ZTE Corporationv.ContentGuard Holdings, Inc.

Patent Trial and Appeal Board

Jul 1, 2014

11304794 (P.T.A.B. Jul. 1, 2014)

Trials@uspto.gov Paper 61
571-272-7822 Entered: July 1, 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 IPR2013-00133
Patent 7,523,072 B2
____________

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

ZECHER, 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 11, 2013, ZTE Corporation and ZTE (USA) Inc.
(“ZTE”) filed a Petition requesting inter partes review of claims 1–25 (“the
challenged claims”) of U.S. Patent No. 7,523,072 B2 (“the ’072 patent”).
Paper 3. In response to a notice of defect(s) in the Petition, ZTE filed a
corrected Petition (“Pet.”) on February 15, 2013.
1
Paper 10. ContentGuard
Holdings Inc. (“ContentGuard”)
2
timely filed a Patent Owner Preliminary
Response. Paper 13. Taking into account ContentGuard’s Preliminary
Response, the Board determined that the information presented in the
Petition demonstrated that there was a reasonable likelihood that ZTE would
prevail in challenging claims 1–25 as unpatentable under 35 U.S.C.
§ 102(b). Pursuant to 35 U.S.C. § 314, the Board instituted this proceeding
on July 1, 2013, as to the challenged claims of the ’072 patent. Paper 15
(“Dec.”).
After institution of trial, ContentGuard timely filed a Patent Owner
Response (Paper 31, “PO Resp.”), and did not file a motion to amend. ZTE
subsequently filed a Reply. Paper 38 (“Pet. Reply”). A consolidated oral
hearing for IPR2013-00133, IPR2013-00137, IPR2013-00138, and
IPR2013-00139, each involving the same parties, was held on February 26
and 27, 2014. The transcript of the consolidated hearing has been entered
into the record. Papers 58–60.

1
The term “the Petition” in this final written decision refers to the corrected
petition unless indicated otherwise.
2
The mandatory notice filed pursuant to 37 C.F.R. § 42.8(b)(1) indicates
that ContentGuard Holdings, Inc. and Pendrell Corporation are the real
parties-in-interest. Paper 12, 2.
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We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a). Based on the record
before us, ZTE has not demonstrated by a preponderance of the evidence
that the challenged claims of the ’072 patent are unpatentable.
B. Related Proceedings
ZTE indicated that the ’072 patent was asserted against it in a patent
infringement lawsuit titled ContentGuard Holdings Inc. v. ZTE Corp., No.
1:12-cv-0206-CMH-TCB, filed in the United States District Court for the
Eastern District of Virginia on February 27, 2012. Pet. 1. According to
ZTE, this patent infringement lawsuit was transferred to the United States
District Court for the Southern District of California on May 21, 2012. Id.
ContentGuard does not dispute that it asserted the ’072 patent against ZTE.
ZTE also filed five other petitions seeking inter partes review of the
following patents owned by ContentGuard: 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); U.S. Patent No. 7,139,736 (IPR2013-
00138); and U.S. Patent No. 7,269,576 (IPR2013-00139). Id.
C. The Invention of the ’072 Patent
The invention disclosed in the ’072 patent generally relates to
distributing and enforcing usage rights for digital works. Ex. 1001, 1:27–28.
A digital work refers to any work that has been reduced to a digital
representation, including any audio, video, text, or multimedia work, and
any accompanying interpreter, e.g., software, which may be required to
recreate or render the content of the digital work. Ex. 1001, 6:3–7. Usage
rights refer to rights granted to a recipient of a digital work that define the
manner in which a digital work may be used and distributed. Ex. 1001,
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4:13–16; 6:9–12. According to the ’072 patent, objectives of the disclosed
invention include the following: (1) providing the owner of a digital work
the flexibility to distribute the digital work as desired; and (2) a distribution
system that transports a means for billing with the digital work. Ex. 1001,
3:15–17; 4:1–3.
The ’072 patent discloses permanently attaching usage rights to the
digital work. Ex. 1001, 6:16–17. Copies of the digital work also will have
the usage rights attached thereto. Ex. 1001, 6:17–18. Therefore, any usage
rights and associated fees assigned by the creator and subsequent distributor
of the digital work always will remain with the digital work. Ex. 1001,
6:18–21. The ’072 patent further discloses that repositories enforce the
usage rights of digital works. Ex. 1001, 4:26–27; 6:22–23. In particular,
repositories store digital works, control access to digital works, bill for
access to digital works, and maintain the security and integrity of the digital
works stored therein. Ex. 1001, 6:23–26.
Figure 1 of the ’072 patent, reproduced below, illustrates the basic
operations of the disclosed invention. Ex. 1001, 4:52–54; 6:38–40.
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At shown in step 101 of Figure 1 of the ’072 patent, a creator creates a
digital work. Ex. 1001, 6:40–41. 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. Ex. 1001, 6:41–43. At step 103, repository 1 receives a
request to access the digital work from repository 2. Ex. 1001, 6:46–48.
Such a request, or session initiation, includes steps that help ensure that
repository 1 and repository 2 are trustworthy. Ex. 1001, 6:48–51. 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. Ex. 1001, 6:51–55. At step 105, repository 1 checks the usage
rights associated with the digital work stored therein to determine if access
to the digital work may be granted. Ex. 1001, 6:56–58. At step 106, if
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access is denied, repository 1 terminates the session with repository 2 by
transmitting an error message. Ex. 1001, 6:62–63. At step 107, if access is
granted, repository 1 transmits the digital work to repository 2. Ex. 1001,
6:63–65. At step 108, both repository 1 and 2 generate billing information
prior to transmitting the billing information to a credit server. Ex. 1001,
6:65–7:1. The use of both repositories 1 and 2 for billing prevents attempts
to circumvent the billing process. Ex. 1001, 7:1–2.
Figure 2 of the ’072 patent, reproduced below, illustrates the various
types of repositories and the transaction flow between them. Ex. 1001,
4:55–57; 7:3–6.

