS and Denning
leaves us “to play archeologist with the record.” Cisco Sys., Inc., IPR2014-
00454, slip op. at 10 (Paper 12) (informative). Based on the deficiencies
addressed above, the Petition fails: (1) to specify sufficiently where the
limitations of claims 1–15 of the ’007 patent are taught or suggested by
ABYSS or Denning; and (2) to provide a sufficiently detailed explanation of
the significance of the citations to these references and the Dr. Sherman
Declaration—as required under 35 U.S.C. § 312(a)(3), 37 C.F.R.
§ 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). We, therefore, deny
institution of the asserted ground of obviousness over ABYSS and Denning.
2. Defects in the Proffered Obviousness Analysis
Turning to the merits, we deny institution of the asserted ground based
on ABYSS and Denning for two additional, independent reasons. First, the
Petition fails to perform the obviousness analysis required under Graham v.
John Deere Co., 383 U.S. 1 (1966). Second, the obviousness analysis
proposed in the Petition does not provide sufficiently articulated reasoning,
with rational underpinning, to combine ABYSS and Denning to reach the
invention recited in the challenged claims and, instead, is driven by improper
hindsight. We address each deficiency in turn.
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a. Failure to Perform a Graham Analysis
A patent claim is unpatentable as obvious under 35 U.S.C. § 103(a)
2
if
“the differences between” the claimed subject matter and the prior art “are
such that the subject matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill in the art to which
said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007). The legal conclusion of obviousness is
resolved on the basis of underlying factual determinations, including:
(1) “the scope and content of the prior art,” (2) “differences between the
prior art and the claims at issue,” (3) “the level of ordinary skill in the
pertinent art,” and (4) any “secondary considerations,” or objective indicia,
of nonobviousness. Graham, 383 U.S. at 17–18. These underlying factual
determinations “must be considered by the trier of fact” in an obviousness
analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998).
Here, as Patent Owner points out, the Petition fails to identify
sufficiently the differences between any claim of the ’007 patent and the
asserted prior art references, ABYSS and Denning. See Pet. 22–57; Prelim.
Resp. 6–7. Rather than address these differences, the Petition creates the
Hypothetical ABYSS-Denning System—based on how a person of ordinary
skill in the art allegedly “would” or “could” combine the two references into
an integrated system—in an analysis that is divorced entirely from the
language of the ’007 patent claims. See Pet. 36–42 (§ IV.D). The Petition
then argues, in conclusory fashion, that this hypothetical system would meet

