ZTE Corporationv.ContentGuard Holdings, Inc.

Patent Trial and Appeal Board

Jun 26, 2014

10773306 (P.T.A.B. Jun. 26, 2014)

Trials@uspto.gov Paper 57
571-272-7822 Entered: June 26, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ZTE CORPORATION AND ZTE (USA) INC.,
Petitioner,

v.

CONTENTGUARD HOLDINGS, INC.,
Patent Owner.
____________

Case IPR2013-00139
Patent 7,269,576 B2
____________

Before JAMESON LEE, MICHAEL W. KIM, and
MICHAEL R. ZECHER, Administrative Patent Judges.

LEE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. BACKGROUND
A. Introduction
On February 12, 2013, Petitioner (“ZTE”) filed a Petition for inter
partes review of claims 1-36 of U.S. Patent No. 7,269,576 B2 (“the ’576
patent”). Paper 2. Petitioner filed a Revised Petition (“Pet.”) on February
15, 2013.
1
Paper 9. On July 9, 2013, the Board instituted trial for claims 18-
21, 25-28, and 31-36, under 35 U.S.C. § 102(b), as anticipated by European
Patent Publication 0 268 139 (“EP ’139”). Paper 15 (“Dec.”).
After institution of trial, Patent Owner (“ContentGuard”)
2
filed a
Patent Owner Response (Paper 33, “PO Resp.”), and did not file a Motion to
Amend Claims. ZTE subsequently filed a Reply. Paper 39 (“Reply”).
A consolidated oral hearing for IPR2013-00133, IPR2013-00137,
IPR2013-00138, and IPR2013-00139, each involving the same Petitioner
and Patent Owner, was held on February 26 and 27, 2014. The transcript of
the consolidated hearing has been entered into the record. Papers 54-56.
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a).

1
Hereinafter, all use of the term “the Petition” in this decision refers to the
Revised Petition unless indicated otherwise.

2
The mandatory notices filed pursuant to 37 C.F.R. § 42.8(b)(1) indicate
that ContentGuard Holdings, Inc. and Pendrell Corporation are real parties-
in-interest. Paper 11, 2.

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Claims 18-21, 25-28, and 31-36 of the ’576 Patent have not been
proved unpatentable.
B. Related Proceedings
ZTE indicates that the ’576 patent is involved in co-pending litigation
titled ContentGuard Holdings Inc. v. ZTE Corp. et al., No. 3:12-cv-01226
(S.D. Cal.). Pet. 1. ZTE also filed five other petitions seeking inter partes
review of the following patents of ContentGuard: U.S. Patent No. 7,523,072
(IPR2013-00133); U.S. Patent No. 7,225,160 (IPR2013-00134); U.S.
Patent No. 7,359,884 (IPR2013-00136); U.S. Patent No. 6,963,859
(IPR2013-00137); and U.S. Patent No. 7,139,736 (IPR2013-00138). Id.
C. The ’576 Patent
The subject matter of the ’576 patent relates to the distribution of
digitally encoded works and the enforcement of usage rights. Ex. 1001,
1:5-6. According to the ’576 patent, an issue facing the publishing and
information industries is how to prevent the unauthorized and unaccounted
distribution or usage of electronically published materials. Id. at 1:10-13. In
particular, a major concern, according to the ’576 patent, is the ease with
which electronically published works can be “perfectly” reproduced and
distributed. Id. at 1:24-25. According to the ’576 patent, one way to curb
unaccounted distribution is to prevent unauthorized copying and
transmission. Id. at 1:44-46. Another way, according to the ’576 patent, is
to distribute software which requires a “key” to enable its use. Id. at 1:60-
61. The ’576 patent discloses that, although such distribution and protection
schemes prevent unauthorized distributions, they do so by sacrificing the
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potential for subsequent revenue bearing uses. Id. at 2:56-60. For example,
the ’576 patent discloses that it may be desirable to allow the lending of a
purchased work to permit exposure of the work to potential buyers, permit
the creation of a derivative work for a fee, or permit copying the work for a
fee. Id. at 2:60-65. The ’576 patent discloses that it solves these problems
by both permanently attaching usage rights to digital works, and by placing
elements in repositories, which store and control the digital works and
enforce the usage rights associated therewith. Id. at 3:53-4:15.
Figure 1 of the ’576 patent is reproduced below:

Figure 1 illustrates the basic operations of the disclosed invention.
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According to the embodiment of Figure 1, at step 101, a creator
creates a digital work. Ex. 1001, 7:1-2. At step 102, the creator determines
the appropriate usage rights and fees, attaches them to the digital work, and
stores the digital work with the associated usage rights and fees in
repository 1. Id. at 7:2-7. At step 103, repository 1 receives a request to
access the digital work from repository 2. Id. at 7:7-9. Such a request, or
session initiation, includes steps that help ensure that repository 1 and
repository 2 are trustworthy. Id. at 7:7-12. At step 104, repository 2
requests access to the digital work stored in repository 1 for a stated purpose,
e.g., to print the digital work or obtain a copy of the digital work. Id. at
7:13-17. At step 105, repository 1 checks the usages rights associated with
the digital work stored therein to determine if access to the digital work may
be granted. Id. at 7:17-24. At step 106, if access is denied, repository 1
terminates the session with repository 2 by transmitting an error message.
Id. at 7:24-25. At step 107, if access is granted, repository 1 transmits the
digital work to repository 2. Id. at 7:25-27. At step 108, both repository 1
and 2 generate billing information prior to transmitting the billing
information to a credit server. Id. at 7:27-30. The use of both repositories 1
and 2 for billing prevents attempts to circumvent the billing process. Id. at
7:30-31.
One embodiment described in the ’576 patent relates to enforcing
usage rights in rendering systems. Ex. 1001, 8:16-67. Rendering systems
are systems that can render a digital work into its desired form, such as by
printing a file on a printer or executing a software program in a processor.
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Id. at 8:19-22, 8:37-38, 8:53-55. Other examples of rendering systems
include display, video, or audio systems. Id. at 51:65-67. Rendering
systems include repositories that store digital works and maintain the
security features of the ’576 patent. Id. at 8:22-23, 12:25-34. Repositories
in rendering systems can request to perform various usage transactions, such
as play or print transactions, that obtain a digital work from a remote
repository and then provide it to an attached rendering device to be rendered.
Id. at 30:23-35, 36:18-37:26.
Figure 4a of the ’576 patent is reproduced below:

Figure 4a illustrates an example of a rendering system

According to the embodiment of Figure 4a, printer system (401),
including print device (403) and printer repository (402), is attached to
external repository (404) that contains digital works. Ex. 1001, 8:26-29, 48-
51. The printer repository can obtain a copy of the digital work to be
provided to the rendering device. Id. at 8:36-38. That is accomplished by
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invoking a specific type of usage transaction called a print transaction. Id. at
36:55-37:26. A print transaction begins with a requestor repository sending
a message requesting permission to obtain and print a specified digital work
that is stored in a server repository. Id. at 36:55-37:26. Certain rendering
transactions require the presence of a digital ticket or an authorization object
in a repository requesting a digital work before the digital work can be
provided. Id. at 36:45-46, 37:18-19, 31:6-9. Repositories acquire digital
tickets through authorization transactions that request authorization objects
from a remote authorization repository. Id. at 41:31-42:16. If the repository
requesting the digital work is in possession of an authorization object, the
server repository determines whether the requestor is permitted to perform
the transaction based on usage rights related to the digital work. Id. at
36:45-46, 37:18-19, 30:59-31:49. Once the transaction is determined as
being permitted, the digital work is transmitted to the repository requesting
the digital work, and then the digital work is rendered. Id. at 36:47-50,
37:20-22.
D. Illustrative Claim
Claim 18 is an independent claim from which claims 19-21, 25-28,
and 31-36 directly or indirectly depend, and is reproduced below:
18. A method for controlling rendering of digital
content on an apparatus having a rendering engine configured
to render digital content and a storage for storing the digital
content, said method comprising:

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specifying rights within said apparatus for digital content
stored in said storage, said rights specifying how digital content
can be rendered;

storing digital content in said storage;

receiving a request for rendering of said digital content
stored in the storage;

checking whether said request is for a permitted
rendering of said digital content in accordance with said rights
specified within said apparatus;

processing the request to make said digital content
available to the rendering engine for rendering when said
request is for a permitted rendering of said digital content;

authorizing a repository for making the digital content
available for rendering, wherein the digital content can be made
available for rendering only by an authorized repository, the
repository performing the steps of:

making a request for an authorization object required
[sic] to be included within the repository for rendering of the
digital content; and

receiving the authorization object when it is determined
that the request should be granted.

Ex. 1001, 53:57-54:16 (emphasis added).

II. ANALYSIS
The only ground instituted for trial is that of the alleged anticipation,
under 35 U.S.C. § 102(b), of claims 18-21, 25-28, and 31-36 by EP ’139
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(Ex. 1012). ZTE has to prove unpatentability by a preponderance of the
evidence. 35 U.S.C. § 316(e). In patent law, “the name of the game is the
claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Therefore,
we begin with claim construction, and then follow with specific analysis of
the prior art.
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012). The terms also are given their ordinary and customary meaning, as
would be understood by one of ordinary skill in the art in the context of the
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). If an inventor acts as his or her own lexicographer, the definition
must be set forth in the specification with reasonable clarity, deliberateness,
and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
1243, 1249 (Fed. Cir. 1998).
An extraneous limitation should not be read into the claims from the
specification. E.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum
Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is one
the presence of which in a claim is unnecessary to make sense of the claim.
See, e.g., In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994); Renishaw
PLC, 158 F.3d at 1249. The construction that stays true to the claim
language and most naturally aligns with the inventor’s description is likely
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the correct interpretation. See Renishaw PLC, 158 F.3d at 1250. The
challenge is to interpret claims without unnecessarily importing limitations
from the specification into the claims. See E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
repository
In its petition, ZTE does not provide an explicit construction for
“repository.” In the Patent Owner Preliminary Response, ContentGuard
contended that “repository” should be interpreted as “a trusted system for
supporting usage rights.” Prel. Resp. 21. When instituting trial, we
construed “repository” as “a trusted system which maintains physical,
communications and behavioral integrity, and supports usage rights.”
Dec. 12. For reasons discussed below, we adhere to the same interpretation.
The specification provides a glossary which recites the following
meaning for “repository”:
Conceptually a set of functional specifications defining core
functionality in the support of usage rights. A repository is a
trusted system in that it maintains physical, communications
and behavioral integrity.
Ex. 1001, 52:1-6 (emphasis added). By setting forth the term in a glossary
and using the verb “is” following “repository” in the second sentence, the
specification sets forth an explicit definition of “repository” as “a trusted
system in that it maintains physical, communications and behavioral
integrity.” The first sentence is also relevant to the definition of “repository”
because it specifies that the repository supports usage rights. Accordingly,

