Intertrust Technologies Corporation

Patent Trials and Appeals Board

Dec 3, 2021

IPR2020-00664 (P.T.A.B. Dec. 3, 2021)

Trials@uspto.gov Paper 28
571-272-7822 Entered: December 3, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

DOLBY LABORATORIES, INC.,
Petitioner,
v.
INTERTRUST TECHNOLOGIES CORPORATION,
Patent Owner.

IPR2020-00664
Patent 9,569,627 B2

Before MICHAEL R. ZECHER, NABEEL U. KHAN, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.

KHAN, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background and Summary
Dolby Laboratories, Inc. (“Petitioner”) filed a Petition (Paper 2,
“Pet.”) requesting an inter partes review of claims 1 and 4–8 (“the
challenged claims”) of U.S. Patent No. 9,569,627 B2 (Ex. 1001, “the ’627
patent”). Intertrust Technologies Corporation (“Patent Owner”) timely filed
a Preliminary Response (Paper 6, “Prelim. Resp.”). Petitioner and Patent
Owner filed additional briefing with our authorization. See Papers 7, 9. On
December 8, 2020, upon consideration of the Petition, Preliminary
Response, the additional briefing, and the evidence cited, we determined that
Petitioner established a reasonable likelihood that it would prevail with
respect to at least one of the challenged claims in the Petition and instituted
review to determine the patentability of the challenged claims on all
grounds. Paper 10 (“Dec. Inst.”).
After institution, Patent Owner filed a Patent Owner Response (Paper
15, “PO Resp.”), Petitioner filed a Reply (Paper 18, “Pet. Reply”), and
Patent Owner filed a Sur-Reply (Paper 19, “PO Sur-reply”). An oral hearing
was held on September 13, 2021, and the hearing transcript is included in the
record. Paper 27 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
(2019), addresses issues and evidence raised during the inter partes review.
For the reasons that follow, Petitioner demonstrates by a preponderance of
the evidence that claims 1 and 4–8 of the ʼ627 patent are unpatentable.
B. Related Matters
The parties identify four related district court cases involving the ’627
Patent: (1) Dolby Laboratories, Inc. v. Intertrust Corporation, No. 3:19-cv-
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03371 (N.D. Cal.); (2) Intertrust Technologies Corporation v. AMC
Entertainment Holdings, Inc., No. 2:19-cv-00265 (E.D. Tex.); (3) Intertrust
Technologies Corporation v. Cinemark Holdings, Inc., No. 2:19-cv-00266
(E.D. Tex.); and (4) Intertrust Technologies Corporation v. Regal
Entertainment Group, No. 2:19-cv-00267 (E.D. Tex.). See Pet. 4; Paper 16,
2. We refer to the three infringement actions filed by Patent Owner in the
U.S. District Court for the Eastern District of Texas as the “Texas Actions.”
C. The ’627 Patent
The ’627 patent, titled “Systems and Methods for Governing Content
Rendering, Protection, and Management Applications” is directed to systems
and methods for governing application programs used to render, protect, or
otherwise access or use electronic content. Ex. 1001, code (54), 2:13–18.
The application giving rise to the ’627 patent was filed on March 25, 2016,
and claims priority ultimately to U.S. Provisional App. No. 60/209,454, filed
on June 4, 2000. Id. at codes (21), (22), (60), (63).
According to the ’627 patent, a supervisory application, which
governs a second application, may be used to access protected digital
information stored in a secure electronic container and extract secret
information needed by the second application to access protected content.
Ex. 1001, 2:23–30. The supervisory application may revoke the second
application’s authorization to process protected content by revoking access
to the secure container. Id. at 2:30–34. In another embodiment, a
supervisory management system may revoke the second application’s ability
to access or grant access to content if it is determined that the second
application is not adequately enforcing certain rules that govern the
content’s use. Id. at 2:34–45.
Figure 1 of the ’627 patent is reproduced below.
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Figure 1 depicts a system that uses a supervisory digital rights management
(“DRM”) system for governing operation of other DRM systems. Ex. 1001
at 3:47–49. As shown in Figure 1, system 1011 has installed thereon a
secure processing application 100, which contains protected processing
environment 110 and protected database 104. Id. at 4:34–36, 4:42–44.
Application 103, which may be installed on or remote from system 101, may
be supervised or governed by secure processing application 100. Id. at
4:36–41.
In operation, secure processing application 100 may extract secret
information from secure container 106 or protected database 104 and
forward it (or related information) to application 103 in response to request

1 System 101 may be installed on a personal computer (“PC”) client,
computing device, or commerce service. Ex. 1001, 4:35–36.
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112 from application 103 to access protected content 108. Ex. 1001, 5:23–
30. Application 103 needs the secret information to access protected content
108 and render or make available plaintext content 109. Id. at 5:30–32. For
example, secret information may be access key 130 extracted by decrypting
the relevant portion of secure container 106. Id. at 5:25–27. Secure
processing application 100 may revoke application 103’s authorization to
process protected content 108 by revoking application 103’s access to or use
of the secret information. Id. at 5:36–40. For example, control 105 could be
delivered to secure application 100 indicating that application 103 is not to
be granted access (or certain types of access) to the secret information
contained in secure container 106 or in protected database 104. Id. at 5:40–
44. In some embodiments, the content owner or system administrator may
set necessary criteria or minimal requirements (relating to operation or
security) that application 103 must satisfy to render or process protected
content 108. Id. at 5:50–57. If it is discovered that application 103 is no
longer meeting these requirements, its ability to access or manage content
may be revoked. Id. at 5:57–61.
Figure 3B of the ʼ627 patent is reproduced below.

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Figure 3B depicts a system for governing content rendering or management
application in accordance with an embodiment of the ’627 patent. Ex. 1001,
3:55–57. As shown in Figure 3B, application 320 may request access to a
piece of electronic content 304 by making a call to the host system’s
modified application programming interface (“API”) 312. Id. at 8:25–28.
Calls may be routed from conformance library 314 to governance engine
316, which determines whether to grant or deny the application’s request.
Id. at 8:28–32. If the supervisory application determines the request should
be granted, it routes the request to the host system’s input/output (“I/O”)
library 308 via the host system’s modified API 312. Id. at 3:32–35. The
host system may then perform the necessary operations to retrieve electronic
content 304 for application 320. Id. at 3:35–37.
D. Illustrative Claims
Of the challenged claims, only claim 1 is independent. Claims 4–8
depend from claim 1 either directly or indirectly. Ex. 1001, 12:6–61.
Claim 1, reproduced below with formatting and bracketing, is
illustrative.
1. [1pre] A method performed by a system comprising a
processor and a non-transitory computer-readable storage
medium storing instructions that, when executed by the
processor, cause the system to perform the method, the method
comprising:
[1a] receiving, by a secure control application executing
on the system in a protected processing environment, a request
to access protected content by a governed application executing
on the system in a processing environment separate from the
protected processing environment;
[1b] extracting, by the secure control application, secret
information from a secure electronic container, the secret
information being configured to be used, at least in part, to
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decrypt the protected content, wherein extracting the secret
information comprises decrypting at least a portion of the secure
electronic container to generate unencrypted secret information;
and
[1c] sending, by the secure control application, the
unencrypted secret information from the protected processing
environment to the governed application executing in the
processing environment separate from the protected processing
environment.
Ex. 1001, 12:6–28.
E. Prior Art and Asserted Grounds
Petitioner asserts that claims 1 and 4–8 would have been unpatentable
based on the following grounds:
Ground Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1 1, 4–8 103(a)2 Gammie3
2 1, 4–8 103(a) Shamoon4

In addition, Petitioner relies on the Declaration of Dr. Vijay K. Madisetti
(Ex. 1002) in support of the asserted grounds of unpatentability. See
generally Pet.; Pet. Reply. Patent Owner relies on the Declaration of Dr.
Markus Jakobsson (Ex. 2024) in support of Patent Owner’s Response. See
generally PO Resp.
II. ANALYSIS
For the reasons discussed below, we determine Petitioner has shown,
by a preponderance of the evidence, that claims 1 and 4–8 would have been

