Apple Inc.v.Contentguard Holdings, Inc.

Patent Trial and Appeal Board

Jul 15, 2015

10015951 (P.T.A.B. Jul. 15, 2015)

Trials@uspto.gov Paper 9
Tel: 571-272-7822 Entered: 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 IPR2015-00458
Patent 7,225,160 B2
_______________

Before JAMESON LEE, BENJAMIN D. M. WOOD, and
BARBARA A. PARVIS, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
A. Background
Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute
an inter partes review of claims 1–3, 9, 10, and 23 (the “challenged claims”)
of U.S. Patent No. 7,225,160 B2 (Ex. 1011, “the ’160 patent”).
ContentGuard Holdings, Inc. (“Patent Owner”) filed a Preliminary Response
(Paper 8, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
Institution of an inter partes review is authorized by statute when “the
information presented in the petition . . . 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.” 35 U.S.C. § 314(a). We determine that
Petitioner has not shown a reasonable likelihood that it would prevail with
respect to at least one of the claims of the ’160 patent. Accordingly, we
deny the Petition and decline to institute an inter partes review.
B. Related Proceedings
Petitioner discloses that the ’160 patent has been asserted in two
infringement actions pending in the Eastern District of Texas, and one
infringement action pending in the Northern District of California. Pet. 2.
Petitioner also indicates that the ’160 patent is the subject of another inter
partes review proceeding, Apple Inc. v. ContentGuard Holdings, Inc.,
IPR2015-00457. Id. The ’160 patent was also the subject of an earlier inter
partes review in which the Board instituted a trial: ZTE Corp. v.
ContentGuard Holdings, Inc., Case IPR2013-00134, Paper 12 (PTAB June
19, 2013).
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C. The ’160 Patent
The ’160 patent is directed to supporting commercial transactions
involving “digital works,” and in particular to enforcing “usage rights” that
are associated with the digital works. Ex. 1011, Abstract, 1:15–16, 5:4–5.
A “digital work” refers to any work that has been reduced to a digital
representation, including any audio, video, text, or multimedia work, and
any accompanying interpreter, e.g., software, which may be required to
recreate or render the content of the digital work. Id. at 5:20–24. “Usage
rights” are rights granted to a recipient of a digital work that define the
manner in which a digital work may be used and distributed. Id. at 5:26–30.
“Usage rights are permanently associated with the digital work. . . . [T]he
usage rights and any associated fees assigned by a creator and subsequent
distributor will always remain with a digital work.” Id. at 5:34–38.
The Specification states that a digital work’s usage rights are enforced
by “repositories.” Id. at 5:39–40. “[R]epositories are used to store digital
works, control access to digital works, bill for access to digital works and
maintain the security and integrity of the system.” Id. at 5:40–43. A
repository has both “a hardware and functional embodiment,” with the
functional embodiment typically being software executed on the hardware
embodiment. Id. at 12:27–29.
The ’160 patent discloses dividing a digital work into two files: a
contents file and a description tree file. Id. at 7:65–67. The contents file is a
stream of addressable bytes, the format of which depends on the interpreter
or rendering engine used to play, display, or print the digital work. Id. at
7:67–8:4. The description tree file contains the digital work’s usage rights,
and makes it possible for the repository to examine the rights and fees
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associated with the digital work without reference to the content of the
digital work. Id. at 8:4–6, Fig. 7.
Figure 5 of the ’160 patent, reproduced below, illustrates a contents
file layout for a digital work. Id. at 4:16–18, 8:10.

As depicted in Figure 5, digital work 509 includes story A 510,
advertisement 511, story B 512, and story C 513. Id. at 8:11–12. Digital
work 509 is stored starting at a relative address of 0, with story A 510 stored
at address of 0–30,000, advertisement 511 stored at address 30,001–40,000,
etc. Id. at 8:12–18.
Figure 8 of the ’160 patent, reproduced below, illustrates the
description tree structure for digital work 509. Id. at 4:26–27, 8:55–56.