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we construe “repository” as “a trusted system which maintains physical,
communications and behavioral integrity, and supports usage rights.”
Our analysis does not end here. In order to understand “a trusted
system” it is necessary to construe “physical integrity,” “communications
integrity,” and “behavioral integrity.” Those terms are described in a section
of the specification labeled “[r]epositories.” For “physical integrity,” the
specification describes:
Physical integrity refers to the integrity of the physical devices
themselves. Physical integrity applies both to the repositories
and to the protected digital works. Thus, the higher security
classes of repositories themselves may have sensors that detect
when tampering is attempted on their secure cases. In addition
to protection of the repository itself, the repository design
protects access to the content of digital works. In contrast with
the design of conventional magnetic and optical devices-such as
floppy disks, CD-ROMs, and videotapes-repositories never
allow non-trusted systems to access the works directly. A
maker of generic computer systems cannot guarantee that their
platform will not be used to make unauthorized copies. The
manufacturer provides generic capabilities for reading and
writing information, and the general nature of the functionality
of the general computing device depends on it. Thus, a copy
program can copy arbitrary data. This copying issue is not
limited to general purpose computers. It also arises for the
unauthorized duplication of entertainment “software” such as
video and audio recordings by magnetic recorders. Again, the
functionality of the recorders depends on their ability to copy
and they have no means to check whether a copy is authorized.
In contrast, repositories prevent access to the raw data by
general devices and can test explicit rights and conditions
before copying or otherwise granting access. Information is
only accessed by protocol between trusted repositories.
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Ex. 1001, 12:35-61 (emphases added). Much of the above description
makes use of permissive terms such as “may” and “can” and, thus, do not
reflect or indicate a required limitation for physical integrity. The
specification also appears to use the terms or phrases in each of the
following three groups interchangeably:
1. data, content, digital work, information;
2. non-trusted system, general device; and
3. “never allow access” and “prevent access.”
When referring to the relationship between the repository and data,
the specification uses absolute terms such as “never” and “only.” In light of
the foregoing, we construe “physical integrity” as “preventing access to
information by a non-trusted system.”
For “communications integrity,” the specification describes the
following:
Communications integrity refers to the integrity of the
communications channels between repositories. Roughly
speaking, communications integrity means that repositories
cannot be easily fooled by “telling them lies.” Integrity in this
case refers to the property that repositories will only
communicate with other devices that are able to present proof
that they are certified repositories, and furthermore, that the
repositories monitor the communications to detect “impostors”
and malicious or accidental interference. Thus the security
measures involving encryption, exchange of digital certificates,
and nonces described below are all security measures aimed at
reliable communication in a world known to contain active
adversaries.