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’664 patent issued claims
priority to applications filed before this date, the pre-AIA version of § 103
applies.
3 Gammie, US 5,237,610, Aug. 17, 1993 (Ex. 1010, “Gammie”).
4 Shamoon, WO 99/48296, Sept. 23, 1999 (Ex. 1009, “Shamoon”).
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obvious over Gammie and that claims 1 and 8 would have been obvious over
Shamoon. We, however, determine Petitioner has not shown by a
preponderance of the evidence that claims 4–7 would have been obvious
over Shamoon.
A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
between the subject matter sought to be patented 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) when in evidence, objective evidence
of obviousness or nonobviousness, i.e., secondary considerations. See
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Additionally, the obviousness inquiry typically requires an analysis of
“whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)). Furthermore, Petitioner does not satisfy its burden of
proving obviousness by employing “mere conclusory statements,” but “must
instead articulate specific reasoning, based on evidence of record, to support
the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
829 F.3d 1364, 1380 (Fed. Cir. 2016).
We start first with the analysis of the level of skill in the art and claim
construction, and then move to analyzing the remaining Graham factors.
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A. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art at the time
the ’627 patent was filed (a “POSITA”) would have had a minimum of a
bachelor’s degree in computer science, electrical engineering, mathematics,
or a related field, and approximately four years of professional experience or
equivalent study in the design of secured electronic systems. Pet. 13–14.
Petitioner further states that additional graduate education could substitute
for professional experience, or significant experience in the field could
substitute for formal education. Id. at 14 (citing Ex. 1002 ¶¶ 1–53).
Patent Owner sets forth a similar definition, stating that a POSITA
would have a Bachelor of Science degree in electrical engineering and/or
computer science, and three years of work or research experience in the
fields of secure transactions and encryption, or a Master’s degree in
electrical engineering and/or computer science and two years of work or
research experience in related fields. PO Resp. 12. Patent Owner, however,
states that the positions set forth in its Response would be the same under
either party’s proposal. Id.
The parties’ proposals do not differ in any meaningful way with
respect to the issues in dispute. We adopt Petitioner’s definition of a
POSITA, except that we delete the qualifier “a minimum” to eliminate
vagueness as to the appropriate level of education. The qualifier expands the
range without an upper bound, i.e., encompassing a Ph.D. degree and
beyond, and thus does not meaningfully indicate the level of ordinary skill in
the art. This definition of a person of ordinary skill in the art is supported by
the testimony of Dr. Madisetti and is commensurate with the level of
ordinary skill as reflected in the asserted prior art and the ’627 patent. We
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note, however, that our analysis would be the same under either party’s
definition of a POSITA.
B. Claim Construction
In inter partes reviews, we interpret a claim “using the same claim
construction standard that would be used to construe the claim in a civil
action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b). Under this
standard, we construe the claim “in accordance with the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent.” Id. Only claim
terms that are in controversy need to be construed and only to the extent
necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
1. Whether the Preamble of Claim 1 is limiting
Patent Owner argues the preamble of claim 1 is limiting. PO Resp.
13–15. Patent Owner argues that “the preamble’s recitation of ‘system’
provides antecedent basis for the term ‘the system’ found in two locations in
the claim’s body.” PO Resp. 14–16. Patent Owner also argues that the
claim body’s recitation of “the system” indicates that both the secure control
application and the governed application of claim 1 are executed on the
same system. PO Resp. 15; PO Sur-reply 2.
Petitioner argues that, “even if the preamble is limiting, it has been
met by the art.” Pet. Reply 3. Petitioner argues that the preamble language
recites only a generic processor and type of storage medium, both of which
would be evident from the body’s recitation of steps performed by an
executing application. Thus, according to Petitioner, the preamble adds
nothing essential to the claim that the claim body does not already require.
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Generally, a preamble does not limit a claim. Allen Eng’g Corp. v.
Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Here, we need
not decide whether the preamble limits claim 1 because Petitioner
establishes by a preponderance of the evidence that Gammie and Shamoon
each respectively teach the preamble of claim 1, as we explain in the
sections further below. See §§ II.C.2.a, II.D.2.a.
2. “secure control application”
Petitioner asserts the term “secure control application” recited in
claim 1 should be construed to mean “an application that manages access to
protected content.” Pet. 14–16 (citing Ex. 1002 ¶¶ 88–90). To support this
proposed construction, Petitioner states that the ’627 patent describes the
“secure control application” as “‘a first application’” that “‘act[s] as a
supervisory digital rights managements system that controls a second
application.’” Id. at 15 (quoting Ex. 1001, 2:46–49, 4:23–33); see also id. at
15–16 (citing Ex. 1001, 4:45–48, 4:49–5:1, 5:23–44, 6:25–31). Patent
Owner applies Petitioner’s proposed construction in its Response and
contends that construction of this term is not necessary to resolve the parties’
controversy. PO Resp. 24.
Based on the arguments presented by the parties, and the fact that
Patent Owner does not dispute the construction, we adopt Petitioner’s
proposed construction for “secure control application.”
3. “secure electronic container”
Petitioner argues “secure electronic container” should be construed to
mean “a security formatting of electronic information, such as an encrypted
version of the information.” Pet. 16–17 (citing Ex. 1002 ¶¶ 91–93). To
support this proposed construction, Petitioner argues that the ’627 patent
states that “‘[t]he secure electronic container can take any suitable form,’
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and provides examples of a ‘secure electronic container’ as comprising ‘a
DigiBox® or DigiFileTM container produced by InterTrust Technologies
Corporation, or might simply consist of an encrypted version of the
protected digital information.’” Id. at 17 (quoting Ex. 1001, 5:9–14); see
also id. at 16–17 (citing Ex. 1001, 2:25–27, 5:6–9, 5:14–16, 5:23–30, 10:18–
26; Ex. 1006, 7:10–11).
Although Patent Owner argues that Petitioner’s construction is
inconsistent with the construction ordered by the District Court in the Texas
Actions, Patent Owner applies Petitioner’s proposed construction in its
Response and contends that construction of this term is not necessary to
resolve the parties’ controversy. PO Resp. 12–13.
Based on the arguments presented before us, we agree that no explicit
construction of this term is necessary for our Decision.
4. “governed application”
Patent Owner proposes the term “governed application” be construed
to mean “an application that accesses content subject to certain rules or
policies, including those imposed by the security module.” PO Resp. 13.
Patent Owner argues that the ʼ627 patent describes the governed application
as one whose operation is governed by a set of rules or policies—i.e., those
imposed by a supervisory application, such as the claimed secure control
application. Id. at 13 (citing Ex. 1001, 2:37–45, 2:52–57, 4:45–58, 6:31–35,
7:58–67, 9:1–10, 11:39–45; Ex. 2024 ¶¶ 47–48).
Petitioner does not propose a construction for this term, arguing
instead that it be given its plain and ordinary meaning and that construction
of this term is unnecessary. See Pet. Reply 2. Alternatively, Petitioner
argues that the cited references teach the claim limitation even under Patent
Owner’s construction. See Pet. Reply 10, 18; Pet. 19–20, 28–29, 35–36, 44.
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We agree with Petitioner that the term “governed application” should
be given its plain and ordinary meaning. The term “governed application” is
recited in independent claim 1. Dependent claim 4 adds that the governed
application “satisfies one or more requirements.” Ex. 1001, 12:43–47.
Patent Owner argues that the governed application of claim 1 be subject to
certain rules or policies, but fails to explain how these rules and policies
differ from the “one or more requirements” of claim 4. See Liebel-
Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004) (“[T]he
presence of a dependent claim that adds a particular limitation raises a
presumption that the limitation in question is not found in the independent
claim.”).
Furthermore, Patent Owner’s proposed construction requires the
governed application to be subject to certain rules or policies imposed by the
“security module.” The term “security module” appears nowhere in the ̓ 627
patent or claims, and its inclusion in the construction of the term would
create confusion regarding whether claim 1 includes the additional limitation
of a security module separate from its other limitations. Patent Owner’s
proposed construction would, therefore, add ambiguity rather than providing
clarity to the claim beyond the plain meaning of the term itself.
5. “a request to access protected content”
Patent Owner argues the plain and ordinary meaning of “a request to
access protected content” is “an electronic communication that identifies an
item of protected content to which access is desired.” PO Resp. 16. Patent
Owner makes two points with respect to this proposed construction. First, it
argues the specification of the ̓ 627 patent makes clear that the “request”
identifies a “particular item of protected content” to be accessed. Id. at 16
(citing Ex. 1001, 5:23–32, 8:23–37, Figs. 1, 3B). Second, Patent Owner
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stresses that the “request” and the “secure electronic container” are different
terms that must have different meanings. Id. at 16–18 (citing Ex. 1001,
6:11–22, Fig. 2; Ex. 2024 ¶ 54). Specifically, Patent Owner argues the
“request to access protected content” must be a communication that is
different from merely receiving the “secure electronic container” containing
secret information. PO Resp. 17. Patent Owner cites Figures 1 and 2 of the
ʼ627 patent along with disclosures that indicate that the request to access
protected content is different than the secure electronic container. Id. at 17–
18 (citing Ex. 1001, 5:23–32, 6:11–22).
Petitioner argues that the term should be given its plain and ordinary
meaning and that Patent Owner’s “attempt to fabricate and import non-
existent limitations about the form of the request should be rejected.” Pet.
Reply 3–4. Regardless, Petitioner argues that, even under Patent Owner’s
proposed construction, Petitioner has not equated the claimed “request to
access protected content” with the claimed “secure electronic container”
because for both the obviousness ground based on Gammie and the
obviousness ground based on Shamoon, it has identified different
disclosures as teaching the two claim terms. Id. at 4–5 (citing Pet. 28, 32,
47).
For the reasons explained below, we agree with Petitioner that it has
not equated the claimed “request to access protected content” with the
claimed “secure electronic container.” Based on the arguments presented
before us, we agree that no explicit construction of this term is necessary for
our Decision.
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6. “implementing a control action preventing the secret information from
being provided to the governed application”
Patent Owner argues that “implementing a control action” should be
construed as “carrying out an active operation that governs” (PO Resp. 20),
and “preventing the secret information from being provided to the governed
application” means “stopping the secret information from being sent to the
governed application” (Id. at 22). Patent Owner argues that implementing a
control action requires an active/affirmative operation. Id. at 20. According
to Patent Owner, the specification of the ’627 patent supports a construction
requiring an active operation, describing the control action as “revoking” the
application’s access to secure information. Id. at 21 (citing Ex. 1001, 5:36–
40; Ex. 2024 ¶ 60). Similarly, Patent Owner argues the ordinary and
customary meaning of “preventing” means to “stop.” Id. at 22 (citing Ex.
2026). Patent Owner argues that “‘[s]topping’ something is an active step
that is consistent with the active step of ‘implementing’ an ‘action.’” Id.
Patent Owner argues that that preventing requires more than just simply not
providing the secret information. Id. at 23 (citing Ex. 2024 ¶ 64).
Petitioner argues that construction of this term is unnecessary because
the trial grounds “relies on teachings of software, that when executed, causes
the claimed secret information not to be provided, and thus stops it from
being sent.” Pet. Reply 6. Furthermore, Petitioner argues that the
specification of the ’627 patent supports the control action being a passive
action because it states that “[r]evocation can also be handled by using
expiring credentials and/or certificates.” Id. at 6 (quoting Ex. 1001, 11:49–
50; Ex. 1005, 294:52–295:7).
In its Sur-reply, Patent Owner argues that dependent claim 7
encompasses the embodiments where revocation of access is an active step
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but does not encompass the ̓ 627 patent’s embodiment of waiting for
credentials to expire. PO Sur-reply 5 (citing Ex. 1001, 5:36-46, 7:36-43,
11:56-61).
We agree with Petitioner. The ̓ 627 patent provides several examples
of preventing secret information from being provided to the governed
application, including “revoking application 103’s access to, or use of, the
secret information” (Ex. 1001, 5:38–39), or revoking keys (Id. at 7:36), but
makes clear that “[r]evocation can also be handled by using expiring
credentials and/or certificates” (Id. at 11:49–51). We, therefore, agree with
Petitioner that, in light of the ʼ627 patent’s disclosure, the control action of
dependent claim 7 need not be an active step. Moreover, Patent Owner does
not sufficiently explain why dependent claim 7 would encompass the
examples from the ʼ627 patent describing the revocation of secret
information but not encompass expiring credentials or certificates that are
explicitly described as one way of handling revocation.
Patent Owner cites a dictionary definition to support its argument that
“preventing” means to “stop,” but that very same dictionary also states that
“preventing” means to “keep from occurring” which we determine supports
a construction that encompasses more passive implementations such as
letting credentials expire. Ex. 2026, 1049.5
For the aforementioned reasons, we determine that “implementing a
control action preventing the secret information from being provided to the
governed application” does not require an active operation. Based on the

5 Patent Owner does not paginate Exhibit 2026. We therefore refer to page
numbers of the dictionary itself in our citations.
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arguments presented by the parties we need not further construe this term to
resolve the dispute between the parties.
C. Obviousness over Gammie
Petitioner contends claims 1 and 4–8 are obvious over Gammie.
Pet. 18–41. Below we provide a brief overview of Gammie and then
analyze Petitioner’s contentions as they relate to “the scope and content of
the prior art” and “any differences between the claimed subject matter and
the prior art.” Graham, 383 U.S. at 17–18.
1. Overview of Gammie
Gammie, titled “Independent External Security Module for a Digitally
Upgradeable Television Signal Decoder,” generally relates to the field of
scrambling and transmission systems and is directed to “an external security
module for a television signal decoder of a broadcast, satellite, or cable
television transmission system.” Ex. 1010, 1:15–19. Gammie describes a
system having a program source, an encoder, a transmission means, and a
single receiving decoder. Id. at 1:60–62. Gammie further describes a signal
scrambling process in which a key is encrypted, and each subscriber wishing
to receive the signal is provided with a decoder having an identification
number unique to the decoder. Id. at 1:65–2:1. According to Gammie, the
decoder for paying subscribers may be authorized with a key to descramble
or decrypt the scrambled or encrypted signal, and the decoder for non-
subscribers and all would-be pirates are denied that information. See, e.g.,
id. at 2:1–8.
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Figure 7 of Gammie is reproduced below.

Figure 7 of Gammie depicts an encryption system including encoder 701 for
encoding source program 702 for transmission over satellite link 705 to
decoder 706. Ex. 1010, 11:59–62. A key memory of the encoder may
contain keys of the month (“KOM”) for encrypting a “seed” used to encrypt
source program 702. Id. at 12:7–10. In particular, a KOM may be
encrypted in first key encryptor 710 with first secret serial number SSN0,
and further encrypted in second key encryptor 715 with second secret serial
number SSN1. Id. at 12:10–15. The encrypted KOM, the encryption seed,
and the scrambled or encrypted program content, may be multiplexed
together via multiplexer 732 and transmitted via satellite link 705 to decoder
706 as data packets. See, e.g., id. at 3:40–57, 8:7–14, 12:17–19, 12:33–38,
13:25–29, 13:67–14:2.
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Figures 9 and 9A of Gammie, which depict two examples of these
data packets, are reproduced below.