In the description tree illustrated above, digital work 509, as well as
each of its components, has a corresponding descriptor block (“d-block”)
arranged in a tree structure representing the relationship of the various
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works. Id. at 8:56–58. Thus, d-block 820 corresponds to digital work 509
and points to: (1) d-block 821 representing story A 510; (2) d-block 822
representing advertisement 511; (3) d-block 823 representing story B 512;
and (4) d-block 824 representing story C 513. Id. at 8:58–61. Figure 9 of
the ’160 patent illustrates that d-block 821, in turn, points to a separate d-
block for each component of story A 510. Id. at 4:28–29, 8:62–63, Fig. 9.
Figure 7 of the ’160 patent, reproduced below, illustrates the
information provided by each d-block:

As depicted in Figure 7, each d-block contains a unique identifier 701
for the digital work to which it corresponds, a starting address 702 of the
first byte of the work, a length 703 representing the number of bytes in the
work, a rights portion 704 that maintains the work’s granted usage rights and
their status data, a parent pointer 705 that points to a parent d-block, and
child pointers 706 that point to child d-blocks. Id. at 8:29–36.
D. Illustrative Claims
Claims 1 and 23 are independent. Independent claim 1 is illustrative:
1. A computer readable medium having embedded
thereon a digital work adapted to be distributed within in a
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system for controlling the use of digital works, said digital work
comprising:
a digital content portion that is renderable by a rendering
device;
a usage rights portion associated with said digital content
portion and comprising one or more computer readable
instructions configured to permit or prohibit said rendering
device to render said digital content portion, said usage rights
portion being expressed as statements from a usage rights
language having a grammar defining a valid sequence of
symbols, and specifying a manner of use relating to one or
more purposes for which the digital work can be used by an
authorized party; and
a description structure comprising a plurality of
description blocks, each of said description blocks comprising
address information for a least one part of said digital work, and
a usage rights part for associating one or more usage rights
portions.

E. Prior Art Relied Upon
Petitioner relies upon the following prior-art references:
Wyman US 5,260,999 Nov. 9, 1993 Ex. 1025
O’Callaghan US 5,477,263 Dec. 19, 1995 Ex. 1024
Hartrick EP 0567800 A1 Nov. 3, 1993 Ex. 1021
Henry H. Perritt, Jr., Knowbots, Permissions Headers and Contract Law,
CONFERENCE ON TECHNOLOGICAL STRATEGIES FOR PROTECTING
INTELLECTUAL PROPERTY IN THE NETWORKED MULTIMEDIA ENVIRONMENT
(Apr. 30, 1993) (“Perritt”) (Ex. 1056)
F. Asserted Grounds of Unpatentability
Petitioner contends that the challenged claims are unpatentable under
35 U.S.C. §§ 102 and/or 103 based on the following specific grounds (Pet.
2–3):

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Reference[s] Basis Claims Challenged
Hartrick § 102 1–3, 9, and 23
Hartrick and O’Callaghan § 103 1–3, 9, and 23
Hartrick and Perritt § 103 2 and 3
Hartrick, O’Callaghan, and Perritt § 103 2 and 3
Hartrick and Wyman § 103 10
Hartrick, O’Callaghan, and Wyman § 103 10

II. ANALYSIS
A. Whether Patent Owner is Estopped from Defending the
Patentability of the Challenged Claims
Petitioner argues that under 37 C.F.R. § 73(d)(3), Patent Owner is
estopped from supporting the patentability of the challenged claims because
of the Board’s prior decision to institute inter partes review of, and Patent
Owner’s subsequent cancellation of, different claims in the ’160 patent. Pet.
17–24. As noted above, the ’160 patent was the subject of a prior inter
partes review, ZTE Corp. v. ContentGuard Holdings, Inc., Case IPR2013-
00134 (“ZTE”).
1
In ZTE, the petitioner requested inter partes review of
method claims 12–22 and 30–38, as well as system claims 1–11 and 23–29,
alleging, inter alia, that the claims were anticipated by Hartrick or obvious
over Hartrick and other references. ZTE Pet. 4–5.
2
The Board instituted
review of the method claims, but did not institute review of the system