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Ex. 1001, 12:62-13:7 (emphases added). We construe “communications
integrity” as “only communicates with other devices that are able to present
proof that they are trusted systems, for example, by using security measures
such as encryption, exchange of digital certificates, and nonces.” The
Encyclopedia of Cryptography defines “nonce” as “[a] number used in a
cryptographic protocol to indicate the unique character of a message.”
ENCYCLOPEDIA OF CRYPTOGRAPHY 197 (1997) (Ex. 3001).
For “behavioral integrity,” the specification describes:
Behavioral integrity refers to the integrity in what repositories
do. What repositories do is determined by the software that
they execute. The integrity of the software is generally assured
only by knowledge of its source. Restated, a user will trust
software purchased at a reputable computer store but not trust
software obtained off a random (insecure) server on a network.
Behavioral integrity is maintained by requiring that repository
software be certified and be distributed with proof of such
certification, i.e. a digital certificate. The purpose of the
certificate is to authenticate that the software has been tested by
an authorized organization, which attests that the software does
what it is supposed to do and that it does not compromise the
behavioral integrity of a repository. If the digital certificate
cannot be found in the digital work or the master repository
which generated the certificate is not known to the repository
receiving the software, then the software cannot be installed.
Ex. 1001, 13:8-33 (emphases added). We construe “behavioral integrity” in
the context of a repository as “requiring software to include a digital
certificate in order to be installed in the repository.”
The record is not without evidence in contrary to our interpretation.
That is not unusual. The nature of interpretation is to come to the
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appropriate conclusion in light of all of the evidence. All of the evidence
does not have to point uniformly in a single direction.
For instance, the specification in Table 2 indicates ten different levels
of security for repositories, and the lowest level, i.e., level “0,” is described
as follows:
Open system. Document transmission is unencrypted. No
digital certificate is required for identification. The security of
the system depends mostly on user honesty, since only modest
knowledge may be needed to circumvent the security measures.
The repository has no provisions for preventing unauthorized
programs from running and accessing or copying files. The
system does not prevent the use of removable storage and does
not encrypt stored files.
Ex. 1001, 15:30-41. Thus, according to Table 2, repositories are not all
trusted systems. Level “0” security means having an open system lacking in
physical, communications, and behavioral integrity, and without support for
managing usage rights. That is directly contrary to the meaning of
“repository” as defined in the glossary. For reasons discussed below, we
adhere to the definition provided in the glossary. The contrary evidence
based on level “0” security shown in Table 2 is insufficient to outweigh the
rest of the evidence including, in particular, the explicit definition provided
in the glossary. We make our determination based on the totality of the
evidence.
As noted above, the disclosed invention is about distribution of and
usage rights enforcement of digital works. The problems described in the
background portion of the specification concerns unauthorized and
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unaccounted distribution or usage of electronically published materials.
Ex. 1001, 1:24-43. The ’576 patent states that it solves preexisting problems
by both permanently attaching usage rights to digital works and placing
elements in repositories which enforce those usage rights. Ex. 1001, 3:53-
4:15.
Here, the definition set forth in the glossary for “repository” is
consistent with the description of the acknowledged prior art, and the
objective or goal to be achieved by the invention of the ’576 patent. The
specification also contains detailed preferred embodiments utilizing
repositories, which are trusted systems to provide usage control for digital
works. Ex. 1001, 12:25-34, 26:20-44, 43:36-50:26.
The bulk of the disclosure consistently is directed to repositories
which are trusted systems for providing usage control for digital works. For
example, the specification states:
The enforcement elements of the present invention are
embodied in repositories. Among other things, repositories are
used to store digital works, control access to digital works, bill
for access to digital works and maintain the security and
integrity of the system.
Ex. 1001, 6:50-54 (emphasis added). Other references to “repository” in the
specification that recite necessary features of repositories also support the
definition in the glossary that a repository is a trusted system:
The core repository services 1302 comprise a set of functions
required by each and every repository. The core repository
services 1302 include the session initiation transactions which
are defined in greater detail below. This set of services also
includes a generic ticket agent which is used to “punch” a
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digital ticket and a generic authorization server for processing
authorization specifications.
Ex. 1001, 14:45-51 (emphasis added). In another example, the specification
discloses that “[a]s a prerequisite to operation, a repository will require
possession of an identification certificate,” and that “identification
certificates 1306 are required to enable the use of the repository.” Ex. 1001,
13:42-44, 14:56-57. Indeed, by using words such as “require” and
“required,” such examples amply support the definition provided in the
glossary that a repository is a trusted system.
In summary, even applying the rule of broadest reasonable
construction consistent with the specification, the weight of the evidence
supports the definition provided in the glossary. We regard as significant
that the definition states in an unequivocal manner that a repository “is a
trusted system.”
According to ContentGuard, our interpretation of “repository” is
incorrect because it is too broad in one respect and too narrow in another.
PO Resp. 8-11. For reasons discussed below, however, the specification of
the ’576 patent does not support adequately either contention. On the record
before us, we are unpersuaded by ContentGuard’s contentions.
We address below, in turn, first the contention that our construction is
too broad, and then the contention that our construction is too narrow.
1.
ContentGuard contends that our construction regarding “behavioral
integrity” as “requiring software to include a digital certificate in order to be
installed in the repository” is “excessively broad” unless the software is
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limited to that which makes the repository operative—software which
ContentGuard believes is referred to in the specification as “repository
software.” Id. at 8. We reproduce ContentGuard’s argument, in more detail,
below:
[The Board’s construction] is too broad because it is not
restricted to what the ’576 patent refers to as “repository
software”—that is software that makes the repository operative.
(See Ex. 1001, 13:14-17.) According to the ’576 patent
Specification, “[b]ehavioral integrity refers to the integrity in
what repositories do.” (Ex. 1001, 13:8-9.) What repositories
do, in turn, “is determined by the software that they execute.”
(Id., 13:9-10)