Figures 9 and 9A of Gammie depict authorization and control data in the
form of addressed data packet 9e (including the encrypted KOM) and system
data packet 9h (including the encryption seed). Ex. 1010, 12:37–40, 13:11–
15. More specifically, encrypted data 9d of the addressed data packet 9e
may include the encrypted KOM, along with subscriber or program related
data and checksum bits, for determining whether a particular subscriber or
decoder is authorized to receive and decrypt or view a particular program.
Id. at 12:55–63. Encrypted data 9g of the system data packet 9h may
include the encryption seed, along with program or channel related data and
checksum bits. Id. at 13:18–25.
Using demultiplexer 733 illustrated in Figure 7 above, decoder 706
may receive and demultiplex the authorization and control data (including
the addressed and system data packets) from the scrambled or encrypted
program content. See Ex. 1010, 3:37–40, 12:20–22, 14:66–67. Routing
manager 708 may then route each addressed data packet and system data
packet to its specified security module (either internal security module 719
within decoder 706 or external security module 714 mounted on decoder
706). Id. at 12:42–50, 12:66–13:10, 13:15–18, 14:16–19. The authorization
and control data received by the security module may be processed and used
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by conditional access software or program authorization software (“CA/PA
software”) within the security module to determine whether a particular
program is to be decrypted, depending upon the subscriber’s tier or pay-per-
view account. See id. at 12:59–63, 13:10–44, 14:19–24. If so authorized,
the security module may decrypt the addressed data packet to recover the
KOM, and use the decrypted KOM to decrypt the encryption seed from the
system data packet. See id. at 13:30–36, 14:9–12. The seed may then be
sent from the security module through the routing manager to a video
descrambler or audio data decryptor to descramble the program’s video or
decrypt its audio and output the descrambled or decrypted program content
to the subscriber. See id. at 2:58–62, 10:47–50, 13:36–39.
2. Analysis of Claim 1
a) Preamble [1pre]
The preamble of claim 1 recites: “A method performed by a system
comprising a processor and a non-transitory computer-readable storage
medium storing instructions that, when executed by the processor, cause the
system to perform the method, the method comprising.” Ex. 1001, 12:6–10.
Petitioner argues that, to the extent the preamble is treated as limiting,
Gammie teaches the features recited therein. Pet. 24–25 n.4 (citing Ex. 1002
¶¶ 54–60, 108–109). Petitioner relies on Figures 7 and 4 of Gammie for
showing many of the elements of the preamble so we reproduce the relevant
portions of those figures below to aid in our discussion of Petitioner’s
contentions.
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A portion of Figure 7 is reproduced above alongside Figure 4 of
Gammie. Petitioner argues the recited “system” is taught by Gammie’s
encryption system, including its decoder, depicted above as element 706 in
Figure 7. Pet. 24 (citing Ex. 1010, Fig. 7, 12:31–35, 13:40–63, 14:42–61,
15:26-42, 18:46-54). Petitioner argues the recited “processor” is taught by
Gammie’s processor 870 of the decoder, key decryptors 713 and 718, and
processor 421 depicted in Figures 8, 7, and 4, respectively, of Gammie. Id.
at 24 (citing Ex. 1010, 19:54–58, 23:3–10, 23:43–49, Figs. 4, 7, 8, 10).
Petitioner further argues that the recited “non-transitory computer-readable
storage medium” is taught by Gammie’s secure memory 707 and 720, and
program memory 422. Id. at 24–25 (citing Ex. 1010, Figs. 4, 7). Finally,
Petitioner argues that the recited “instructions” are taught by Gammie’s
disclosure of a program stored in program memory. Id. at 25 (citing
Ex. 1010, 3:40–4:12).
Patent Owner argues that the preamble of claim 1 requires a non-
transitory computer-readable storage medium storing instructions that cause
the system to perform all three method steps, including the “receiving,”
“extracting,” and “sending” steps. PO Resp. 25. Patent Owner contends,
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however, that the memory identified by Petitioner fails to address the
“receiving” and “sending” limitations of claim 1. Id. (citing Ex. 2024 ¶ 67).
For example, Patent Owner argues that Gammie’s security memory modules
707 and 720 of Figure 7 merely store the user address, credits used for pay-
per-view, the KOMs, subscriber tier information, and subscriber pay-per-
view information. Id. at 26 (citing Ex. 1010, 13:58–63, 14:9–16, 15:30–32,
16:10–13, 19:31–39, Fig. 9). Similarly, the program memory 422, according
to Patent Owner, “simply contains a decryption algorithm 434, the secret
serial number 430, and keys.” Id. at 26 (citing Ex. 1010, 5:13–33, Fig. 4;
Ex. 2024 ¶ 68). This stored data may relate to the “extracting” limitation,
according to Patent Owner, but it does not relate to the “receiving” and
“sending” limitations. Id. at 26 (citing Ex. 2024 ¶ 69).
In response, Petitioner argues that the secure memory 707 and 720 is
not limited to storing only the data that Patent Owner identifies. Pet. Reply
7. According to Petitioner, Gammie’s security modules contain CA/PA
software, which receives packets, decrypts and extracts the seeds/keys and
sends that information to decrypt a program. Id. (citing Ex. 1002 ¶¶ 108–
117, 120–121, 125). Thus, Petitioner argues, the processor and security
modules cause all three of the method steps to be executed. Id.
In its Sur-reply, Patent Owner contends that Petitioner’s reliance on
the CA/PA software is a new theory that should be ignored because it was
not presented in the Petition. PO Sur-reply 6–7. Moreover, Patent Owner
argues that the CA/PA software is not disclosed as being stored in either the
secure memory or the program memory identified by Petitioner. Id. at 6
(citing Ex. 1010, 14:19–24). Finally, Patent Owner argues that Gammie
contains no disclosure that the CA/PA software performs the recited steps of
claim 1 and instead describes the software as merely “determining whether a
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particular program is to be decrypted depending upon a subscriber’s tier,
pay-per-view account, etc.” Id. at 7–8 (quoting Ex. 1010, 14:19–24).
Based on our review of the evidence of record, we are persuaded by
Petitioner’s arguments that Gammie teaches the preamble of claim 1.
Gammie discloses a system that includes decoder 706 comprising security
modules 714 and 719, each of which include secure memory 707 and 720.
Ex. 1010, Fig. 7; Ex. 1002 ¶¶ 108–109. Gammie describes the conditional
access software or program authorization software as being “contained
within the security module[s].” Id. at 14:19–24. Thus, the record shows
Gammie’s security modules have non-transitory computer-readable storage
medium (the secure memory) that stores the CA/PA software which
Petitioner alleges performs all three steps of the claim.6 Moreover, Dr.
Madisetti provides credible testimony that Gammie’s security modules
include a secure microprocessor with memory 421, and that a POSITA
would have understood that such a processor and memory would store
instructions that execute the method of claim 1. Ex. 1002 ¶ 109.
We do not agree with Patent Owner’s argument that Petitioner’s
reliance on the CA/PA software is a new theory not discussed in the Petition.
Initially, we note that Petitioner explicitly relies on such software for each of
the three major steps recited in claim 1 in its Petition. See Pet. 25, 31, 34.
Furthermore, Petitioner identified the “program stored in program memory”
of the security module in its Petition as the recited “instructions” of claim 1
(Pet. 25), which when combined with Gammie’s disclosure that the
“conditional access software or program authorization software [is]

