D2L CORPORATION

Patent Trials and Appeals BoardOct 26, 2020

2019002338 (P.T.A.B. Oct. 26, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/242,931 04/02/2014 Erkang WEI K8001246US 5498 34236 7590 10/26/2020 GOWLING WLG (CANADA) LLP 50 QUEEN STREET NORTH, STE. 1020 P.O. BOX 2248 KITCHENER, ONTARIO N2H6M2 CANADA EXAMINER LIN, AMIE CHINYU ART UNIT PAPER NUMBER 2436 NOTIFICATION DATE DELIVERY MODE 10/26/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): JEFF.WONG@GOWLINGWLG.COM VAL.COTTRILL@GOWLINGWLG.COM Waterloo.IP@gowlingwlg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ERKANG WEI ____________________ Appeal 2019-002338 Application 14/242,931 Technology Center 2400 ____________________ Before ERIC S. FRAHM, JOHNNY A. KUMAR, and BETH Z. SHAW, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–26. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. INVENTION Appellant’s invention “relates generally to digital rights” and is directed to a method (claims 1–15) and system (claims 16–26) “for digital 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a) (2017). According to Appellant, D2L Corporation is the real party in interest (Appeal Br. 3). Appeal 2019-002338 Application 14/242,931 2 rights enforcement over a plurality of user devices” (Spec. ¶ 1). Digital rights are enforced by a content provider, and digital content is protected, using Digital Right Management (DRM) data to control access and limit use after sale and distribution of the digital content (see Spec. ¶ 3). Appellant’s disclosed and claimed invention can increase ease of use by customers who download electronic books or other digital content through online purchases, where the customer has multiple devices capable of displaying the digital content (see Spec. ¶ 3). Independent method claim 1 is illustrative of the invention and is reproduced below, with bracketed lettering and emphases added to disputed portions of the claim. 1. A method for digital rights enforcement over multiple devices, the method comprising: receiving, by a server, a request for digital content from a user via a selected user device over a network; determining the digital content requested by the user; determining digital rights associated with the digital content; determining access rights relating to authorized devices for the user based at least in part on the digital rights associated with the digital content; determining whether the user has exhausted the access rights; and if the access rights are exhausted: [A] determining at least one content use factor for each of the user's previously authorized user devices, wherein the at least one content use factor includes one or more of a time since the digital content was downloaded on the previously authorized user devices, a time since content corresponding to the requested digital content was last reviewed on the previously authorized user devices, and a time the content was reviewed on the previously authorized user device; Appeal 2019-002338 Application 14/242,931 3 [B] determining a previously authorized user device on which to revoke access to the digital content based on the at least one content use factor; and revoking access rights to the previously authorized user associated device; otherwise downloading the digital content on the selected user device. Appeal Br. 21, Claims Appendix (emphases and bracketed lettering added). EXAMINER’S REJECTIONS The Examiner rejected claims 1–3, 5, 9–11, 13, 14, 16–19, 22, and 23 under 35 U.S.C. § 103 as being unpatentable over Gilder et al. (US 2008/0148363 A1; published June 19, 2008) (hereinafter, “Gilder”), Roberts et al. (US 2014/0156373 A1; published June 5, 2014 and filed Oct. 31, 2013) (hereinafter, “Roberts”), and Greene et al. (US 2006/0253887 A1; published Nov. 9, 2006) (hereinafter, “Greene”). Final Act. 3–9. The Examiner rejected claim 4 under 35 U.S.C. § 103 as being unpatentable over Gilder, Roberts, Greene, and Lilley (US 2008/0195546 A1; published Aug. 14, 2008). Final Act. 9–10. The Examiner rejected claim 6 under 35 U.S.C. § 103 as being unpatentable over Gilder, Roberts, Greene, and Hotes et al. (US 2010/0242097 A1; published Sept. 23, 2010) (hereinafter, “Hotes”). Final Act. 10. Appeal 2019-002338 Application 14/242,931 4 The Examiner rejected claims 7, 8, and 21 under 35 U.S.C. § 103 as being unpatentable over Gilder, Roberts, Greene, and Marivoet et al. (US 2010/0250917 A1; published Sept. 30, 2010) (hereinafter, “Marivoet”). Final Act. 10–11. The Examiner rejected claims 12 and 24 under 35 U.S.C. § 103 as being unpatentable over Gilder, Roberts, Greene, and Adam et al. (US 2014/0344571 A1; published Nov. 20, 2014 and filed July 2, 2013) (hereinafter, “Adam”). Final Act. 11–12. The Examiner rejected claim 15 under 35 U.S.C. § 103 as being unpatentable over Gilder, Roberts, Greene, and Dinsmore et al. (US 2015/0020149 A1; published Jan. 15, 2015 and filed June 2, 2014 based on US Provisional Appl. No. 61/846,356 filed July 15, 2013) (hereinafter, “Dinsmore”). Final Act. 12–13. The Examiner rejected claim 20 under 35 U.S.C. § 103 as being unpatentable over Gilder, Roberts, Greene, and Parry et al. (US 2014/0013450 A1; published Jan. 9, 