But not all software relates “to the integrity in what
repositories do.” (Id., 13:8-9) Repositories, along with usage
rights, are used to manage the use and distribution of digital
content. (E.g., Ex. 1001, 4:6-7, 6:50-54, 12:25-33, 52:1-6.)
Allowing them to do so, repositories can perform several
functions to implement the transmission of content and usage
rights. (E.g., Ex. 1001, 13:65-14:3.) But content itself does not
necessarily supply that function to a repository. (Ex. 2013,
Goodrich Dec., ¶ 41; see also ¶¶ 37-40.) Rather, repository
software implements the repository functions that are used to
manage the use and distribution of the content. (Ex. 1001,
13:51-56, 14:7-10, 34-43.) Thus, since “[b]ehavioral integrity
refers to the integrity in what repositories do,” the relevant
software is not any “software . . . to be installed in the
repository,” but the software the repository uses to manage the
use and distribution of content.
PO Resp. 8-9.
On what repositories do, ContentGuard’s argument overlooks and
fails to discuss the portions of the specification which indicate that
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repositories themselves also can be rendering devices which run and execute
the software type digital works, the usage rights of which they control. For
instance, the ’576 patent states the following with regard to software
runnable on a repository:
An Install transaction is a request to install a digital work
as runnable software on a repository. In a typical case, the
requester repository is a rendering repository and the software
would be a new kind or new version of a player.
Ex. 1001, 42:18-21 (emphasis added). This disclosure in the specification
does not support ContentGuard’s contention that a repository merely
manages the use and distribution of digital content, such as software, and
does not perform, run, or execute that digital content. The above-quoted
disclosure refers to a digital work that is “runnable software on a
repository,” and states that, in a typical case, the repository asking for the
digital work is itself a rendering repository that identifies the software digital
work not as operating software, but application software. The specification
conveys much information contrary to ContentGuard’s contention.
ContentGuard does not explain such disclosure and does not point to any
testimony of its expert witness that addresses such disclosure.
Because a repository, itself, may run and execute software the usage
and distribution of which is managed by the repository, it is unpersuasive
that the reference to “repository software” in that portion of the specification
discussing “behavioral integrity” (Ex. 1001, 13:8-33) is restricted to
software that only manages usage rights. Indeed, in the context of installing
software identified as “a new kind or new version of a player,” which does
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not control usage rights, the specification discusses extracting a copy of the
digital certificate for that software (Ex. 1001, 42:31-34), in the same manner
that the specification describes requiring a digital certificate in the digital
work to ensure behavioral integrity of the repository (Ex. 1001, 13:21-24).
Moreover, some repositories are rendering repositories. Ex. 1001, 42:18-21.
“Repository software,” as used in the specification, is broad enough to cover
application software, such as the “player” referenced in column 42, lines 18-
21, of the specification, or what ContentGuard refers to as “operating
software” which enables the repository to regulate usage rights.
We do not credit the testimony of the expert witness of ContentGuard,
Dr. Michael T. Goodrich, in paragraphs 40 and 41 of his declaration (Ex.
2013). In those paragraphs, Dr. Goodrich opines that in his opinion, a
person of ordinary skill in the art in 1994 would have understood that the
term “repository software” in the ’576 patent identifies and refers to the
operating software of the repository, and not the software digital works the
usage rights of which are controlled by the repository. The testimony is
unpersuasive, because they do not account for the disclosure of the
specification, discussed above, which conveys that some repositories are
themselves rendering depositories which run and execute the software digital
works the rights of which they control, such as a new version of a “player.”
2.
ContentGuard contends that our construction regarding “behavioral
integrity” as “requiring software to include a digital certificate in order to be
installed in the repository” is “excessively narrow” because it unnecessarily
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requires the inclusion of a “digital certificate” to ensure behavioral integrity.
PO Resp. 9-10. According to ContentGuard, in order to maintain behavioral
integrity, it is necessary only that the broader purpose of a repository doing
what it is supposed to do is satisfied. Id. at 10.
ContentGuard’s contention that our construction is too narrow is
inconsequential to the outcome of this proceeding, because a broader
interpretation of “behavioral integrity,” would not render inapplicable any
teaching of the prior art which was applied under the narrower construction.
We reproduce ContentGuard’s argument, here, in more detail:
The Board’s construction is also too narrow because it
requires “a digital certificate.” After explaining that
“[b]ehavioral integrity refers to the integrity in what
repositories do” and that “[w]hat repositories do is determined
by the software that they execute,” the ’576 patent says that
“[t]he integrity of the software is generally assured only by
knowledge of its source.” (Ex. 1001, 13:10-11.) Although the
specification does say that “behavioral integrity is maintained
by requiring that repository software be certified and be
distributed with proof of such certification, i.e., a digital
certificate,” the specification continues by explaining the
broader purpose of the certificate. (Id., 13:14-17.) “The
purpose of the certificate is to authenticate that the software has
been tested by an authorized organization, which attests that
the software does what it is supposed to do and that it does
not compromise the behavioral integrity of a repository.” (Id.,
13:17-21 (emphasis added).) So, as long as there is some
assurance that “the software does what it is supposed to do,”
whether by source certification or otherwise, behavioral
integrity can be maintained.
PO Resp. 9-10 (emphasis in original).

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The breadth argued by ContentGuard is on the extreme end of a
spectrum for the meaning of “repository”—whatever ensures a repository
does what it is supposed to do. ContentGuard would like to generalize the
feature into a generic goal or purpose, entirely removed from any specific
means for its implementation. There are several obstacles precluding such
an interpretation.
First, the restrictive language in the specification does not permit such
an expansive construction. Although it is true that the broadest reasonable
construction rule applies for claim interpretation, the construction must be
reasonable in light of the specification. In that connection, the specification
states: “Behavioral integrity is maintained by requiring that repository
software be certified and be distributed with proof of such certification, i.e.,
a digital certificate.” Ex. 1001, 13:14-17 (emphasis added).
Second, ContentGuard does not point to any other means, described in
the specification, for ensuring behavioral integrity of a repository. The sole
disclosure in that regard, as identified by ContentGuard relates to the use of
digital certificates. There is no basis to assume, on this record, that digital
certificates are representative of all ways for ensuring that a digital work is
authentic. Even ContentGuard does not make that assertion. Thus, the
scope of disclosure is not commensurate with the breadth for the
construction of “repository” desired by ContentGuard.
Third, the general articulation that a repository “does what it is
supposed to do” is not accompanied by any well-defined or otherwise
recognized standard for making an objective determination in that regard. If
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that is the claim construction, the scope of the claims would be uncertain and
indeterminable.
We do not credit the testimony of the expert witness of ContentGuard,
Dr. Goodrich, that “a person of ordinary skill in the art of 1994 would [have
understood] that the ’576 patent specification refers to the use of digital
certificates as only an exemplary method of preserving the behavioral
integrity of a repository.” Ex. 2013 ¶ 39. The testimony is unexplained and
conclusory. It does not account for the various factors we have considered
and discussed above.
B. Alleged Anticipation by EP ’139
ZTE contends that claims 18-21, 25-28, and 31-36 are unpatentable
under 35 U.S.C. § 102(b) as anticipated by EP ’139. Pet. 15-27. ZTE relies
on claim charts describing how EP ’139 allegedly describes the claimed
subject matter, and also on the Declaration of Dr. Vijay K. Madisetti to
support its positions. Ex. 1015. To establish anticipation, each and every
element in a claim, arranged as is recited in the claim, must be found in a
single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242
F.3d 1376, 1383 (Fed. Cir. 2001).
EP ’139 discloses a data processing system with a software copy
protection mechanism. Ex. 1012, 1:4-6. To provide security, each computer
or host that runs a protected software application is associated with a
logically and physically secure coprocessor. Ex. 1012, 1:25-29. Figure 1 of
EP ’139 describes the important components of the software protection
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mechanism and how they interact. Ex. 1012, 21:29-31. Figure 1 is
reproduced below:

Figure 1 illustrates a composite computing system.
According to the embodiment of Figure 1, EP ’139 discloses a
software protection mechanism embodied in a composite computing system.
Ex. 1012, 21:58-22:5. This composite computer system includes host 10
and coprocessor 20 connected via communication link 14. Ex. 1012, 22:3-6.
Coprocessor 20 also includes permanent, non-volatile memory 25 and
temporary memory 26. Ex. 1012, 22:19-21. In order to execute a protected
application, a user must install a right to execute the application, in the form
of a software decryption key, in permanent memory 25. Ex. 1012, 22:22-32.
To install this right to execute, the user receives from a software vendor
hardware cartridge 30 and distribution disk 16. Ex. 1012, 22:32-36.
In one embodiment, distribution disk 16 stores three files: (1) the
protected software application including an encrypted portion; (2) software
decryption key AK, encrypted by a different decryption key CSK provided
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by the vendor and already stored in coprocessor 20; and (3) token data
encrypted by the software decryption key. Ex. 1012, 22:23-27, 36-48. To
install the right to execute, coprocessor 20 decrypts the software decryption
key in temporary memory, and then verifies that the hardware cartridge is
authentic by querying the token data included in the cartridge to determine if
they match those in the token data file. Ex. 1012, 23:1-8. Hardware
cartridge 30 will contain the token data only if it has not been used.
Ex. 1012, 23:8-11.
After verifying that the hardware cartridge is authentic and unused,
coprocessor 20 will accept the right to execute and store the software
decryption key in permanent memory 25. Ex. 1012, 23:11-16. With access
to the software decryption key, the protected application file can be
decrypted and stored in temporary memory 26 so that it may be executed by
coprocessor 20. Ex. 1012, 23:16-21.
In one embodiment, EP ’139 discloses a source composite processor,
including source host 10 and coprocessor 20, that may communicate with a
sink composite processor, including sink host 110 and sink coprocessor 120.
Ex. 1012, 25:49-52. The source and sink processors are interconnected via
communication link 200. Ex. 1012, 26:5-6. EP ’139 discloses that source
coprocessor 20 and sink coprocessor 120 exchange encrypted information.
Ex. 1012, 26:10-20. Only coprocessors that are “member[s] of the family”
are capable of decrypting and recognizing the information transmitted
thereto. Ex. 1012, 26:7-10, 20-23. EP ’139 also discloses that the source
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coprocessor 20 can encrypt a right to execute a particular software program
and send it to the sink coprocessor 120. Ex. 1012, 26:32-35.
As discussed above, “repository” is construed as “a trusted system
which maintains physical, communications and behavioral integrity, and
supports usage rights.” “Physical integrity” is construed as “preventing
access to information by a non-trusted system.” “Communications
integrity” is construed as “only communicates with other devices that are
able to present proof that they are trusted systems, for example, by using
security measures such as encryption, exchange of digital certificates, and
nonces.” “Behavioral integrity” is construed as “requiring software to
include a digital certificate in order to be installed in the repository.” ZTE
relies on coprocessor 20 in combination with permanent memory 25 and
temporary memory 26 as constituting the claimed “repository.” Pet. 20, 25.
EP ’139 discloses that coprocessor 20 maintains physical integrity by
being “provided with physical security which is effective to prevent
mechanical tampering or access to the interior of the coprocessor 20 by a
user or a pirate.” Ex. 1012, 22:14-17. EP ’139 also discloses that
coprocessor 20 possesses communications integrity. In order to
communicate, proof is required that sink coprocessor 120 is a “member of
the family” by exchanging encrypted information via communication link
200. Ex. 1012, 26:5-23.