6 For the reasons stated below, we agree with Petitioner that the CA/PA
software performs the “receiving,” “extracting,” and “sending” steps.
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contained within the security module” (Ex. 1010, 14:19–24) provides
evidence that reliance on the CA/PA software is not a new theory.
As we explained above, a POSITA would have understood that secure
memory 707 and 720 of Gammie’s security modules would store not just the
data cited by Patent Owner (e.g. user address, credits used for pay-per-view,
the KOMs, subscriber tier information, subscriber pay-per-view information,
and decryption algorithms), but also the CA/PA software and that, based on
Petitioner’s allegations, this software was cited as performing the
“receiving” step and the “sending” step, along with the “extracting step” of
claim 1. Thus, we disagree with Patent Owner that the secure memory of
the security modules is limited to only storing information related to the
“extracting” step rather than also storing instructions related to the
“receiving” and “sending” steps.
Finally, we disagree with Patent Owner that Gammie’s CA/PA
software does not perform the steps of the claim. We explain our reasoning
further below in our analysis of the subsequent limitations of claim 1.
b) Limitation 1a
Limitation 1a recites “receiving, by a secure control application
executing on the system in a protected processing environment, a request to
access protected content by a governed application executing on the system
in a processing environment separate from the protected processing
environment.” Ex. 1001, 12:11–16.
Petitioner contends that the receipt of “authorization and control data”
by the CA/PA software on Gammie’s security modules 714/719 or security
elements 814/819 (collectively “security modules”) teaches the “receiving”
step of claim element 1a. Pet. 25. In particular, Petitioner asserts that
Gammie’s CA/PA software contained within the security modules is a
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“security control application” (see, e.g., Id. at 25 (citing Ex. 1002 ¶ 111), 27
(citing Ex. 1010, code (57), 9:37–41, 9:59–10:4, 14:4–6, 14:16–24; Ex. 1002
¶ 113)) and that the application running on Gammie’s “program
descrambler/routing manager 708” is a “governed application” that accesses
protected content (Id. at 29 (citing Ex. 1010 14:20–24; Ex. 1002 ¶ 113)).
Petitioner further contends the security modules constitute a “protected
processing environment.” Id. at 26 (citing Ex. 1010, 4:66–5:12, 14:16–24;
Ex. 1002 ¶¶ 111–112).
Petitioner asserts the communication of the “authorization and control
data” to the software within the security module constitutes a “request to
access the protected content” because the purpose of the communication is
to provoke a response in the form decryption information needed to access
program content. Pet. 28–29 (citing Ex. 1010, 12:55–63, 12:38–40, 12:46–
55, 14:2–6, 14:16–19, 15:15–26; Ex. 1002 ¶¶ 114–115). Petitioner further
contends that, although not explicitly described as a request, a POSITA
would have understood Gammie as teaching a “request to access protected
content” because the software on the Gammie’s security modules
“conditionally releases decryption information to the descrambler/decryptor
only in response to a particular communication thereto.” Id. at 28 (citing Ex.
1010, 12:50–66, 13:11–29, 14:19–24; Ex. 1002 ¶¶ 116–117).
Petitioner further argues the governed application (i.e., program
descrambler/routing manager 708) executes in a processing environment
separate from the protected processing environment of the security modules.
Pet. 30–31. Petitioner contends that the program descrambler/routing
manager 708 executes in the display and communications processor
(“DCP”) 870. Id. According to Petitioner, the DCP is an environment that
is separate from the security modules. As support, Petitioner cites to Figure
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8 of Gammie showing the DCP as separate from the security modules and
to disclosures indicating that the security modules are secure and, therefore,
constructed so that they cannot be read, executed or modified from outside
the security module. Id. at 30 (citing Ex. 1010, 5:1–54, 14:30–41, 14:62–
15:7, 15:32–38, 23:26–30, 23:67–24:8, Fig. 8; Ex. 1002 ¶¶ 118–119).
Patent Owner disputes Petitioner’s allegations regarding limitation 1a
for two reasons: 1) Patent Owner argues that Gammie’s authentication and
control data is not a request to access protected content (PO Resp. 27–32)
and 2) Patent Owner argues Gammie does not disclose a “governed
application” (PO Resp. 32–34). Before we analyze each of these arguments,
we first note that we are persuaded by Petitioner’s arguments regarding the
undisputed aspects of limitation 1a. For example, we agree that Gammie’s
security modules execute in a protected processing environment separate
from the remaining components of the decoder, including the
descrambler/routing manager that Petitioner relies upon to teach the
governed application. Figure 8 of Gammie depicts the DCP and the security
modules as separate. Furthermore, Gammie explains that “[t]here is no
mechanism for reading or modifying the contents of program memory 422
[of the security modules] via the data inputs” (Ex. 1010, 5:10–12), which
supports Petitioner’s argument that the security modules cannot be read,
executed or modified from outside and, therefore, are protected and separate
from other processing environments, including the DCP. Finally, Dr.
Madisetti provides credible testimony that, based on the aforementioned
disclosures, the security modules execute in a protected processing
environment separate from the processing environment of the DCP.
Ex. 1002 ¶ 119.
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We now turn to Patent Owner’s two arguments, which we analyze
separately below.
(1) Request to access protected content
Patent Owner asserts that Gammie’s “authorization and control data is
contained in ‘addressed data packets 9e’ and ‘system data packets 9h.’” PO
Resp. 28 (citing Ex. 1010, 12:35–38, 14:68–15:3, Figs. 9, 9A). Neither of
these two types of packets, according to Patent Owner, teach the claimed
“request to access protected content.” Id. at 28–31.
Addressed data packets are not a request for anything, contends Patent
Owner. PO Resp. 29. Instead, Patent argues that they merely supply the
decoder with subscriber authorization data (e.g. KOM and subscriber tier
information) defining the level of access available to the subscriber, rather
than request to access any content. Id. (citing Ex. 2024 ¶¶ 75–76).
Additionally, Patent Owner argues, the addressed data packets are not
“content-specific” in that they do not identify any particular program for
which access is desired. Id. at 29–30 (citing Ex. 1010, 12:55–59, 13:11–29).
For both of these aforementioned reasons, Patent Owner argues that
addressed data packets are not a request to access protected content.
Patent Owner acknowledges, however, that unlike addressed data
packets, system data packets are content-specific. Pet. 28 (acknowledging
that system data packets include a seed to decrypt a program, pay-per-view
cost information, and other information that is program specific). Still,
Patent Owner takes issue with the Petition’s reliance on system data packets
arguing that Petitioner has mapped the system data packets to both the
claimed “secure electronic container” and the claimed “request to access
protected content.” PO Resp. 30–31 (citing Pet. 28; Ex. 1002 ¶¶ 113–117).
This “dual mapping of Gammie’s system data packets 9h as both the
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‘request’ and ‘secure electronic container’ is improper” according to Patent
Owner. Id. at 31.
In reply, Petitioner emphasizes that the Petition identified receiving
the authorization and control data as a whole, including both the addressed
data packets and the system data packets together, as teaching the receiving
a request limitation, not receiving each of those types of packets separately.
Pet. Reply 8 (citing Pet. 28). Petitioner contends that the address data
packets do, in fact, include program specific information in the form of
program tier information. Id. (citing Ex. 1010, 12:55–63; Fig. 9).
Regardless of whether addressed data packets contain content specific
information, Petitioner contends that Patent Owner has acknowledged that
system data packets do. Pet. Reply 9. As to the system data packets,
Petitioner argues that it has not mapped them both to the “request” and the
“secure electronic container.” Petitioner emphasizes that the “request” was
identified as the communication of authorization and control data in the
Petition, whereas the “secure electronic container” was identified to be the
encrypted seed or key that is contained in the system data packets. Id. at 4
(citing Pet. 28, 32).
In the Sur-reply, Patent Owner argues that addressed data packets and
system data packets are two disparate types of data and that Petitioner has
failed to account for their distinction in arguing that they together constitute
a request to access protected content. PO Sur-reply 9. Additionally, Patent
Owner disagrees that program tier information in the addressed data packets
is content-specific information, arguing that program tier information simply
defines the subscriber’s authorized program tier. Id. at 10 (citing 12:55-63,
14:19-24).
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Based on the evidence of record, we are persuaded that Gammie
teaches the claimed “request to access protected content” for the reasons
given by Petitioner, outlined above. We credit Dr. Madisetti’s testimony
that the authorization and control data is provided from the program
descrambler/routing manager to the conditional access software or program
authorization software in the security modules in order to receive the access
seed and/or key necessary to decrypt a particular program or content if the
decoder is authorized to do so. Ex. 1002 ¶ 114. Dr. Madisetti provides
credible testimony that a POSITA would have understood the
communication of the authorization and control data as a request to access
protected content because that communication causes Gammie’s secure
control application to respond with information necessary to access the
protected content. Id. ¶ 116. Thus, we agree with Petitioner that Gammie’s
communication of the authorized and control data to the software within the
security module constitutes a “request to access the protected content”
because the purpose of the communication is to provoke a response in the
form decryption information needed to access program content.
Because Patent Owner has acknowledged that system data packets
include content-specific information, we need not address Patent Owner’s
argument that the addressed data packets are not content-specific. PO Resp.
28 (citing Ex. 1010, 13:11–29, Fig. 9a). Instead we address Patent Owner’s
argument that Petitioner has erred in mapping the system data packets to
both the claimed “request” and to the claimed “secure electronic container.”
Here, we agree with Petitioner that the Petition specifically identified the
communication of the authorization and control data (which includes the
system data packets) as the request rather than the data itself. Pet. 28 (“The
communication of authorization and control data to the conditional access
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software or program authorization software . . . is a ‘request to access
protected content’ because the purpose of the communication is to provoke a
response in the form decryption information needed to access program
content.”). We, therefore, do not agree that Petitioner has mapped the
system data packets to both the recited “request” and the recited “secure
electronic container.”
Patent Owner argues that the addressed data packets and system data
packets are disparate types of information that should not be lumped
together as the claimed request to access protected content. PO Sur-reply 9.
But Petitioner identifies both of these types of packets together because
Gammie itself associates these two types of packets with each other,
referring to them collectively as “authorization and control data.” Ex. 1010,
12:35–38. To the extent Patent Owner raises this issue in support of Patent
Owner’s larger point that Petitioner has erred by mapping the system data
packets to both the recited “request” and the recited “secure electronic
container” as indicated above, we disagree that Petitioner has mapped the
system data packet to both limitations of the claim.
(2) Governed application
Patent Owner contends that under either its proposed construction or
under the plain meaning of the term, the claimed “governed application”
refers to an application that accesses content subject to certain rules or
policies, but that the program descrambler/routing manager, identified by
Petitioner as the “governed application,” does not access content subject to