1
We will refer to the decision to institute in ZTE as the “ZTE Decision” or
“ZTE Dec.” Other papers filed in the ZTE case will be identified in similar
fashion.
2
In ZTE Hartrick was identified as “EP ’800.” ZTE Dec. 9.
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claims. ZTE Dec. 32–33. Patent Owner subsequently requested cancellation
of the method claims and entry of adverse judgment as to those claims. ZTE
Paper 28. The Board granted Patent Owner’s requests and entered judgment
against Patent Owner as to the method claims. ZTE Paper 34, 3. Petitioner
now contends that under 37 C.F.R. § 42.73(d)(3), Patent Owner is estopped
from “contending that the subject matter defined by the canceled claims is
patentable over the prior art which the Board found to anticipate or render
obvious the cancelled claims of the ’160 patent (i.e., Hartrick (Ex. 1021)),”
and that the differences between the canceled claims and the challenged
claims are “inconsequential.” Pet. 19–23.
We disagree with Petitioner that 37 C.F.R. § 42.73(d)(3) applies in the
circumstances here to preclude Patent Owner from defending against a
challenge to claims 1–3, 9, 10, and 23. This rule states in relevant part:
A patent applicant or owner is precluded from taking action
inconsistent with the adverse judgment, including obtaining in
any patent:
(i) A claim that is not patentably distinct from a finally refused
or canceled claim; or
(ii) An amendment of a specification or of a drawing that was
denied during the trial proceeding.
As Patent Owner points out, comments accompanying the rule suggest that it
is intended to preclude recapturing in another USPTO proceeding—e.g.,
prosecuting a continuation or reissue application—subject matter that was
lost in an AIA proceeding. Prelim. Resp. 37–38 (quoting Rules of Practice
for Trials Before the Patent Trial and Appeal Board, 77 Fed. Reg. 48,612,
48,649 (Aug. 14, 2012). Thus, this rule does not preclude Patent Owner
from defending the patentability of the challenged claims.
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B. Claim Construction
The ’160 patent has expired. See Ex. 1011, 1:6–11; 35 U.S.C.
§ 154(a)(2). The Board interprets claim terms in expired patents as would a
district court, by applying the claim construction principles outlined in
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In re
Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Only those terms in
controversy need to be construed, and only to the extent necessary to resolve
the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999). In this case, we determine that only the term “address
information” needs to be construed expressly.
“address information”
Each of independent claims 1 and 23 recites a digital work
comprising, inter alia, a “description structure.” In ZTE, the Board
construed “description structure” to have the same meaning as “description
tree,” which the Specification defines as “any acyclic structure that
represents the relationship between the components of a digital work.” ZTE
Dec. 22. This construction, which we adopt for purposes of this decision, is
further limited by additional claimed features. Specifically, claims 1 and 23
require the claimed description structure to contain a plurality of
“description blocks,” each description block comprising, inter alia, “address
information for at least one part of said digital work.”
Neither party proposed a construction for the claimed “address
information.” Nor do we find an express construction of this term in the
Specification. In such a case it is appropriate to consult a technical
dictionary for guidance in determining the meaning of this term to a person
of ordinary skill in the art. Atofina v. Great Lakes Chem. Corp., 441 F.3d
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991, 996 (Fed. Cir. 2006) (citing Phillips v. AWH Corp., 415 F.3d 1303,
1318 (Fed. Cir. 2005) (en banc)).
One contemporaneous technical dictionary defines “Address” as “[a]
number, character, or group of characters that identifies a given device or
storage location.” IEEE STANDARD COMPUTER DICTIONARY, A
COMPILATION OF IEEE STANDARD COMPUTER GLOSSARIES 17 (IEEE ed.
1990) (Ex. 3001). Because digital works are not “devices,” but rather are
comprised of electronic files, the relevant aspect of this definition to this
discussion is “storage location” rather than “device location.” Therefore,
“address information for at least one part of said digital work” means
information that identifies the location where at least one part of a digital
work is stored. The Specification uses the term consistently with this
definition. For example, the Specification uses the term “addresses” to
identify where the components of Figure 5’s digital work 509 are stored:
It is assumed that the digital work is stored starting at a relative
address of 0. Each of the parts of the digital work are stored
linearly so that story A 510 is stored at approximately addresses
0–30,000, advertisement 511 at addresses 30,001–40,000, story
B 512 at addresses 40,001–60,000 and story C 513 at addresses
60,001–85K.
Ex. 1011, 8:12–18; see id. at Fig. 5. Further, in discussing usage rights for a
copy transaction, the Specification states that
The requester sends the server a message to initiate the Copy
Transaction. This message indicates the work to be copied, the
version of the copy right to be used for the transaction, the
destination address information (location in a folder) for
placing the work, the file data for the work (including its size),
and the number of copies requested.
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Ex. 1011, 32:49–54 (emphasis added); see id. at 33:4–9 (similar disclosure
for transfer transaction). Thus, for purposes of this decision, we determine
that “address information for at least one part of said digital work” means
information that identifies the location where at least one part of a digital
work is stored.
C. Claims 1–3, 9, and 23—Anticipation—Hartrick
Petitioner contends that claims 1–3, 9, and 23 are anticipated by
Hartrick. Pet. 35–52. Patent Owner disputes this contention. Prelim. Resp.
42–43.
1. Hartrick
Hartrick describes a system and method for ensuring that royalties are
paid when softcopy documents, e.g., online electronic books, are copied,
printed, or transmitted. Ex. 1021, 1:3–8, 5:19–38. Hartrick makes use of
“structured documents” created by the Standardized General Markup
Language (“SGML”). Id. at 4:25–36. SGML uses “tags” to identify various
“elements” within the structured document, such as Paragraphs, Simple
Lists, Ordered Lists, and List Items. Id. at 1:39–42, 4:25–5:1. In Hartrick’s
system, the book’s author or publisher includes royalty payment information
either in the structured document as an element or in a separate royalty
payment information file that accompanies the book. Id. at 5:48–52. A user
reads the softcopy book at a workstation by applying a special softcopy book
reading program. Id. at 6:1–6. The user also applies a “royalty payment
program” in conjunction with the reading program; if the user attempts to
copy or print the softcopy book, the royalty payment program intercepts and
suspends the copy or print command, facilities the user’s payment of a
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royalty to the publisher, and recommences the copying or printing process.
Id. at 6:9–56.
Figure 4, reproduced below, depicts the memory image of a
structured-document formatted text stream:

Figure 4 depicts the memory image of a structured-document formatted text
stream comprising, e.g., book title element 300, paragraph elements 324,
328, 330, etc.; heading elements 316, 326, 332, etc.; copyright notice
element 304; royalty payment elements 306, 318, and 334; and royalty
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amount elements 308, 320, and 346. Id. at Fig. 4. Each element, including
the copyright and royalty elements, consists of a begin tag, the element
contents, and an end tag. Id. at 1:28–32, 10:5–7. Figure 5, reproduced
below, depicts how the formatted text stream would be displayed to a user:

As shown in Figure 5, a softcopy book reading program uses
formatting information from the structured document tags to display the text
as it would appear when it is printed. Id. at 1:32–37, 2:4–11, 36–39.
As depicted in Figure 4, paragraph coordinates 156 are associated
with each element in the text stream. Coordinate system 156 uses a six-digit
coordinate to represent the “hierarchical level” of elements with respect to
each other. Id. at 13:44–48. For example, as Hartrick explains:
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[T]he paragraph element 330 has a coordinate of bk=1, h1=1,
h2=1, h3=0, p=2 and e1=1. This means that the element 330 is
part of the first book bk=1, part of the first h1 chapter heading,
part of the first h2 topic heading and is not part of any
subsidiary topic heading to the first topic heading. The p=2
coordinate represents that element 330 is the second paragraph
element under the first topic heading. The e1=1 coordinate
represents that the element 330 is the first element in the
paragraph.
Id. at 13:48–58.
When the royalty payment program is loaded into the memory of the
user’s workstation, a “default parameter table 56” is loaded into memory as
well. Id. at 10:55–11:1. Figure 7 of Hartrick illustrates the default
parameter table 56 after it has been populated with information pertaining to
the structured document shown in Figure 4. Id. at Ex. 8:13–15. Figure 7 is
reproduced below:

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Figure 7 illustrates that parameter table 56 includes information for
each element in the structured document, including element coordinate
system 156, discussed above. The table also indicates whether an element is
to be displayed to a user, and whether a royalty payment element applies to
the entire softcopy book or only to a chapter within the book. Id. at 11:6–19.
2. Analysis
Claim 1 recites, inter alia, a digital work comprising a “description
structure,” which itself comprises a plurality of “description blocks,” each
description block comprising “address information for at least one part of
said digital work.” Claim 23 contains the same limitation. Claims 2, 3, and
9 depend from claim 1. Petitioner relies on Hartrick’s parameter table as
corresponding to the claimed description structure. Pet. 38. Petitioner
explains that Hartrick’s parameter table “first exists in the form of an
‘unloaded’ parameter table stored on the user device,” and is “then
populated with data from the individual tagged document elements in the
‘structured document.’” Id. According to Petitioner, “[t]hese elements
include information relevant to the address location of particular content
(e.g., the individual chapters of the book) and the address location for
associated usage rights for the particular content (e.g., royalty tags and
related fees).” Id. at 38–39. Petitioner further asserts that the “loaded
parameter table is populated as a hierarchical organization of blocks based
on the hierarchical structure of the formatted text (i.e., an ‘acyclic
structure’).” Id. at 39.
Regarding the “plurality of description blocks” limitation, Petitioner
contends that
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[i]nformation concerning the special tags is listed in the loaded
parameter table in the order in which the tags appear in the
formatted text stream; thus the entries are grouped by
associated content . . . (forming a “plurality of description
blocks”). . . . For example, the entries labeled “300L” through
“314L” are for tags associated with the global
document/content, entries labeled “318L” through “322L” are
tags associated with the first chapter, and entries labeled
“344L” through “348L” are for tags associated with the second
chapter.
Id. at 49.
3
As for the claimed “address information,” Petitioner states that
“[t]he coordinates (‘addresses’) labeled ‘156’ serve to associate the tag
information with ‘at least one part of said digital work.’” Id. (emphasis in
original).
We are not persuaded that Hartrick discloses a description structure
comprising a plurality of description blocks that further comprise “address
information for at least one part of [the] digital work.” As an initial matter,
it is not entirely clear what Petitioner contends corresponds to the claimed
description blocks: whether each row in the parameter table is a separate
description block, or, instead, whether a single description block is
comprised of a group of rows. For purposes of this decision, we assume
without deciding that a person of ordinary skill would have considered one
or more of the rows in the parameter table to correspond to a claimed
description block.

3
In connection with this quoted excerpt Petitioner refers to “shading” in “the
parameter table below,” which we take to mean a version of the table shown
in Hartrick Figure 7 that Petitioner annotated with shading. However, we
are unable to find such an annotated table in the Petition.
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It is also not entirely clear that Petitioner contends that the
“description blocks” within the parameter table include the claimed “address
information.” As noted above, Petitioner states that the elements in the
parameter table include information “relevant to” the address location of
particular content; Petitioner does not state that the elements include the
address information itself. Pet. 38. Petitioner refers to the coordinates in
column 156 of Figure 7 as “addresses,” and then asserts that the coordinates
“serve to associate the tag information with at least one part of said digital
work.” Pet. 49 (emphasis and quotation omitted). But it is unclear how
“associate[ing] tag information with at least one part of said digital work”
constitutes “address information” for at least one part of the digital work.
As discussed above, “address information for at least one part of the digital
work” means information that identifies the location where at least one part
of a digital work is stored. The coordinates in column 156, however, merely
identify the “hierarchical level” of each element with respect to the other
elements within the text stream; at best, they identify a specific location of a
part of a digital work only respect to other parts of the digital work.
Although this information may satisfy one aspect of a description structure,
i.e., “represent[ing] the relationship between the components of a digital
work,” it does not identify where at least one part of a digital work is stored,
and therefore does not constitute the claimed address information.
4

4
As Petitioner notes, in the ZTE Decision, in the context of instituting inter
partes review of different claims, the Board stated that “ZTE has presented
sufficient evidence to warrant a finding that [Hartrick] discloses ‘a
description structure’ that describes ‘a digital work’ as required by
independent claims 12 and 30.” ZTE Dec. 26–27. Each decision on
institution is based on the record and arguments that are specific to that case.
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Because we are not persuaded that Hartrick describes a description
structure comprising a plurality of description blocks that further comprise
the claimed address information, Petitioner has not shown a reasonable
likelihood of prevailing on its challenge of claims 1–3, 9, and 23 of the ’160
patent as anticipated by Hartrick.
D. The Remaining Grounds of Unpatentability
Petitioner’s remaining grounds of unpatentability rely on Hartrick
teaching the claimed address information. Pet. 52–60. Accordingly, for the
reasons stated above, Petitioner has not shown a reasonable likelihood of
prevailing on these grounds.
III. CONCLUSION
We determine that the Petition fails to show that there is a reasonable
likelihood that Petitioner would prevail with respect to at least one of the
claims challenged in the Petition.
IV. ORDER
For the reasons given, it is
ORDERED that the Petition is denied and no trial is instituted.

Further, statements made in a decision on institution are necessarily
preliminary in nature. Thus, the above statement in the ZTE Decision does
not preclude us from considering, in this case, whether Hartrick teaches the
claimed “address information.”
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PETITIONER:

Jeffrey P. Kushan
Michael Franzinger
iprnotices@sidley.com

PATENT OWNER:

Nicholas T. Peters
ntpete@fitcheven.com

Timothy P. Maloney
tpmalo@fitcheven.com

Robert A. Cote
rcote@mckoolsmith.com