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Behavioral Integrity
ContentGuard argues that EP ’139 does not disclose the claimed
“repository” because its disclosed system does not exhibit “behavioral
integrity.” PO Resp. 7-15. The argument has three layers of complexity.
1.
The first relates to ContentGuard’s contention that “behavioral
integrity” of a repository is directed to, and concerns only, the operating
software of the repository, i.e., the software that enables the repository to
control the usage rights and distribution of digital works, and not the
software digital works managed by the repository themselves. In our claim
construction analysis, we already found that contention of ContentGuard
unpersuasive.
2.
The second relates to ContentGuard’s contention that “behavioral
integrity” of a repository does not necessarily require the presence and use
of a digital certificate to authenticate the software digital work being
installed in a repository. In our claim construction analysis, we also found
that contention of ContentGuard unpersuasive.
3.
The third is ContentGuard’s contention that software decryption key
AK in EP ’139, which is associated with the software digital work being sent
to coprocessor 20, is not a digital certificate. PO Resp. 14-15. According to
ZTE, software decryption key AK in EP ’139 amounts to a digital
certificate. Reply 2-3. Considering the evidence presented by both parties,
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we determine that ZTE has not made an adequate showing to establish, by a
preponderance of the evidence, that in the disclosed system of EP ’139, the
decryption key AK accompanying a software digital work constitutes a
digital certificate that authenticates the source of the software.
ZTE’s expert, Dr. Vijay K. Madisetti, testified that, in his opinion, the
fact that a source coprocessor must encrypt a right-to-execute and transmit
that encrypted right-to-execute to a sink coprocessor, as described in column
26, lines 32-35, of EP ’139 means the software in EP ’139 must include a
digital certificate to be installed in a repository. Ex. 1024 ¶ 9. Dr. Madisetti
explained that the right-to-execute is required in order for the protected
software to be decrypted, stored, and executed. Id. (citing Ex. 1012, 23:16-
21). On that basis, Dr. Madisetti concludes that “in EPO ’139, the AK
[decryption key] serves as a digital certificate under the Board’s construction
as the AK is required in order to install the software in the repository.” Id.
The reasoning of Dr. Madisetti is tenuous, as the issue is not whether,
in some respect, a decryption key under certain overall operating conditions,
can “serve as” or substitute for a digital certificate authenticating the source
of a software, but whether a decryption key itself “is” a digital certificate.
Dr. Madisetti’s testimony falls short of stating that decryption key AK
would be referred to, or identified by, one with ordinary skill in the art as a
digital certificate. As is evident from our discussion of the construction of
“behavioral integrity,” we are unpersuaded by ContentGuard’s contention
that a digital certificate is not required, and that anything which
accomplishes a similar objective in some way is satisfactory.
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ZTE does not account adequately for the fact that, even if decryption
of software with the decryption key AK is regarded as authentication of the
source of the software, the decryption key, itself, does not authenticate
anything. Rather, it has to be applied in a decryption step and it is that
process which determines an ascertainable result for further evaluation.
Thus, the decryption key is unlike a digital certificate which, by itself,
authenticates the source of the software.
Furthermore, it is inadequately explained why decryption indicates
authenticity of the software source. That assumes no one tampered with the
software while preserving the proper encryption, or that no one created a
false or unauthorized version having the proper encryption. The
assumptions are speculative in the context of providing security. ZTE
identifies in EP ’139 a description of several means for checking the
authenticity of the software after it has been decrypted. Reply 4-5. For
instance, a plain text message recovered on decryption can be checked to see
if it matches one actually expected. Ex. 1012, 8:21-39. Such disclosure is
evidence that decryption itself does not authenticate.
Insofar as “assurance” means a specifically expressed indication, we
credit the testimony of the expert witness of ContentGuard, Dr. Goodrich
that “a person of ordinary skill in the art [in 1994] would [have understood]
a digital certificate to be an assurance that downloaded software comes from
a reputable source, including a measure of tamper resistance.” Ex. 2013
¶ 39 (citing the definition of “digital certificate” from the MICROSOFT
COMPUTER DICTIONARY (4th ed. 1999)). An unexpressed and subjective
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thought, on the other hand, does not qualify. The decryption key AK, as
discussed above, does not meet the requirements of a “digital certificate.”
For all of the foregoing reasons, ZTE has not persuaded us that
decryption key AK of EP ’139 is a digital certificate.
An Authorization Object as Claimed
Claim 18 further recites the steps of “making a request for an
authorization object required [sic] to be included within the repository for
rendering of the digital content,” and “receiving the authorization object
when it is determined that the request should be granted.” For that
authorization object, ZTE relies on EP ’139’s disclosure of a right-to-
execute key, i.e., software decryption key AK, being installed based on the
verification of certain token data. Pet. 21-22, 25-26. As already discussed
above, ZTE regards coprocessor 20 as the claimed “repository.” EP ’139
states that “[i]n order for the user to execute a protected application, he must
install a right to execute the application in the permanent memory 25; this
right to execute is represented by a software decryption key AK.” Ex. 1012,
22:27-32.
It is not disputed by ContentGuard that in EP ’139, software
decryption key AK must be contained in the permanent memory of
coprocessor 20 for software to be decrypted and executed. Before accepting
the key into permanent memory 25, coprocessor 20 must verify that token
data received with the software matches unused tokens in hardware
cartridge 30. Ex. 1012, 23:3-8. The authentication is performed by
querying the contents of the cartridge. Ex. 1012, 22:46-48, 23:5-8, 20:52-
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56. Once the token data is verified, then the software decryption key is
stored in permanent memory 25 of coprocessor 20. Ex. 1012, 23:11-16.
Software decryption key AK is first received in the temporary
memory of coprocessor 20 and is not moved into the permanent memory of
coprocessor 20 unless certain token data which came with the software is
determined as valid. Ex. 1012, 23:1-16; Ex. 2013 ¶ 53. Thus, in EP ’139,