any rules or policies. PO Resp. at 33 (citing Ex. 1010, 13:36–39, 15:32–42,
17:7–11). According to Patent Owner, any rules or policies associated
therewith that are cited by Petitioner apply to the subscriber not the
descrambler. Id. at 33–34. For example, according to Patent Owner,
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Gammie’s “user tier information” applies to the subscriber but not the
descrambler. Id. at 34 (citing Ex. 1010, 12:55–59, 14:19–24; Ex. 2024
¶ 85).
Petitioner argues that Gammie teaches a governed application under
Patent Owner’s proposed construction or under the plain meaning of the
term. Pet. Reply 10. Petitioner argues Gammie’s decoder is subject to rules
because it must be authorized by the security module before the seed is
released in order to access the protected content. Id. (citing Ex. 1010, 2:1–3,
12:55–63, 14:19–24; Pet. 19–20, 28–29, 35–36). According to Petitioner,
examples of the rules and requirements include program and service tiers,
and pay-per-view event authorization. Id. (citing Ex. 1010, 14:19–24,
17:11–16). Petitioner argues that the plain meaning of “governed
application” does not require the rules to be specific to the
descrambler/decryptor, and regardless, Gammie teaches a governed
application even under Patent Owner’s proposed construction because it
discloses that “the decoder may be individually authorized” and that the
authorization is based on “decoder specific data.” Id. at 11 (citing Ex. 1010,
2:1–3, 12:55–63). Finally, Petitioner argues that the rules that apply to the
subscriber or decoder, also apply to the internal descrambler/decryptor. Id.
(citing Ex. 1010, 12:55–63, 13:30–39).
Based on the evidence of record, we are persuaded that Gammie
teaches the claimed “governed application” according to its plain meaning
and even under Patent Owner’s narrower proposed construction. Gammie
teaches that authorization and control data includes “user tier information,
pay-per-view information, other subscriber specific or decoder specific
data.” Ex. 1010, 12:55–59. Using this data, Gammie “determines whether a
particular subscriber or decoder is authorized to receive and decrypt a
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particular program or view pay-per-view programs.” Id. at 12:60–63. Note
that Gammie explicitly discusses “decoder specific data” and determining
whether a particular “decoder is authorized to receive and decrypt a
particular program” not just the subscriber. Id. This makes sense. After all,
it is the decoder not the subscriber that accesses and decrypts the program.
Thus, the authorization data that provides the rules that govern which
subscribers are allowed to access data must also apply to the decoder itself in
order for those rules to be enforced. Put another way, there is no evidence in
the record that the subscriber is allowed to access content, but the
subscriber’s decoder is not allowed to access content, or that the subscriber
is not allowed to access content, but the subscriber’s decoder is allowed to
access content. There is evidence in the record, on the other hand, as
evidenced by Gammie’s disclosures above, that the rules that apply to the
subscriber also apply to the decoder and its internal descrambler/decryptor.
Pet. Reply 10–11 (citing Ex. 1010, 12:55–63, 14:19–24, 17:11–16).
c) Limitation 1b
Limitation 1b recites “extracting, by the secure control application,
secret information from a secure electronic container, the secret information
being configured to be used, at least in part, to decrypt the protected content,
wherein extracting the secret information comprises decrypting at least a
portion of the secure electronic container to generate unencrypted secret
information.” Ex. 1001, 12:17–24.
Petitioner argues that Gammie’s secure control application (e.g.
CA/PA software) contained in the security module performs the step of
extracting secret information from the secure electronic container by
decrypting the seed or key number from the encrypted version of the seed in
the system data packets. Pet. 31–32 (citing Ex. 1010, 11:59–12:15, 13:30–
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39, 23:67–24:8). Petitioner contends that the system data packet is a secure
electronic container because it is encrypted and includes the encrypted seed.
Pet. 32 (citing Ex. 1010, 7:38–42, 8:15–39, 11:59–12:15; Ex. 1002 ¶¶ 120–
121).
Petitioner further contends that the secret information (e.g. the seed or
key number) is used to decrypt the protected content (the program). Pet. 33
(citing Ex. 1010, 13:30–39, 11:59–12:15). Petitioner relies on Gammie’s
disclosure that a program is encrypted with a seed and that the decoder uses
the seed (the “secret information”) to decrypt the program content. Pet. 33
(citing Ex. 1010, 11:59–12:15; 13:30–39; 15:27–50, 23:67–24:8; Ex. 1002
¶¶ 61–63, 122).
Finally, Petitioner argues that Gammie’s security modules decrypt the
secure electronic container (decrypt the encrypted seed using the key of the
month) to generate the unencrypted secret information (e.g. unencrypted
seed). Pet. 33–34 (citing Ex. 1010, 13:30–39, 23:67–24:8; Ex. 1002 ¶¶ 123–
124).
Patent Owner does not separately dispute Petitioner’s allegations
regarding this limitation. Based on the evidence of record, we are persuaded
by Petitioner’s arguments which we determine are supported by the cited
evidence outlined above.
d) Limitation [1c]
Limitation 1c recites “sending, by the secure control application, the
unencrypted secret information from the protected processing environment
to the governed application executing in the processing environment
separate from the protected processing environment.” Ex. 1001 12:24–28.
Petitioner contends that Gammie’s secure control application (CA/PA
software) sends the unencrypted secret information (the unencrypted seed)
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from the protected processing environment (security modules
714/719/814/819) to the governed application (decoder’s program
descrambler) executing in the processing environment separate from the
protected processing environment (the display and communications
processor (DCP) which is separate from the security modules). Pet. 35
(citing Ex. 1010, 13:36–39, 15:30–42; Ex. 1002 ¶ 125).
Patent Owner does not separately dispute Petitioner’s contentions
regarding this limitation. We are persuaded by Petitioner’s arguments which
we determine are supported by the cited evidence. For example, Gammie
discloses that “the seed is sent from the security module though routing
manager to video descrambler 873 or audio data decryptor so as to decrypt a
program video or audio.” Ex. 1010, 13:36–69. This disclosure supports
Petitioner’s argument that the unencrypted secret information (the seed) is
sent to the governed application (the descrambler). We also agree with
Petitioner that the security modules and the DCP are separate processing
environments as explained in our analysis of limitation 1a above.
e) Conclusion
For the aforementioned reasons we are persuaded that Gammie
teaches all the limitations of independent claim 1.
3. Claims 4–6
Claim 4 depends from claim 1 and further recites “prior to sending the
secret information to the governed application, determining, by the secure
control application, that the governed application satisfies one or more
requirements.” Ex. 1001, 12:44–47. Petitioner argues the CA/PA software
conditionally releases the secret information (e.g., seed) if a decoder is
authorized to receive and decrypt it based on one or more requirements.
Pet. 36 (citing Ex. 1010, 12:55–63, 14:19-24, 17:11-16). According to
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Petitioner, these requirements include authorization data such as program
and service tiers, and pay-per-view event authorization, of a subscriber’s
individual decoder. Id.
Claim 5 depends from claim 4 and further recites that “the one more
requirements comprise at least one security requirement.” Petitioner
contends that each decoder is assigned a unique user address and
corresponding secret serial number (SSN). Pet. 37 (citing Ex. 1010, 3:24-
26, 9:59–10:1, 14:4–6); Ex. 1002 ¶¶ 128–130). According to Petitioner, the
security modules must also contain the same decoder’s SSN to decrypt the
key present in the data packets. Id. Thus, Petitioner argues that the SSN of
the security module must match with the SSN of its mating decoder in order
for the security module to decrypt the protected content. Id. Petitioner
further argues that, if a matching SSN is not found, the security module is
considered to be unauthorized and the decryption of the key and seed would
fail and protected content would not be accessed. Petitioner argues that the
requirement of the decoder and security modules having matching SSNs is a
“security requirement” as recited in claim 5. Pet. 37.
Claim 6 depends from claim 4 and further recites “the one or more
requirements comprise at least one requirement for processing the protected
content.” Petitioner argues that the authorization data, such as the program
service tiers and pay-per-view event authorization, cited for claim 4, teach
the one or more requirements for processing the protected content recited in
claim 6 because those requirements are checked to “conditionally release
seeds to decrypt specific programs.” Pet. 38 (citing Ex. 1010, 17:11–16,
19:19–24; Ex. 1002 ¶ 131).
We are persuaded by Petitioner’s arguments which we determine are
supported by the cited evidence. We agree that authorization data such as
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program and service tiers, and pay-per-view event authorization are
requirements that must be satisfied in order for the CA/PA software to
release the seed to the decoder so that it can descramble the program.
Ex. 1010, 12:55–63, 14:19-24, 17:11-16. We determine, therefore, Gammie
teaches the limitations of claims 4 and 6. We also agree with Petitioner that
Gammie checks to see if the external security module is properly paired up
with a decoder by checking that the SSNs match each other so that an
unauthorized security module is not used to improperly access content.
Thus, the requirement of having matching SSNs is a security requirement, as
recited in claim 5. Id. at 3:24–26, 9:59–10:1, 14:4–6; Ex. 1002 ¶¶ 128–130.
Patent Owner raises many of the same arguments here as it did for
claim 1, arguing that “Gammie does not disclose a ‘governed application,’ at
all” and that Gammie determines “that the subscriber is authorized to view
the program” not the decoder or descrambler. PO Resp. 35 (citing Ex. 1010,
12:55–59, 14:19–24, Fig. 9; Ex. 2024 ¶ 87). We do not agree with Patent
Owner’s arguments for the same reasons stated above in our claim 1 analysis
of whether Gammie teaches the recited “governed application.”
Additionally, with respect to claim 5, Patent Owner argues that the
subscriber’s program tier or the subscriber’s credits does not teach a security
based requirement, which Patent Owner argues is a requirement that the
decoder be functioning as intended or that it has not been tampered with.
PO Resp. 35–36 (citing Ex. 1001, 5:50–61, 5:1–5, 6:40–51; Ex. 1005, 6024–
28, 65:8–9, 67:21–26, 176:6–16; Ex. 2024 ¶ 88). We do not agree with
Patent Owner’s argument. Petitioner cited to the requirement that the
security module’s SSN match the decoder’s SSN in order for the security
module to successfully decrypt the program. Pet. 37. Gammie discloses that
this requirement “discourages copying the replaceable external security
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module, as each replaceable security module will only work with its mating
decoder.” Ex. 1010, 9:66–10:1. Thus, we agree with Petitioner that the
requirement that the SSN for the external security module match the SSN of
the decoder is a security based requirement because it discourages copying
of the external module. Patent Owner’s arguments directed at the
subscriber’s program tier or credits do not address Petitioner’s reliance on
matching SSNs.
4. Claim 7
Claim 7 depends from claim 4 and further recites:
determining, by the secure control application, that the
governed application no longer satisfies the one or more
requirements; and
implementing a control action preventing the secret
information from being provided to the governed application in
response to a subsequent access request.
Ex. 1001, 12:54–59.
Petitioner argues that Gammie teaches a secure control application
(CA/PA software) determining that the governed application no longer
satisfies the one or more requirements of claim 4. Pet. 39. According to
Petitioner, it does so, for example, by determining whether there has been a
change in programming tier, or by determining if there are insufficient
credits to watch a requested program. Id. at 39–40 (citing Ex. 1010, 4:2–7,
12:59-63, 14:19–24, 19:26–39; Ex. 1011, 4:33–37, 16:12–14; Ex. 1002
¶¶ 73–76, 132–133). As support for its contentions, Petitioner relies on
Block,7 incorporated by reference in Gammie, which discloses preventing a
subscriber from viewing programs if the cost of the program is greater than