As shown in Figure 2 of the ’072 patent, repository 201 represents a
general instance of a repository having the following two modes of
operation: (1) a server mode; and (2) a requester mode. Ex. 1001, 7:8–10.
When repository 201 is in server mode, it receives and processes access
requests for digital works. Ex. 1001, 7:11–12. When repository 201 is in
requester mode, it initiates requests to access digital works. Ex. 1001, 7:12–
14.
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During the course of operation, repository 201 may communicate with
a plurality of other repositories, including rendering repository 203.
Ex. 1001, 7:16–21. Communication with rendering repository 203 occurs in
connection with rendering a digital work. Ex. 1001, 7:31–32. According to
the ’072 patent, rendering repository 203 is coupled to a rendering device,
e.g., a printer device, to comprise a rendering system. Ex. 1001, 7:32–35.
D. Illustrative Claim
Claims 1, 10, and 18 are independent claims. Claims 2–9 depend
directly from independent claim 1, claims 11–17 depend directly or
indirectly from independent claim 10, and claims 19–25 depend directly or
indirectly from independent claim 18. Independent claim 1 is illustrative of
the disclosed invention and is reproduced below:
1. A method for securely rendering digital
documents, comprising:
retrieving, by a document platform, a digital document
and at least one usage right associated with the digital
document from a document repository, the at least one usage
right specifying a manner of use indicating the manner in which
the digital document can be rendered;
storing the digital document and the at least one usage
right in separate files in the document platform;
determining, by the document platform, whether the
digital document may be rendered based on the at least one
usage right; and
if the at least one usage right allows the digital document
to be rendered on the document platform, rendering the digital
document by the document platform.

Ex. 1001, 52:8–22 (emphasis added).