conditioned on a successful test of token data, decryption key AK is moved
into where it needs to be, the permanent memory of coprocessor 20, for the
software to be executed.
Citing the testimony of its expert witness, Dr. Goodrich (Ex. 2013
¶ 53), ContentGuard argues that, because ZTE regards coprocessor 20 as the
repository, and because temporary memory of coprocessor 20 is a part of the
coprocessor, software decryption key AK is already contained within
coprocessor 20 as the repository prior to determining whether token data is
valid. Thus, according to ContentGuard, the claimed step of “receiving” the
authorization object when it is determined that the request for the object
should be granted is not satisfied by EP ’139.
ZTE argues, on the other hand, that claim 18 does not require “first”
receiving the authorization object when it is determined that the request for
it should be granted, and, thus, it does not matter that decryption key AK is
already contained in coprocessor 20 when it is determined that token data is
verified. Reply 7. According to ZTE, because permanent memory 25 is a
part of coprocessor 20, moving software decryption key AK into permanent
memory 25 is “receiving” software decryption key AK in coprocessor 20.
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We are unpersuaded by ZTE’s argument, and agree with
ContentGuard. Although it is true that claim 18 does not require the
authorization object to be “first” received in the repository when it is
determined that a request for it should be granted, at least an instance of
receiving, as an affirmative act, is necessary. In other words, if not being
received for the first time, the authorization object must be received a
second, third, or fourth time, and so forth. For an object that already is
received, not receiving it another time does not meet the claimed “receiving”
step. We agree with ContentGuard that, where coprocessor 20 is the
repository and software decryption key AK is the authorization object,
moving the key from one part of coprocessor 20 to another part of
coprocessor 20 does not meet the requirement of “receiving” the
authorization object when it is determined that a request for the object
should be granted.
The specification of the ’576 patent does not indicate that the named
inventor acted as his own lexicographer by setting forth a special meaning
for the term “receiving.” ZTE does not contend that “receiving” means
something other than what it means in the ordinary and common use of the
English language, and does not point to any disclosure in the ’576 patent that
supports its position.
ZTE argues that EP ’139 describes that the coprocessor will “accept
the right to execute” after verifying that the hardware cartridge is authentic
and unused. Reply 7. But the relevant claim term is “receiving,” and
“accept.” There is insufficient evidence that the former encompasses the
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latter. In that regard, ZTE cites to the following testimony of its expert
witness, Dr. Vijay K. Madisetti: “A person of ordinary skill in the art would
reasonably find that the acceptance of the right to execute upon the token
test in EP 139 teaches the receiving step of claim 18 under the broadest
reasonable interpretation.” Ex. 1024 ¶ 15. We do not credit that testimony
because it is not accompanied by sufficient explanation. Dr. Madisetti does
not explain why there is no difference between “receiving” and “accept,”
particularly why acceptance by obtaining validation of an object already
physically taken into the target location still reasonably would be regarded
as “receiving.” We conclude that, even under the rule of broadest
reasonable interpretation, such a construction is unreasonable.
ZTE further notes that, if the authentication process is unsuccessful,
the software decryption key AK will be removed from temporary memory
26 of coprocessor 20. Reply 8. That argument is misplaced, however,
because it does not change the fact that if the authentication process is
successful, the key as an authorization object already is received in
coprocessor 20.
Finally, ZTE argues that, even if it is necessary that the authorization
object be “first” received in the repository when it is determined that a
request for the object should be granted, another aspect of the disclosure of
EP ’139 satisfies the claim feature at issue. Reply 8-9. In that regard, ZTE
relies on the communication between a source processor and a sink
processor for verifying that both are “members of the family.” EP ’139
discloses that “[a] transfer of a right to execute from one processor to
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another is considered safe when the two coprocessors involved are able to
identify one another as ‘members of the family’ and generate a one time
only Session Key for their use on that transaction.” Ex. 1012, 7:40-45.
“Once the Session Key has been generated, it is possible for the
coprocessors to transfer rights to execute by encrypting them under the
Session Key.” Id. at 9:3-6.
Thus, according to ZTE, even software encryption key AK as a “right
to execute” is not “first” received in the target sink coprocessor until after it
has been verified that both coprocessors belong to the same family. That
argument, however, was not presented in ZTE’s petition. It first was raised
in ZTE’s Reply. As such, it is inappropriate. ZTE’s raising such an
argument for the first time in its Reply deprives ContentGuard of an
opportunity to respond within the framework of this trial. The argument
reasonably cannot be deemed a proper rebuttal to ContentGuard’s Patent
Owner Response. Rather, it directs focus and attention in a new direction.
We decline to consider this new, belated argument in ZTE’s Reply.
For all of the reasons discussed above, ZTE has not shown that
EP ’139 discloses the “receiving” step of claim 18.
Claims 19-21, 25-28, and 31-36 each depend directly or indirectly
from claim 18 and, thus, each include the “receiving” step of claim 18. For
the same reasons discussed above in the context of claim 18, ZTE has not
shown that the “receiving” step of these claims is disclosed in EP ’139.

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III. CONCLUSION
Petitioner has not proved, by a preponderance of the evidence, that
any of claims 18-21, 25-28, and 31-36 of the ’576 patent are unpatentable
under 35 U.S.C. § 102(b) as anticipated by EP ’139.
IV. ORDER
It is
ORDERED that, on this record, claims 18-21, 25-28, and 31-36 of
U.S. Patent No. 7,269,576 have not been proved unpatentable; and
FURTHER ORDERED that any party seeking judicial review of this
decision must comply with the notice and service requirements of 37 C.F.R.
§ 90.2.

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For PETITIONER
Jon Beaupre
jbeaupre@brinkshofer.com

Miyoung Shin
mshin@brinkshofer.com

David Bluestone
dbluestone@brinkshofer.com

Rickard DeMille
rdemille@brinkshofer.com

Peter Lee
plee@brinkshofer.com

Lawrence Chen
lchen@brinkshofer.com

For PATENT OWNER
Robert Sterne
rsterne-PTAB@skgf.com

Jon Wright
Jwright-PTAB@skgf.com

Jason Eisenberg
jasone-PTAB@skgf.com