2
The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284 (2011), revised 35 U.S.C. § 103, effective March 16, 2013.
Because the ’007 patent was filed before March 16, 2013, our references and
citations to § 103 in this decision are to the pre-AIA version.
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the limitations of the claims. See id. at 48–57 (§ IV.F). This analysis—
which compares the challenged claims to a hypothetical implementation of a
hypothetical integrated system that allegedly combines elements of both
ABYSS and Denning, as well as the knowledge of a person of ordinary skill
in the art—obscures any comparison of the individual prior art references to
the claim limitations. It does not explain with any particularity which claim
limitations are absent from ABYSS or Denning. See Prelim. Resp. 6–7.
Therefore, the Petition fails to perform an adequate Graham analysis, as
required for an obviousness determination.
Accordingly, we determine that the Petition does not show a
reasonable likelihood that Petitioner would prevail in showing that claims 1–
15 of the ’007 patent would have been obvious over ABYSS and Denning.
See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18
(PTAB May 28, 2015) (Paper 11) (denying institution of an asserted
obviousness ground based on Petitioner’s failure to explain adequately any
differences between the asserted prior art and the claimed invention); Liberty
Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip
op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who
does not state the differences between a challenged claim and the prior art,
and relies instead on the Patent Owner and the Board to determine those
differences . . . risks having the corresponding ground of obviousness not
included for trial for failing to adequately state a claim for relief.”).
b. Lack of Rationale to Combine and Improper Hindsight
Turning to the asserted rationale to combine ABYSS and Denning, the
Supreme Court has explained that an obviousness analysis should
“determine whether there was an apparent reason to combine the known
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elements in the fashion claimed by the patent at issue.” KSR, 550 U.S.
at 418. Similarly, the Federal Circuit has made clear that an obviousness
determination “cannot be sustained by mere conclusory statements; instead,
there must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. An
obviousness analysis, however, must “avoid hindsight reconstruction by
using the patent in suit as a guide through the maze of prior art references,
combining the right references in the right way so as to achieve the result of
the claims in suit.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011)
(internal citation and quotation omitted).
Here, in proposing the Hypothetical ABYSS-Denning System in
§ IV.D.1 of the Petition, the Petition proffers what it appears to classify as
four modifications to configure the integrated system. Pet. 36–39 (labeling
certain paragraphs as “[f]irst,” “[s]econd,” “[t]hird,” and “[f]ourth”)
(emphases omitted). Based on our review of the Petition as well as ABYSS
and Denning, however, we find that what the Petition appears to classify as a
single modification often includes several distinct changes. In addition, after
proposing the Hypothetical ABYSS-Denning System, the Petition proceeds,
in § IV.D.2, to discuss the hypothetical operation of a particular proposed
implementation of the hypothetical system, proffering numerous additional
changes and choices that a person of ordinary skill in the art allegedly
“would” or “could” make. Id. at 39–42. The Petition, therefore, obscures
the sheer number of changes to ABYSS and Denning in configuring,
implementing, and operating the Hypothetical ABYSS-Denning System in
the manner proposed.
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We find the reasons proffered in the Petition for many of these
proposed changes to be conclusory and superficial. The Petition justifies the
four proffered modifications to configure the Hypothetical ABYSS-Denning
System as “obvious implementation choice[s].”
3
Id. at 38–39. This vague
reasoning, which lacks support in the Petition, fails to provide sufficient
explanation and reasoning for making the proposed changes.
In addition, the explanations offered in the Petition for several of the
particular proposed changes are likewise deficient. For example, the
“[t]hird” modification appears to be directed to allowing the processors in
the Hypothetical ABYSS-Denning System to maintain communications
integrity—i.e., only communicating with other devices that are able to
present proof that they are trusted systems, for example, by using security
measures such as encryption, exchange of digital certificates, and nonces—
which Petitioner acknowledges is a requisite aspect of the “recipient
computing device” and “sending computing device” (or “sending
apparatus”) recited in the independent claims of the ’007 patent. Id. at 15–
20, 45; Ex. 1007, 6:30–44, 7:13–15, 11:63–12:7, 12:34–46, 49:63–67;
Ex. 2001, 10–15, 18–19; see Prelim. Resp. 31; ZTE Corp. v. ContentGuard
Holdings, Inc., Case IPR2013-00137, slip op. at 8–11 (PTAB July 1, 2014)
(Paper 58). According to the Petition, this proposed modification involves
“us[ing] public-key encryption to encrypt the Rights-to-Execute.” Pet. 38.
The only justification the Petition offers for this modification is that it
“would allow the symmetric supervisor keys to be replaced by public-private

3
To the extent the Dr. Sherman Declaration provides additional arguments
and explanation not mentioned in the Petition, we need not and do not
consider this testimony for the reasons stated above in Part II.A.1.
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key pairs and digital certificates”—with supporting citations to another
section of the Petition and ten paragraphs, or five pages, of the Dr. Sherman
Declaration. Id. (citing id. § IV.A.2; Ex. 1013 ¶¶ C81–C89, C92). This
purported justification, however, does not explain sufficiently why a person
of ordinary skill would make the proposed modification to combine ABYSS,
Denning, and the knowledge in the art as proposed.
Moreover, many of the proposed modifications include what appear to
be additional modifications that are supported with threadbare reasoning.