7 Block et al., U.S. Patent No. 4,484,217, Nov. 20, 1984 (Ex. 1011,
“Block”).
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the existing credit balance of the subscriber. Id. at 40 (citing Ex. 1011,
4:33–37, 16:12–14). Petitioner argues that Gammie teaches implementing a
control action preventing the secret information from being provided to the
governed application in response to a subsequent access request. Id. at 40.
For example, Petitioner argues that, if sufficient authorization requirements
are not met, the secure control application does not send the seed to the
descrambler for viewing the program. Id. at 39–40 (citing Ex. 1002 ¶¶ 73–
76, 132–133).
Patent Owner makes several arguments disputing Petitioner’s
allegations regarding claim 7. Patent Owner argues that the Petition fails to
identify what in Gammie maps to the claimed “subsequent access request.”
PO Resp. 37–39. Patent Owner argues that the inherent ambiguities created
by Petitioner’s identification of Gammie’s control and authorization data,
consisting of addressed data packets and system data packets, as the
“request” in claim 1, are exacerbated with respect to claim 7, because it
becomes harder to ascertain how the addressed data packets or system data
packets of the subsequent request of claim 7 relate in time to those of the
first request of claim 1. Id. at 38–39.
Patent Owner also argues that Petitioner fails to explain several
aspects of its contentions, including explaining why disclosures from
different embodiments of Gammie would be combined (PO Resp. 39–40),
how the decoder makes the decisions to deauthorize the decoder (PO Resp.
40), and how passages from Block relate to Gammie’s teaching of decoder
deletion of SSN from the encoder side SSN database (PO Resp. 41).
Patent Owner further argues the credit based payment scheme for pay-
per-view programmed described in Gammie fails to teach the temporal
relationship between the initial “request” from claim 1, and the “subsequent
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access request” of claim 7, and fails to teach the prior satisfaction of one or
more requirements of claim 4 and no longer satisfying those requirements as
required by claim 7. PO Resp. 42. For example, Patent Owner argues that
Gammie does not disclose a scenario where sufficient credits exist to watch
a pay-per-view event and allowing viewing of the event, but then
determining that the subscriber can no longer cover the cost of that pay-per-
view event and preventing the seed from being provided to the descrambler
in response to a subsequent access request. Id. at 43.
Patent Owner argues the limitation “implementing a control action
preventing the secret information from being provided to the governed
application” requires an active operation that stops the secret information
from being provided to the governed application, and cannot be satisfied by
“not providing the secret information to the governed application.” PO
Resp. 43–44 (Ex. 2024 ¶ 100).
Patent Owner argues that changes to the subscriber’s programming
tier do not satisfy the limitations of claim 7. This is because, according to
Patent Owner, changing a subscriber’s programming tier is a new
requirement. PO Resp. 45. Thus, according to Patent Owner, determining
that a subscriber is not authorized to view a program because the
subscriber’s programming tier no longer allows the subscriber to view the
program, is a determination that the governed application does not satisfy a
new requirement, rather than no longer satisfying the one or more
requirements of claim 4. Id. Similarly, Patent Owner argues that such a
determination would not be in response to a “subsequent access request”
because there was no preceding request in connection with the newly
changed programming tier. Id. at 46.
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Patent Owner argues that Petitioner’s reliance on Block is erroneous
because the portions of Block cited in the Petition were not properly
incorporated by reference by Gammie. PO Resp. 47–49. In particular,
Patent Owner argues that Petitioner relies upon narrow aspects of Block,
whereas Gammie’s incorporation by reference of Block supports only an
incorporation of the high level discussion of pay-per-view programming in
Block. Id. at 47–48 (citing Ex. 1011, 16:12–14; Ex. 2024 ¶¶ 105–106).
Furthermore, Patent Owner argues Petitioner fails to show that a
POSITA would have been motivated to modify Gammie with Block. PO
Resp. 49–50.
Finally, Patent Owner argues Block’s disclosure that preventing a
subscriber from viewing a program (because they have insufficient funds)
does not teach preventing secret information from being provided to the
governed application. PO Resp. 50–51 (citing Ex. 1011, 4:33–37, 16:12–14;
Ex. 2024 ¶¶ 109–110).
Based on a review of the cited evidence, we are persuaded by
Petitioner’s arguments that Gammie teaches the limitations of claim 7.
Gammie provides several examples of requirements, include programming
and service tiers, and pay-per-view event authorization, that must be met in
order for a subscriber’s decoder to descramble a program. Petitioner
identified some of these requirements in its allegations for claim 4. Pet. 36
(citing Ex. 1010, 12:55–63, 14:19–24, 17:11–16). Petitioner relies on these
same requirements here in claim 7, arguing that Gammie’s secure control
application checks to see if there has been a change in the subscriber’s
programming tier or if sufficient credits exist to watch a pay-per-view
program (tracking credits by subtracting the appropriate number of credits
from the subscriber’s remaining credits). Pet. 39–40 (citing Ex. 1010, 4:2–7,
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12:59-63, 14:19–24, 19:26–39; Ex. 1011, 4:33–37, 16:12–14; Ex. 1002
¶¶ 73–76, 132–133). Dr. Madisetti provides credible testimony supporting
Petitioner’s allegations, testifying that a POSITA would have understood
that Gammie would confirm whether enough credits exist or that the
subscriber’s decoder continues to meet the programming tier requirements in
order to authorize and continue authorizing descrambling a particular
program. Ex. 1002 ¶ 133. If the requirements are not met, Dr. Madisetti
testifies that it would have been obvious to cease decrypting the seed or
transmitting the decrypted seed. Id. We agree with Petitioner that these
disclosures and Dr. Madisetti’s supporting testimony show that, when a
decoder no longer satisfies the requirements of claim 4 (i.e. no longer has the
required programming tier, or no longer has enough credits), the seed would
no longer be sent to the governed application in response to a subsequent
request and the desired program would not be able to be descrambled.
We first address Patent Owner’s argument that the programming tier
and pay-per-view credit requirements do not meet, what Patent Owner
characterizes as the “temporal relationship” (PO Resp. 42) between claims 1,
4 and 7. As we explained above, Patent Owner argues that, when a
subscriber’s programming tier is changed, for example by lowering the
subscriber’s tier, this results in a new programming tier requirement, rather
than referring back to the “one or more requirements” that Petitioner
identified in claim 4. PO Resp. 45. We disagree. Patent Owner takes too
narrow a view of the “requirements” of claim 4 and the subsequent recitation
of the “requirements” in claim 7. The requirement Petitioner identified for
claim 4 was the requirement that a subscriber’s programming tier match the
tier of the program being requested. Pet. 36 (arguing that “‘tier information,
pay-per-view information,’ and other ‘decoder specific data,’ is a
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requirement that must be satisfied.”) This is the same requirement cited for
claim 7. When a subscriber’s programming tier is lowered but a program
with a higher tier is requested, the programming tier of the subscriber does
not match the tier of the program and the seed is not released to the
descrambler. The request for a program after the subscriber’s programming
tier is changed is a subsequent request as compared to a request for a
program before the change in programming tiers.
Similarly we disagree that Petitioner’s reliance of tracking pay-per-
view credits fails to satisfy the “subsequent access request” limitation of
claim 7. Again Patent Owner takes too narrow a view, arguing that the
subsequent request needs to be for the same pay-per-view event as the initial
request. Instead, we agree with Petitioner that a requirement that the
subscriber have sufficient credits to view a pay-per-view event satisfies both
the “requirements” limitations of claim 4 and claim 7. We also agree with
Petitioner that the “subsequent access request” is a request that is subsequent
in time as compared to the “request” of claim 1. Petitioner relies on this
interpretation consistently for claims 1, 4 and 7. Pet. 36, 39–40 (citing Ex.
1010, 12:55–63, 14:19–24, 17:11–16, 4:2–7, 12:59-63, 14:19–24, 19:26–39;
Ex. 1011, 4:33–37, 16:12–14; Ex. 1002 ¶¶ 73–76, 132–133). Nothing in
claim 7 requires that “subsequent access request” be for the same pay-per-
view event as that requested for claim 1. Thus, we agree with Petitioner that
a later request for a pay-per-view event which the subscriber no longer has
enough credits to view, satisfies the “subsequent access request” limitation
of claim 7.
Next we address Patent Owner’s argument that “implementing a
control action” requires an active operation rather than merely not providing
secret information to the governed application. PO Resp. 44. As we
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explained above, we disagree with Petitioner’s construction that
implementing a control action requires an active operation. Under a proper
construction, implementing a control action encompasses a decision made
by Gammie’s secure control application to not send the seed to the
descrambler for viewing a requested program, as Petitioner alleges. See Pet.
39–40 (citing Ex. 1002 ¶¶ 73–76, 132–133).
We next address Patent Owner’s arguments regarding Block,
including Patent Owner’s argument that relied upon passages of Block were
not properly incorporated by reference. PO Resp. 47–49. Whether material
is incorporated by reference into a host document is a question of law.
Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1283 (Fed.
Cir. 2000). The standard is whether a skilled artisan would have understood
the host document to describe the material to be incorporated with sufficient
particularity. Harari v. Lee, 656 F.3d 1331, 1334 (Fed. Cir. 2011). To
incorporate matter by reference, a document must contain language “clearly
identifying the subject matter which is incorporated and where it is to be
found”;  a “mere reference to another application, or patent, or publication is
not an incorporation of anything therein․” In re De Seversky, 474 F.2d 671,
674 (CCPA 1973). Put differently, “the host document must identify with
detailed particularity what specific material it incorporates and clearly
indicate where that material is found in the various documents.” Adv.
Display Sys., 212 F.3d at 1282.
Reproduced below is the relevant portion of Gammie including its
reference to Block. Gammie states:
Impulse pay-per-view (IPPV) programming is defined
here as any programming where the subscriber has a pre-
authorized number of “credits” saved in his individual decoder.
If a subscriber wishes to view a particular program, the
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subscriber merely actuates the decoder, the appropriate number
of credits are subtracted from the subscriber’s remaining credits,
and the subscriber is immediately able to view the program. Pay
television systems are disclosed, for example, in U.S. Pat. No.
4,484,217, issued Nov. 20, 1989 and 4,163,254 issued Jul. 31,
1979 to Block, incorporated herein by reference.
Ex. 1010, 19:19–30 (emphasis added). The U.S. Court of Appeals for the
Federal Circuit has previously held that language nearly identical to that
used in Gammie (“incorporated herein by reference”) can be sufficient to
indicate to a POSITA that the referenced material is fully incorporated in the
host document. Harari, 656 F.3d at 1335–36. Gammie introduces Block in
the context of a discussion regarding preventing impulse pay-per-view
programming and in keeping track of the amount of credits a subscriber has
when requesting to view a particular program. The passages that Petitioner
relies upon from Block discuss exactly that same subject matter. For
example, Block states that “[t]he system operator may limit the potential for
non-payment by preventing the subscriber from viewing any impulse
purchase programs if the cost of the program is greater than the existing
credit balance.” Ex. 1011, 4:33–37; see also id. at 16:12–16 (“If, however,
the credit is less than the accumulated cost, the decode control 98 is disabled
or otherwise inhibited and a display of this condition is effected, for
example, by energizing an indicator on the display or ‘flashing’ the payment
due indicator.”). A POSITA would have understood from Gammie’s
discussion of impulse pay-per-view programming purchases and pay-per-
view credits and the subsequent language indicating that the relied upon
“pay television systems are disclosed” in Block, that, at the very least,
discussions of impulse pay-per-view programming, credit balances, and
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preventing viewing of programs when there are insufficient funds would
have been incorporated by reference.
Patent Owner further argues that a POSITA would not have been
motivated to combine Gammie with Block. PO Resp. 49–51. Specifically,
Patent Owner argues that Petitioner relies on two passages from Block
related to equipment that is unique to Block and that Gammie’s system lacks
features described in Block. Id. at 49 (citing Ex. 1011, 11:48–59, 13:62–65,
16:1–16). Patent Owner argues that Petitioner does not explain why a
POSITA would have been motivated to modify Gammie with Block’s
features such as the decoder control circuit mentioned in one of the relied
upon passages of Block. Id. at 49–50 (citing Pet. 39–40). We disagree with
Patent Owner. As Petitioner explains in its Reply, Petitioner is not relying
