Apple Inc.v.Contentguard Holdings, Inc.

Patent Trial and Appeal BoardJul 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 IPR2015-00458 Patent 7,225,160 B2 2 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). IPR2015-00458 Patent 7,225,160 B2 3 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 IPR2015-00458 Patent 7,225,160 B2 4 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 IPR2015-00458 Patent 7,225,160 B2 5 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 IPR2015-00458 Patent 7,225,160 B2 6 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): IPR2015-00458 Patent 7,225,160 B2 7 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. IPR2015-00458 Patent 7,225,160 B2 8 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. IPR2015-00458 Patent 7,225,160 B2 9 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 IPR2015-00458 Patent 7,225,160 B2 10 991, 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. IPR2015-00458 Patent 7,225,160 B2 11 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 IPR2015-00458 Patent 7,225,160 B2 12 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 IPR2015-00458 Patent 7,225,160 B2 13 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: IPR2015-00458 Patent 7,225,160 B2 14 [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: IPR2015-00458 Patent 7,225,160 B2 15 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 IPR2015-00458 Patent 7,225,160 B2 16 [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. IPR2015-00458 Patent 7,225,160 B2 17 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. IPR2015-00458 Patent 7,225,160 B2 18 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.” IPR2015-00458 Patent 7,225,160 B2 19 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

Apple Inc. v. Contentguard Holdings, Inc.