For example, the “[s]econd” modification appears to be directed to allowing
the processors of the Hypothetical ABYSS-Denning System to possess
behavioral integrity, i.e., requiring software to include a digital certificate in
order to be installed in the repository, which Petitioner acknowledges is
required of the “recipient computing device” and “sending computing
device” (or “sending apparatus”) recited in the ’007 patent claims. Id. at 15–
20, 45–46; Ex. 1007, 6:30–44, 7:13–15, 11:63–12:7, 12:47–63, 49:63–67;
Ex. 2001, 10–15, 19–21; see Prelim. Resp. 28–29; ZTE Corp., IPR2013-
00137, slip op. at 8–9, 11 (Paper 58). As part of this modification, the
Petition argues that “a person of ordinary skill would recognize public-key
encryption could be used to protect the integrity of software.” Pet. 37. In
addition, the Petition asserts that a person of ordinary skill “also would have
understood the same technique should be applied to system software, such as
updates to the supervisor software that operated the protected processor, as
this would improve system integrity.” Id. The Petition, however, previously
explained that the processor disclosed in ABYSS is protected. Id. at 23.
The Petition does not provide a persuasive reason why a person of ordinary
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skill would have added integrity and security techniques beyond those
already contained in the ABYSS system.
More seriously deficient are the modifications scattered throughout
§ IV.D.2 of the Petition, in which Petitioner proffers the operation of a
particular proposed implementation of the Hypothetical ABYSS-Denning
System. Id. at 39–42. For example, in one paragraph, the Petition proposes
that “a vendor” implementing the hypothetical integrated system “could
create a Right-To-Execute using the ‘targeted distribution’ technique
described in ABYSS,” “could restrict distribution to processors that had a
digital certificate issued by a particular authority for the group,” and “could
specify as a condition that the Right-To-Execute can only be installed by
workstations that have obtained a digitally signed receipt from the vendor.”
Id. at 40–41 (emphases added). The Petition does not explain whether a
“vendor” is a person of ordinary skill in the art. Nor does the Petition
provide adequate reasoning showing that such a “vendor” would have made
all of these particular choices that allegedly “could” be made in combining
ABYSS, Denning, and the knowledge in the art to implement and operate
the Hypothetical ABYSS-Denning System as proposed.
Particularly when the many proposed changes are considered together,
the Petition lacks adequate reasoning, with rational underpinning, to show
sufficiently that a person of ordinary skill would have combined the
teachings of ABYSS and Denning and the knowledge in the art to reach the
Hypothetical ABYSS-Denning System, which the Petition alleges would
satisfy each limitation of the challenged claims. In other words, we are not
persuaded that the Petition sufficiently explains why a person of ordinary
skill would simultaneously make all of the many particular proposed
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changes and implementation choices to combine ABYSS, Denning, and
allegedly known techniques.
Rather, given the extent of the proposed modifications as well as the
thin reasoning proffered for each modification, we conclude that the Petition
improperly “reli[es] upon ex post reasoning” and impermissible hindsight
reconstruction to piece together the Hypothetical ABYSS-Denning System
in a manner meant to resemble the ’007 patent claims. See KSR, 550 U.S.
at 421. The Petition strains to make numerous distinct modifications,
picking and choosing aspects of ABYSS and Denning—in addition to
techniques allegedly known in the art—to arrive at the Hypothetical
ABYSS-Denning System. See Pet. 36–42. “This type of piecemeal analysis
is precisely the kind of hindsight that [we] must not engage in.” NTP, 654
F.3d at 1299 (“Care must be taken to avoid hindsight reconstruction by using
the patent in suit as a guide through the maze of prior art references,
combining the right references in the right way so as to achieve the result of
the claims in suit.”) (internal citation and quotation omitted); see also ATD
Corp., 159 F.3d at 546 (“Determination of obviousness can not be based on
the hindsight combination of components selectively culled from the prior
art to fit the parameters of the patented invention.”).
In sum, we are not persuaded that the Petition shows sufficiently that
a person of ordinary skill in the art—without improper hindsight—would
have combined and modified ABYSS and Denning to reach the invention
recited in claims 1–15 of the ’007 patent. Therefore, we determine that the
Petition does not establish a reasonable likelihood that Petitioner would
prevail in showing that any of the challenged claims would have been
obvious over ABYSS and Denning.
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B. ASSERTED GROUND BASED ON ABYSS, DENNING, AND HARTRICK
In addition to the asserted ground of obviousness over ABYSS and
Denning, the Petition asserts an obviousness ground that relies on ABYSS
and Denning as well as an additional reference, Hartrick. Pet. 57–59.
Specifically, the Petition asserts that “Patent Owner may argue that ABYSS
does not disclose use of a ‘usage rights language.’” Id. at 57. The Petition
then proceeds to discuss Hartrick’s security and royalty tags and argues that
it would have been obvious to implement these tags in the Hypothetical
ABYSS-Denning System. Id. at 57–59.
This asserted ground relies on the Petition’s analysis of the asserted
ground based on ABYSS and Denning, and adds the teachings of Hartrick
only to address a potential argument of Patent Owner related to usage rights.
See, e.g., id. at 59 (arguing that a person of ordinary skill “would have found
it obvious” to use Hartrick’s tags to express the rights and restrictions
disclosed in ABYSS and “ABYSS in view of Denning teaches all the other
features of ‘usage rights’”). Therefore, the ground suffers from the same
deficiencies as the asserted ground based on ABYSS and Denning,
addressed above.
Accordingly, we determine that the Petition does not establish a
reasonable likelihood that Petitioner would prevail in showing that claims 1–
15 would have been obvious over ABYSS, Denning, and Hartrick.
III. ORDER
For the reasons given, it is:
ORDERED that pursuant to 35 U.S.C. § 314(a), the Petition is denied.

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

PATENT OWNER:

Nicholas T. Peters
Timothy P. Maloney
FITCH, EVEN, TABIN & FLANNERY LLP
ntpete@fitcheven.com
tpmalo@fitcheven.com

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