2014) (hereinafter, “Parry”). Final Act. 13–14. The Examiner rejected claims 25 and 26 under 35 U.S.C. § 103 as being unpatentable over Gilder, Roberts, Greene, and Allen et al. (US 2007/0100829 A1; published May 3, 2007) (hereinafter, “Allen”). See Final Act. 3–9; Ans. 3–14. Final Act. 14–15. ANALYSIS We have reviewed Appellant’s arguments in the Appeal Brief (Appeal Br. 11–20), the Examiner’s rejections (Final Act. 3–14), and the Examiner’s response to Appellant’s arguments (Ans. 3–18). Appellant’s arguments have Appeal 2019-002338 Application 14/242,931 5 persuaded us of error in the Examiner’s rejections of all of the disputed claims under 35 U.S.C. § 103. Appellant presents several arguments asserting the Examiner’s rejections of independent claims 1 and 16,2 each relying upon the same base combination of Gilder, Roberts, Greene, is in error (Appeal Br. 11–20). The issue presented by these arguments is whether or not the Examiner erred in finding the base combination of Gilder, Roberts, and Greene teaches or suggests determining a content use factor (see claim 1, limitation A), and determining a previously authorized user device based on that content use factor (see claim 1, limitation B), as recited in independent claim 1, and as commensurately recited in remaining independent claim 16. The Examiner’s conclusion of obviousness is based on the interpretation that the content use factor recited in limitations A and B of claim 1, and as similarly recited in claim 16, is met by Roberts’ teaching of the date of activation/registration of a device (see Final Act. 5–6 citing Roberts ¶¶ 88–90; Ans. 3–4 citing Roberts Figs. 15, 16). The Examiner interprets the term “content use factor” as being “any type of data related to any content use” (Ans. 3). However, in this case, the Examiner has applied the broadest possible interpretation of “content use factor,” and not the broadest reasonable interpretation, based on Appellant’s claims, Drawings, and Specification. See In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (stating that “the Board cannot construe the claims so broadly that 2 Although Appellant argues claims 1 and 9 in the Appeal Brief (see Appeal Br. 11), we consider this to be harmless error. Appellant recognizes that the independent claims are claims 1 and 16 (see Appeal Br. 7–9), and appears to have inadvertently argued claim 9 in place of claim 16. Appeal 2019-002338 Application 14/242,931 6 its constructions are unreasonable under general claim construction principles . . .” and that giving claim terms “a strained breadth in the face of the otherwise different description in the specification [is] unreasonable” (internal quotation marks omitted)); TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016) (“While the broadest reasonable interpretation standard is broad, it does not give the Board an unfettered license to interpret the words in a claim without regard for the full claim language and the written description.”). The broadest reasonable interpretation differs from the broadest possible interpretation. Smith, 871 F.3d at 1383; see also MPEP § 2111 (9th Ed., Rev. 10.2019, June 2020) (“The broadest reasonable interpretation does not mean the broadest possible interpretation. Rather, the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings.”). The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is “an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’” Smith, 871 F.3d at 1382–83 (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)). Here, the broadest reasonable interpretation of a content use factor is a factor or data concerning how digital content is being used, not the time or date of, or since, registration of the device. In this light, we agree with Appellant’s contentions (see Appeal Br. 11–13) that on this record, Roberts fails to teach or suggest determining and using any content use factor, as required by claims 1 and 16 (see, e.g., claim 1, limitations A and B). We Appeal 2019-002338 Application 14/242,931 7 conclude that one of ordinary skill in the art, looking at the cited portions of Roberts, would not consider a content use factor to encompass Roberts’ device registration, date of registration, or time since registration. Appellant’s arguments have persuaded us of error in the Examiner’s rejection of independent claims 1 and 16, and the claims which depend thereupon. Accordingly, we do not sustain the Examiner’s rejections of independent clams 1 and 16, or dependent claims 2–15 and 17–26, which rely on the same base combination of Gilder, Roberts, and Greene. CONCLUSION We reverse the Examiner’s rejections of claims 1–26 under 35 U.S.C. § 103. Appeal 2019-002338 Application 14/242,931 8 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5, 9–11, 13, 14, 16–19, 22, 23 103 Gilder, Roberts, Greene 1–3, 5, 9– 11, 13, 14, 16–19, 22, 23 25, 26 103 Gilder, Roberts, Greene, Allen 25, 26 4 103 Gilder, Roberts, Greene, Lilley 4 6 103 Gilder, Roberts, Greene, Hotes 6 7, 8, 21 103 Gilder, Roberts, Greene, Marivoet 7, 8, 21 12, 24 103 Gilder, Roberts, Greene, Adam 12, 24 15 103 Gilder, Roberts, Greene, Dinsmore 15 20 103 Gilder, Roberts, Greene, Parry 20 Overall Outcome 1–26 REVERSED