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E. Prior Art Relied Upon
ZTE relies upon the following prior art reference:
Comerford EP 0268139 A2 May 25, 1988 Ex. 1012
(hereinafter “EP ’139”)
F. Ground of Unpatentability
We instituted this proceeding based on just one ground of
unpatentability set forth in the table below.
Claims Basis Reference
1–25 § 102(b) EP ’139

II. ANALYSIS
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
our analysis with claim construction, and then follow with our analysis
regarding whether EP ’139 anticipates the challenged claims.
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable interpretation 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). Under the broadest reasonable interpretation standard, claim terms
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). However, if
an inventor acts as his or her own lexicographer, the definition must be set
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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. See 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
where its presence 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
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” (Claims 1, 10, and 18)
In its Petition, ZTE did not provide an explicit construction for the
claim term “repository.” In its Patent Owner Preliminary Response,
ContentGuard contended that “repository” should be construed as “a trusted
system for supporting usage rights.” Prelim. Resp. 18–19. ContentGuard
then cited to several portions of the specification of the ’072 patent that
allegedly support its proposed claim construction. Id. at 19–21 (citing to
Ex. 1001, 11:58–67; 12:63–64; 13:15–20; 51:33–37). When instituting trial,
we construed “repository” as “a trusted system which maintains physical,
communications and behavioral integrity, and supports usage rights.”
Dec. 10. For reasons discussed below, we adhere to the same interpretation
for this final written decision.
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The specification provides a glossary that explicitly sets forth a
definition for “repository.” For convenience, that glossary definition is
reproduced below:
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, 51:34–37 (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 also is
relevant to the definition of “repository” because it specifies that the
repository supports usage rights. Accordingly, we construe “repository” as
“a trusted system which maintains physical, communications and behavioral
integrity, and supports usage rights.”
However, 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 “Repositories.” Ex. 1001,
11:58–14:32. For “physical integrity,” the specification describes the
following:
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
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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.

Ex. 1001, 12:1–26 (emphases added).
The description reproduced above 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:
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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.

Ex. 1001, 12:27–39 (emphases added). We construe “communications
integrity” as “only communicates with other devices that are able to present
proof that they are trusted systems, e.g., 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 the following:
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
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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, 12:40–56 (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.”
We acknowledge that the record is not without evidence contrary to
our claim interpretation. The nature of claim interpretation, however, is to
come to the appropriate conclusion in light of all of the evidence. All of the
evidence does not have to point uniformly in a single direction.
Table 2 in the specification indicates ten different levels of security
for repositories. 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, 14:64–15:15. 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
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in the glossary. We make our determination based on the totality of the
evidence.
As noted above, the disclosed invention is about distribution and
usage rights enforcement of digital works. The problems described in the
background portion of the specification concern unauthorized and
unaccounted distribution or usage of electronically published materials. See
generally Ex. 1001, 1:32–3:17. The ’072 patent states that it solves
preexisting problems by both permanently attaching usage rights to digital
works and placing elements in repositories that enforce those usage rights.
Ex. 1001, 6:16–27.
Here, the definition set forth in the glossary for “repository” is
consistent fully with the description of the acknowledged prior art, and the
objective or goal to be achieved by the invention of the ’072 patent. The
specification also contains detailed preferred embodiments utilizing
repositories, which are trusted systems to provide usage control for digital
works. Ex. 1001, 7:3–41, 7:60–61, 13:7–14, 21–23, 14:8–20, 18:11–13,
26:40–29:20, 41:9–42:12.
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, 6:23–27 (emphasis added). Other references to “repository” in the
specification recite necessary features of repositories and also support the
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definition in the glossary that a repository is a trusted system. For example,
the specification states:
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
digital ticket and a generic authorization server for processing
authorization specifications.