on Block’s device or decoder, only its teaching of preventing access based
on insufficient credits. Pet. Reply 16 (citing Pet. 39–40). As we explained
above, a POSITA would have understood that Gammie incorporates the
teachings from Block related to pay-per-view programming and tracking the
subscriber’s credits given the context of Gammie’s statement incorporating
Block by reference. Thus, the motivation to combine Gammie with the cited
passages of Block comes directly from Gammie itself. Ex. 1010, 19:26–30.
We also disagree with Patent Owner’s argument that the inherent
ambiguities in identifying authorization and control data as the claimed
“request” also lead to exacerbated ambiguities in claim 7 which requires a
“subsequent access request.” As we explained in our analysis of claim 1, we
find no ambiguities in Petitioner’s contentions regarding what it identifies as
the claimed “request to access protected content” of claim 1 and what it
identifies as the recited “subsequent access request” of claim 7. Petitioner
identifies the communication of the authentication and control data as the
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request of claim 1. Pet. 28. Petitioner also refers to the communication of
authorization and control data as the subsequent access request in its
contentions for claim 7. Id. at 39–40 (“preventing decryption of keys and/or
seeds present in the authorization and control data for subsequent access
request to all or certain programming”). To the extent Patent Owner is
arguing that there are ambiguities because the subsequent access request of
claim 7 needs to request the same program as the request of claim 1, we
disagree for the reasons explained above.
Finally, we disagree with Patent Owner’s argument that Petitioner has
improperly combined Gammie’s Figure 2 embodiment with the embodiment
that includes the CA/PA software and security modules. It is clear from
Gammie’s disclosure that the later embodiments are building upon the prior
art embodiments of Figure 2. For example, Gammie describes the
embodiment of Figure 5, which does include the relied upon security
module, as building upon the Figure 2 embodiment, including the secret
serial number database. Ex. 1010, 6:3–33 (“As in FIG 2, . . . [t]he key is
encrypted in key encryptor 510 using a secret serial number (SSN) from
secret serial number database 511 which contains a list of secret serial
numbers.”). We determine a POSITA would have understood that the
feature of deauthorizing a decoder in the next key cycle by deleting the SSN
from the database would be included in the later embodiments that include
the security modules.
5. Claim 8
Claim 8 depends from claim 1 and further recites “wherein the secret
information comprises one or more access keys.” Ex. 1001, 12:60–61.
Petitioner identifies Gammie’s seed or key number as the claimed “secret
information” and argues that a POSITA would have understood that the seed
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or key number is an access key because it is used to access scrambled
content. Pet. 41 (citing Ex. 1010, 2:49–52, 7:33–35, 23:68–24:3, 23:13–16,
24:3–8, 23:47–59, 24:33–35; Ex. 1002 ¶¶ 73–76, 134–135). Patent Owner
does not separately dispute Petitioner’s contentions regarding claim 8. We
are persuaded by Petitioner’s arguments, which we determine are supported
by the cited evidence.
In particular we are persuaded that Gammie’s seed and/or key number
teaches the recited “secret information [that] comprises one more access
keys.” For example, Gammie discloses that “[t]he key can be a signal or
code number used in the scrambling process which is also required to
‘unlock’ or descramble the program in program descrambler 108 in decoder
106.” Ex. 1010, 2:49–52. Gammie discloses that “[t]he ‘seed’ can also be a
data code or a signal similar to the key described above.” Id. at 7:33–35.
These disclosures support Petitioner’s argument that the seed/key number
are secret information that are used as access keys to descramble protected
content.
6. Objective Indicia of NonObviousness
In its Response, Patent Owner contends that there is evidence of long-
felt need, failure of others, industry praise, commercial success, and copying
which should be considered as objective indicia of nonobviousness.
PO Resp. 63–66.
For us to give substantial weight to objective indicia of obviousness or
nonobviousness, a proponent must establish a nexus between the evidence
and the merits of the claimed invention. ClassCo, Inc., v. Apple, Inc., 838
F.3d 1214, 1220 (Fed. Cir. 2016). “[T]here is no nexus unless the evidence
presented is ‘reasonably commensurate with the scope of the claims.’” Id.
(quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)).
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A patentee is entitled to a presumption of nexus “when the patentee
shows that the asserted objective evidence is tied to a specific product and
that product ‘embodies the claimed features, and is coextensive with them.’”
Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019)
(quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed.
Cir. 2018)). But as Petitioner correctly argues (Pet. Reply 23–25), a
presumption of nexus is inappropriate here because Patent Owner does not
provide an analysis demonstrating that its products are coextensive (or
nearly coextensive) with the challenged claim. See Lectrosonics, Inc. v.
Zaxcom, Inc., IPR2018-01129, Paper 33 at 33 (PTAB Jan. 24, 2020).
But even without the presumption, Patent Owner “is still afforded an
opportunity to prove nexus by showing that the evidence of secondary
considerations is the ‘direct result of the unique characteristics of the
claimed invention.’” Fox Factory, 944 F.3d at 1373–74 (quoting In re
Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Also, the nexus must be “to
some aspect of the claim not already in the prior art.” In re Kao, 639 F.3d
1057, 1069 (Fed. Cir. 2011) (emphasis added). “Ultimately, the fact finder
must weigh the [objective indicia] evidence presented in the context of
whether the claimed invention as a whole would have been obvious to a
skilled artisan.” Lectrosonics, IPR2018-01129, Paper 33 at 33 (citing WBIP,
LLC v. Kohler Co., 829 F.3d 1317, 1331–32 (Fed. Cir. 2016)).
As we discuss below, we find that Patent Owner has not shown a
nexus between the claimed invention and long-felt need, failure of others,
industry praise, commercial success, or copying.
Moreover, in addition to this proceeding, Patent Owner presents
nearly the same arguments and evidence with respect to objective indicia of
nonobviousness in at least four other proceedings involving different
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patents. See Dolby Laboratories, Inc. v. Intertrust Techs. Corp., IPR2020-
00661, Paper 17 at 63–68 (PTAB Jan. 21, 2021) (Patent Owner Response);
Dolby Laboratories, Inc. v. Intertrust Techs. Corp., IPR2020-00662, Paper
17 at 60–65 (PTAB Jan. 21, 2021) (Patent Owner Response); Dolby
Laboratories, Inc. v. Intertrust Techs. Corp., IPR2020-00665, Paper 19 at
62–66 (PTAB June 16, 2021) (Patent Owner Response); Dolby
Laboratories, Inc. v. Intertrust Techs. Corp., IPR2020-01123, Paper 18 at
42–45 (PTAB Apr. 20, 2021) (Patent Owner Response). Patent Owner,
however, does not explain adequately how the same evidence of objective
indicia of nonobviousness can be attributable to each particular claimed
invention. See Fox Factory, 944 F.3d at 1378 (“The same evidence of
secondary considerations cannot be presumed to be attributable to two
different combinations of features. In such situations, the patentee retains
the burden of proving the degree to which evidence of secondary
considerations tied to a product is attributable to a particular claimed
invention.” (citation omitted)).
a) Long-Felt Need and Failure of Others
In order to show a long-felt but unmet need for the claimed invention,
the objective evidence must show that the need was a persistent one that was
recognized by those of ordinary skill in the art at the time of the invention.
In re Gershon, 372 F.2d 535, 538 (CCPA 1967). As evidence of long-felt
need and failure of others, Patent Owner submits three articles from the Wall
Street Journal which, according to Patent Owner, suggest a need for a way
to distribute digital content in a secure manner that would “(1) ensure the
digital content would only be used in an authorized manner, (2) ensure that
the digital content creator would be compensated for use of the digital
content, and (3) allow for such distribution to client devices that were not
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under the control of the distributor.” PO Resp. 63–64 (citing Ex. 2028, 1;
Ex. 2029, 1; Ex. 2030, 1). Patent Owner also submits another article from
the Wall Street Journal, and an article from the New York Times, describing
work by Xerox PARC, IBM, Microsoft, and other companies in the area of
digital rights management. Id. at 64 (citing Ex. 2031, 3; Ex. 2032, 1).
Patent Owner contends that “most, if not all, systems developed by
others were either not commercially successful, were not adopted by digital
content industries, copied the claimed invention or have been licensed under
the claimed invention.” PO Resp. 64. But Patent Owner does not cite any
evidence supporting this argument.
We assign this evidence little weight, because Patent Owner has not
identified anything in the cited articles that ascribes any long-felt need to the
merits of the claimed invention of the ’627 patent, and has not pointed to any
evidence that others had failed to achieve a solution to any technical
problem for which the invention of ʼ627 patent is also a solution.
b) Significance Recognized by the Industry
As evidence of industry recognition, Patent Owner submits an article
published in Fortune. PO Resp. 64–65 (citing Ex. 2033). Patent Owner
argues that the article praises Patent Owner’s technology for “wrap[ping] the
file in a secure digital container and tag[ging] it with rules describing how it
could be used,” and where, “[t]o pay or read the . . . file, recipients would
need special software or hardware that could be trusted by the content
originator to enforce the rules.” PO Resp. 66 (alterations and omission in
original) (emphasis omitted) (quoting Ex. 2033, 2). According to Patent
Owner, “the use of special software or hardware to govern access to digital
content is the thrust of the subject claims of the ̓ 627 patent.” PO Resp. 65
(citing Ex. 1001, 2:13–3:39).
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In its Reply, Petitioner contends the Fortune article merely provides a
high level summary of Patent Owner’s technology. Pet. Reply 24.
Petitioner argues that the mention of a “secure digital container” in the
article does not signify industry recognition because the secure digital
container was known in the prior art. Pet. Reply 24.
We determine that the Fortune article fails to provide a nexus to the
claimed invention. We agree with Petitioner that the Fortune article
provides a high level summary of Patent Owner’s technology that is
insufficient by itself to show a nexus to the claimed invention. Although the
article mentions a “secure digital container” which purportedly refers to the
claimed “secure electronic container,” Patent Owner does not contest
Petitioner’s argument that Gammie or Shamoon discloses a secure electronic
container. See PO Resp. 24–34; 51–57. “Where the offered secondary
consideration actually results from something other than what is both
claimed and novel in the claim, there is no nexus to the merits of the claimed
invention.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)
(citing cases) (emphasis in original).
Thus, we find that Patent Owner has not shown that there is a nexus
between the evidence of industry recognition and the merits of the claimed
invention. Absent a nexus, we assign little weight to the evidence of
industry praise.
c) Commercial Success and Copying
As evidence of commercial success and copying, Patent Owner argues
that over two dozen companies have licensed the claimed invention, and that
“Intertrust has received more than $1 billion in licensing revenue in return
for granting licensees the right to practice the claimed invention and
Intertrust’s remaining patent portfolio.” PO Resp. 66.
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But Patent Owner does not cite any evidence to support its contention,
such as the mentioned licenses themselves, or any testimony by someone
who was familiar with the circumstances of the licenses to Patent Owner’s
portfolio. Absent such evidence, we cannot assess whether the licenses have
any nexus to the limitations of the challenged claims. Thus, we assign little
weight to Patent Owner unsupported arguments on commercial success and
copying.
7. Conclusion as to Obviousness over Gammie
For the reasons explained above, we give little weight to Patent
Owner’s evidence of nonobviousness. On the other hand, based on the
arguments and evidence presented in the Petition, we determine that
Petitioner has shown that Gammie teaches each limitation of claims 1 and 4–
8 of the ’627 patent. Weighing all of the evidence of obviousness and
nonobviousness, we conclude that Petitioner has shown the unpatentability
of claims 1 and 4–8 as obvious over Gammie by a preponderance of the
evidence.
D. Obviousness over Shamoon
Petitioner contends claims 1 and 4–8 are obvious over Sahmoon. Pet.
41–60. Below we provide a brief overview of Shamoon and then analyze
Petitioner’s contentions as they relate to “the scope and content of the prior
art” and “any differences between the claimed subject matter and the prior
art.” Graham, 383 U.S. at 17–18.
1. Overview of Shamoon
Shamoon, titled “Methods and Apparatus for Continuous Control and
Protection of Media Content,” is directed to systems and methods for
performing content protection and DRM. Ex. 1009, codes (54), (57), 2:1–2.
More specifically, Shamoon describes a media player for streaming
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encrypted digital content, a secure container including a key for decrypting
the content, and a control arrangement in the media player for opening the
secure container, extracting the key, and decrypting the encrypted content.
Id. at 2:2–9.
Figure 17 of Shamoon is reproduced below.

Figure 17 of Shamoon depicts an exemplary architecture in which a trust
plugin operates within an overall Real Networks architecture. Ex. 1009,
2:34–35, 31:18–19. As shown in Figure 17, File 1701 may be provided to
Real Networks G2 Client Core 1702 (“Client Core”) through Server 1703 or
Direct Connection 1704. Id. at 31:20–21. Client Core 1702 may include
Trust Plugins 1708, 1709 and Rendering Plugins 1705, 1706. Id. at 31:22–
24. The architecture may also include Inter-Rights Point (“IRP”) 1710,
which is a software process running on the same computer as Client Core
1702. Id. at 31:24–25, 32:8–12.
In operation, when File 1701 is a protected stream of content, Client
Core 1702 may create an instance of a trust plugin (for example, Trust
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Plugin 1708) and pass the stream thereto for processing. Ex. 1009, 31:27–
29. The protected content may be encrypted by a cryptographic key stored
in a secure container called a DigiBox. Id. at 17:24–27, 17:33–18:4.
Figure 12 of Shamoon is reproduced below.

Figure 12 of Shamoon depicts one embodiment of the DigiBox format and
how it is incorporated into a control message. Id. at 17:28–29. As shown in
Figure 12, DigiBox 1204 may contain DigiBox Header 1205, Rules 1206,
and Data 1207, which includes, inter alia, Cryptographic Key 1209. Id. at
17:34–18:2.
Returning to Figure 17, Trust Plugin 1708 may pass a DigiBox to IRP
1710, which may decrypt the DigiBox and extract its cryptographic key and
an initialization vector (IV), which then may be passed to Trust Plugin 1708.
Ex. 1009, 32:9–15. Trust Plugin 1708 may use this information to decrypt
Encrypted Contents 1406 of the stream. Id. at 32:14–15. Trust Plugin 1708
may then create an instance of a rendering plugin (for example, Rendering
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Plugin 1705) and pass the decrypted contents thereto for further processing.
Id. at 32:16–24. The rendering plugin may process the stream further and
pass it back to the Client Core, which may then pass the stream to Rendering
Device 1707. See id. at 31:21–23.
Shamoon further describes that rules and controls that specify whether
protected content may be processed by an IRP, which is a protected
processing environment (PPE) for processing rules and controls. Id. at 12:3–
5, 12:27–31. These rules and controls may include security and processing
requirements such as a password, payment or personal information,
geographic location or particular type of viewer, use constraints, and
validation data. See, e.g., id. at 14:5–14, 15:28–16:12, 17:35–18:13. For
example, a key required to decrypt protected content may be provided only
if a rule has been satisfied. Id. at 14:10-12, 15:1–10, 18:28–34, 19:1–5. If a
rule is not satisfied, access to the protected content may be terminated. Id. at
11:12–14, 16:2–5.
2. Analysis of Claim 1
a) Preamble [1pre]
The preamble of claim 1 recites: “A method performed by a system
comprising a processor and a non-transitory computer-readable storage
medium storing instructions that, when executed by the processor, cause the
system to perform the method, the method comprising.” Ex. 1001, 12:6–10.
Petitioner argues that, to the extent the preamble is treated as limiting,
Shamoon teaches the features recited therein. Pet. 44–45 n.5. In particular,
Petitioner argues that Shamoon’s IRP software process runs on a system that
includes a CPU and secure memory in a protected processing environment.
Id. at 44–45 (citing Ex. 1009, 32:9–12 (“IRP 1710 may be a software
process running on the same computer as Real Networks G2 Client Core and
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Trust Plugin 1708. IRP1710 may run in a protected environment or may
incorporate tamper resistance techniques designed to render IRP 1710
resistant to attack.”), 12:3–10, 13:26–28; Ex. 1002 ¶ 144). Patent Owner
does not separately dispute Petitioner’s allegations regarding the preamble of
claim 1.
We are persuaded by Petitioner’s arguments for the reasons outlined
above.
b) Limitation 1a
Limitation 1a recites “receiving, by a secure control application
executing on the system in a protected processing environment, a request to
access protected content by a governed application executing on the system
in a processing environment separate from the protected processing
environment.” Ex. 1001, 12:11–16.
Petitioner identifies Shamoon’s IRP as the claimed “secure control
application” and argues the IRP executes in a protected processing
environment. Pet 45–46 (citing Ex. 1009, 12:3–10, 13:26–28, 18:21–23,
32:8-12, Fig. 17; Ex. 1005, 87:36–39; Ex. 1002 ¶ 146). Petitioner further
identifies Client Core 1702, including its Trust Plugin 1708, as the claimed
“governed application.” Id. at 47–48 (citing Ex. 1009, 30:6–31, 31:18–29,
32:13–15, 17:24–26, 17:34–18:4; Ex. 1002 ¶ 150). Finally, Petitioner
argues that Trust Plugin 1708 passes DigiBox 1404 to IRP 1710 and that this
act of passing the DigiBox from Trust Plugin 1708 to IRP 1710 teaches the
claimed “receiving . . . a request to access protected content by a governed
application.” Pet. 47 (citing Ex. 1009, 2:3–9, 32:8–9, 18:21–25, 32:13–15;
Ex. 1002 ¶ 151–152). Petitioner argues that POSITA would have
“recognize[d] that receiving a DigiBox, by IPR 1710, from Trust Plugin
1708, is receiving a request to access the stream of protected content because
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passing the DigiBox is making a call to the IRP requesting the DigiBox to be
decrypted such that a key to access the protected content would be
retrieved.” Id. at 48 (citing Ex. 1002 ¶ 152). Furthermore, Petitioner argues
that Client Core 1702 and its Trust Plugin 1708 operates in an environment
separate from the protected processing environment of the IRP. Id. at 48–49
(citing Ex. 1009, 32:8–12; Ex. 1002 ¶¶ 153–157).
Patent Owner argues that passing Shamoon’s DigiBox from the Trust
Plugin to the IRP is not “receiving . . . a request to access protected content.”
PO Resp. 52–57. Here, Patent Owner makes two arguments. We analyze
these two arguments in turn.
Patent Owner’s first argument is similar to the one it made regarding
the system data packets in Gammie being mapped to both the “request” and
“secure electronic container.” Here, Patent Owner argues that Petitioner has
mapped Shamoon’s DigiBox as both the claimed “request” and the claimed
“secure electronic container.” PO Resp. 53–54 (citing Ex. 2024 ¶ 112). We
disagree with Patent Owner for many of the same reasons explained above
with respect to the obviousness ground based on Gammie. Specifically,
Petitioner has identified the passing of the DigiBox from the Trust Plugin to
the IRP (by way of a “call” to the IRP) as teaching the claimed “request,”
and then separately identifies the DigiBox itself as the “secure electronic
container.” Pet. 47–49. Thus, we do not agree that Petitioner has mapped
the DigiBox to two separate limitations.
Second, Patent Owner argues the Shamoon’s Trust Plugin is more
closely associated with the IRP than the Client Core, and thus passing the
DigiBox from the Trust Plugin to the IRP is “an internal communication of
the alleged ‘secure control application,’ not a request to access protected
content ‘receiv[ed] by a secure control application.” PO Resp. 54 (citing Ex.
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2024 ¶ 114). Patent Owner argues that the Trust Plugin is not subject to any
rules or policies imposed by the IRP. Id. at 55 (citing Ex. 2024 ¶ 115).
Patent Owner also argues that the Trust Plugin performs functions which
show that it is more associated with the IRP or with imposing the rules
rather than with being subject to rules by the IRP. Id. at 55–56 (citing Ex.
1009, 31:21–35; Ex. 2024 ¶ 116). Therefore, Patent Owner argues, the Trust
Plugin is part of the secure control application and not a governed
application, and the communication of the DigiBox from the Trust Plugin to
the IRP is an internal communication within the secure control application
rather than a request that is received by the secure control application.
We disagree with Patent Owner’s argument. As we explained above,
Petitioner identifies the IRP as the “secure control application” and the
Client Core, along with its trusted plugins, as the “governed application.”
Pet. 45–48. Shamoon describes that the Trust Plugins register with the
Client Core and that the Client Core creates instances of the Trust Plugins.
Ex. 1009, 31:24–29. Thus, the evidence supports Petitioner’s contention
that the Trust Plugin is associated with the Client Core. Patent Owner’s
argument that the Trust Plugin is not a governed application, fails to address
Petitioner’s identification of the Client Core, and not just the Trust Plugins
of the Client Core, as the governed application. Pet. 47–48 (citing Ex. 1009,
30:6–31, 31:18–29, 32:13–15, 17:24–26, 17:34–18:4; Ex. 1002 ¶ 150).
Shamoon describes that the IRP processes the DigiBox, extracts the
cryptographic key and then passes it to the Trust Plugin in order decrypt the
content so that the rendering plugin of the Client Core can have access to
that content. Ex. 1009, 32:8–31. Thus, the Client Core along with its
trusted plugins are, in fact, a governed application because, as Petitioner
argues, the IRP controls the decryption key necessary for the Real Networks
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player to access the encrypted data packets of the protected content. Pet. 47
(citing Ex. 1009, 30:6–31). For the same reason, the Trust Plugins passing
the DigiBox to the IRP for processing is a communication that is received by
the IRP (the claimed “secure control application”) rather than a
communication internal to the “secure control application.”
For the aforementioned reasons, and based on the evidence of record,
we are persuaded by Petitioner’s arguments that Shamoon teaches limitation
1a of claim 1.
c) Limitation 1b
Limitation 1b recites “extracting, by the secure control application,
secret information from a secure electronic container, the secret information
being configured to be used, at least in part, to decrypt the protected content,
wherein extracting the secret information comprises decrypting at least a
portion of the secure electronic container to generate unencrypted secret
information.” Ex. 1001, 12:17–24.
Petitioner identifies Shamoon’s cryptographic key as the claimed
“secret information” and the DigiBox as the claimed “secure electronic
container.” Pet. 49–51 (citing Ex. 1009, 30:8–12, 32:13–15, 17:23-27,
18:14–15, 18:20–21; Ex. 1002 ¶ 158). Petitioner argues that the IRP
decrypts the DigiBox and that, by decrypting the DigiBox, a stored key is
extracted from the DigiBox in order to decrypt the protected content of the
stream. Id. at 50–51 (citing Ex. 1009, 17:24–26, 17:34–18:4, 18:20–27;
Ex. 1002 ¶¶ 69–72, 159).
Patent Owner does not separately dispute Petitioner’s contentions for
this limitation. We are persuaded by Petitioner’s arguments. Shamoon
explicitly discloses that the “DigiBox is a secure container” (Ex. 1009,
17:24–26) and that the DigiBox contains the cryptographic key (Ex. 1009,
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17:34–18:4). Shamoon further discloses that the IRP processes the DigiBox
and extracts the cryptographic key. Ex. 1009, 32:13–15. Thus, we agree
with Petitioner that Shamoon teaches extracting, by the IRP, secret
information in the form of the cryptographic key from the secure electronic
container (i.e. the DigiBox).
d) Limitation 1c
Limitation 1c recites “sending, by the secure control application, the
unencrypted secret information from the protected processing environment
to the governed application executing in the processing environment
separate from the protected processing environment.” Ex. 1001, 12:24–28.
Petitioner contends the IRP (“secure control application”) sends the
unencrypted cryptographic key (the “secret information”) from the protected
processing environment of the IRP to the Client Core including its Trust
Plugins. Pet. 52 (Ex. 1002 ¶ 163). Petitioner cites many of the same
disclosures from Shamoon to support its argument as it did for the previous
limitations of claim 1. Specifically, Petitioner cites Shamoon as disclosing
that the IRP passes the cryptographic key to the Trust Plugin after extracting
the key from the DigiBox. Id. (citing Ex. 1009, 18:20–27; 32:13–15; Ex.
1002 ¶ 164).
Patent Owner does not separately dispute Petitioner’s contentions
regarding limitation 1c. We are persuaded by Petitioner’s arguments.
Shamoon discloses that “IRP 1708 [sic] may process DigiBox 1404 and
extract a cryptographic key and IV, which may then be passed to Trust
Plugin 1708.” Ex. 1009, 32:13–15. This disclosure supports Petitioner’s
argument that the IRP sends the unencrypted cryptographic key to the Client
Core and the Trust Plugin.
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e) Conclusion
For the aforementioned reasons, we determine Petitioner has shown
that Shamoon teaches all the limitations of claim 1.
3. Claims 4–7
Claim 4 depends from claim 1 and further recites “prior to sending the
secret information to the governed application, determining, by the secure
control application, that the governed application satisfies one or more
requirements.” Ex. 1001, 12:44–47. Claims 5, 6, and 7 directly depend
from claim 4.
Petitioner contends that, before sending the secret information to the
governed application, Shamoon determines whether the governed
application satisfies one or more requirements. Pet. 54 (citing Ex. 1009,
12:27–35, 13:1–28; Ex. 1002 ¶¶ 166–167). Specifically, Petitioner contends
that Shamoon’s control block compares a system ID to an authorized system
ID, before releasing a key to the authorized system. Pet. 54 (citing Ex. 1009,
12:27–35, 13:1–28; Ex. 1002 ¶¶ 166–167). Petitioner further argues that
Shamoon discloses rules requiring that a password has been entered,
payment has been made, sufficient budget exists, the computer is in a certain
geographic location or release of the key is authorized. Pet. 54–55 (citing
Ex. 1009, 14:3–16:5; Ex. 1002 ¶ 168). In addition, Petitioner relies on
Shamoon’s disclosure that a DigiBox may deliver rules to the IRP. Pet. 55
(citing Ex. 1009, 17:24–26, 17:34–35). Petitioner argues that, based on
these teachings, that it would have been obvious to a POSITA to send a rule,
such as those described above, via a DigiBox to the IRP which the IRP
would use to control whether Trust Plugin is provided with a key. Pet. 56
(citing Ex. 1002 ¶ 170).
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Patent Owner argues that Petitioner “improperly attempt[s] to
combine portions of multiple, unrelated embodiments of Shamoon, without
any valid rationale for how and why the combinations would be made or
whether a [POSITA] would have had a reasonable expectation of success.”
PO Resp. 57. Specifically, Patent Owner argues that Petitioner relies on the
Real Networks Implementation depicted in Figure 17 of Shamoon to teach
the limitations claim 1, but then relies on the governance rules disclosed in
separate embodiments depicted in Figures 1, 7, and 20 of Shamoon to teach
the “one or more requirements” limitation of claim 4. Id. at 57–58 (citing
Pet. 45–57). The rules Petitioner relies on, according to Patent Owner, are
stored in control block 13 depicted in Figure 1 of Shamoon. Id. at 58. The
Real Networks implementation, however, does not include control block 13
according to Patent Owner. Id. at 59. Similarly, Patent Owner argues that
Shamoon does not disclose that DigiBoxes in the Real Networks
implementation include any rules. Id. (citing Ex. 2024 ¶ 121). Thus,
according to Patent Owner, Petitioner’s argument that it would have been
obvious to a POSITA to include rules in the DigiBox is conclusory and not
sufficiently supported by reasoning showing how this modification would
have been made. Id. at (citing Ex. 2024 ¶ 122).
Here we agree with Patent Owner. As we explained above, the
Petition relies on control block 13 for comparing a system ID to an
authorized system ID as a requirement for releasing the key. Pet. 54 (citing
Ex. 1009, 12:27–35, 13:1–28; Ex. 1002 ¶¶ 166–167). The Petition further
relies on rules, such as those requiring a password, requiring payment,
requiring sufficient funds, and checking the geographic location of the
computer, as rules that satisfy the “one or more requirements” limitation of
claim 4. Id. at 54–55 (citing Ex. 1009, 14:3–16:5; Ex. 1002 ¶ 168). Each of
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these disclosures is discussed in connection with the “generic system” of
Figure 1 and control messages depicted in Figure 7, not in connection with
Figure 17 and the Real Network implementation which was relied upon to
teach the limitations of claim 1. Ex. 1009, 4:7, 12:11–16:17; Pet. 44–54.
Petitioner argues that Figure 1 of Shamoon is a generic system and
that a POSITA would have understood that the other embodiments build on
this generic system. Pet. Reply 20–21. As Patent Owner points out,
however, at least one other embodiment of Shamoon differs from the generic
system because it does not include control block 13. PO Sur-reply 21; see
also Ex. 1009, 19:30–33 (describing the Pipelined Implementation as an
“alternative embodiment” to System 1, and explaining that this alternative
system “differs from System 1” in that it “lacks a separate control block, and
also lacks a feedback path back from the Composite Block 1110.”).
Accordingly, we agree with Patent Owner that it cannot be presumed that the
embodiments of Shamoon, including the Real Networks implementation
depicted in Figure 17, incorporate all the features of the generic system.
Therefore, in order to appropriately argue that it would have been obvious to
a POSITA to use the rules cited in their Petition or to argue that it would
have been obvious to a POSITA to send a rule via a DigiBox, Petitioner has
the burden of explaining why these features are in fact included in the Real
Network embodiment, or why they would be incorporated in the Real
Networks embodiment by a POSITA. In re Stepan Company, 868 F.3d
1342, 1346 n.1 (Fed. Cir. 2017) (“Whether a rejection is based on combining
disclosures from multiple references, combining multiple embodiments from
a single reference, or selecting from large lists of elements in a single
reference, there must be a motivation to make the combination and a
reasonable expectation that such a combination would be successful,
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otherwise a skilled artisan would not arrive at the claimed combination.”).
We find Petitioner has not adequately identified the possible differences
between the Real Network implementation and the generic system of
Shamoon or tried to address any such differences if they exist. Dr.
Madisetti’s testimony that “it would have been obvious to a POSITA to send
IRP 1710 via a DigiBox a rule by which the IRP controls whether the Trust
Plugin 1708 is provided with a key,” for example, does not explain whether
the DigiBox used in the Real Networks implementation includes rules and if
not, why it would have been obvious to a POSITA to include such rules.
Based upon the evidence presented in the Petition and the parties’
arguments, we determine that Petitioner has not provided a valid rationale
for how and why a combination between the various embodiments of
Shamoon would be made to render the subject matter of claims 4–7 obvious.
Accordingly, we are not persuaded that Petitioner has shown Shamoon
teaches the limitations of claim 4 or of claims 5–7, which directly depend
from claim 4.
4. Claim 8
Claim 8 depends from claim 1 and recites “wherein the secret
information comprises one or more access keys.” Ex. 1001, 12:60–61.
Petitioner argues Shamoon’s cryptographic key teaches the limitation of
claim 8 for the reasons explained by Petitioner with respect to claim 1. Pet.
59–60. Patent Owner does not separately dispute Petitioner’s contentions
regarding claim 8. We are persuaded that Shamoon’s cryptographic key,
which Petitioner identified as the secret information in claim 1, teaches the
secret information comprising one or more access keys. Pet. 49–51 (citing
Ex. 1009, 30:8–12, 32:13–15, 17:23-27, 18:14–15, 18:20–21; Ex. 1002
¶ 158).
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5. Objective Indicia of NonObviousness
Patent Owner relies on the same evidence of nonobviousness here as
they did above for the grounds based on Gammie.
6. Conclusion
For the reasons explained above, we give little weight to Patent
Owner’s evidence of nonobviousness. On the other hand, based on the
arguments and evidence presented in the Petition, we determine that
Petitioner has shown that Shamoon teaches each limitation of claims 1 and
8, but has not shown that Shamoon teaches the limitations of claims 4–7.
Weighing all of the evidence of obviousness and nonobviousness, we
conclude that Petitioner only has shown the unpatentability of claims 1 and 8
as obvious over Shamoon by a preponderance of the evidence.
III. CONCLUSION8
Weighing all of the evidence of obviousness and nonobviousness
together, including the content of the prior art, the differences between the
prior art teachings and the claim limitations, and the objective indicia of
nonobviousness, we determine that Petitioner has shown by a preponderance
of the evidence that claims 1 and 4–8 would have been obvious over
Gammie and that claims 1 and 8 would have been obvious over Shamoon.
In summary:

8 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED claims 1 and 4–8 of the ʼ627 patent are held to
unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Claims
35
U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 4–8 103(a) Gammie 1, 4–8
1, 4–8 103(a) Shamoon 1, 8 4–7
Overall
Outcome
1, 4–8
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FOR PETITIONER:
Scott A. McKeown
scott.mckeown@ropesgray.com
Mark D. Rowland
mark.rowland@ropesgray.com
Keyna Chow
keyna.chow@ropesgray.com
Leslie Spencer
lspencer@desmaraisllp.com

FOR PATENT OWNER:
Christopher A. Mathews
chrismathews@quinnemanuel.com
Razmig Messerian
razmesserian@quinnemanuel.com
Tigran Guledjian
tigranguledjian@quinnemanuel.com
Scott Florance
scottflorance@quinnemanuel.com