Ex. 1001, 14:8–14 (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,
13:7–8, 14:18–20 (emphasis added). In yet another example, the
specification states “[p]rovisions for security and privacy are part of the
requirements for specifying and implementing repositories and thus form the
need for various transactions.” Ex. 1001, 26:35–38 (emphasis added).
Indeed, by using words such as “require” and “requirements,” these
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
interpretation 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.”
ContentGuard’s Contentions
According to ContentGuard, our claim interpretation of “repository”
is incorrect because it is too broad in one respect and too narrow in another.
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PO Resp. 14–17. For the reasons discussed below, however, the
specification of the ’072 patent does not support adequately either
contention. As a consequence, we are not persuaded by ContentGuard’s
contentions.
We first address ContentGuard’s contention that our construction is
too broad, and then its contention that our construction is too narrow.
1.
ContentGuard contends that our claim construction regarding
“behavioral integrity” as “requiring software to include a digital certificate
in order to be installed in the repository” is “excessively broad” and should
be limited to software that makes the repository operative—otherwise
known as “repository software.” Id. at 14. For convenience,
ContentGuard’s argument is reproduced below:
[The Board’s construction] is too broad because it is not
restricted to what the ’072 patent refers to as “repository
software”—that is software that makes the repository operative.
(See Ex. 1001, 12:46-48.) According to the ’072 patent
specification, “[b]ehavioral integrity refers to the integrity in
what repositories do.” (Ex. 1001, 12:40-41.) What repositories
do, in turn, “is determined by the software that they execute.”
(Id. at 12:41-42.)
But not all software relates “to the integrity in what
repositories do.” (Ex. 1001, 12:40-41[.]) Repositories, along
with usage rights, are used to manage the use and distribution
of digital content. (Ex. 1001, 51:65-67.) Allowing them to do
so, repositories can perform several functions to implement the
transmission of content and usage rights. (E.g., Ex. 1001,
13:29-34.) But content itself does not necessarily supply that
function to a repository. (Ex. 2013, [Declaration of Dr.
Michael T. Goodrich] ¶ 48.) Rather, repository software
implements the repository functions that are used to manage the
use and distribution of the content. (Ex. 1001, 4:26-27; 6:38-
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7:2; 11:58-67; 13:15-41; 51:34-38.) 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. 14–15.
With respect to what repositories do, ContentGuard overlooks and
fails to discuss the portions of the specification which indicate that
repositories, themselves, also can be rendering devices that run and execute
the software- type digital works, the usage rights of which they control. For
instance, the ’072 patent states the following with regard to software capable
of being run 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, 41:64–67 (emphases 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 disclosure quoted
above 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 as
application software—not as operating software. As such, the specification
conveys information contrary to ContentGuard’s contention. ContentGuard
does not explain the disclosure identified above, nor does it point to any
testimony of its expert witness that addresses such disclosure in light of its
“excessively broad” contention.
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Because a repository, itself, may run and execute software, the usage
and distribution of which is managed by the repository, we are not persuaded
that the reference to “repository software” in the portion of the specification
discussing “behavioral integrity” (Ex. 1001, 12:40–56) 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
not control usage rights, the specification discusses extracting a copy of the
digital certificate for that software (Ex. 1001, 42:9–12), 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, 12:46-48).
Moreover, some repositories are rendering repositories. Ex. 1001, 41:64–67.
“Repository software,” as used in the specification, is broad enough to cover
application software, such as the “player” referenced in the specification
(Ex. 1001, 41:64–67), as well as what ContentGuard refers to as “operating
software,” which enables the repository to regulate usage rights.
We do not credit the testimony of ContentGuard’s expert, Dr. Michael
T. Goodrich, in paragraph 48 of his Declaration (Ex. 2013). In that
paragraph, Dr. Goodrich attests that, in his opinion, a person of ordinary
skill in the art in 1994 would have understood that the term “repository
software” in the ’072 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. Dr. Goodrich’s testimony is unpersuasive
because it does not account for the disclosure of the specification, discussed
above, which conveys that some repositories are rendering depositories that
run and execute the software digital works the rights of which they control,
such as a new version of a “player.”
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2.
ContentGuard contends that our claim 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 requires the inclusion of a “digital certificate” to maintain
behavioral integrity. PO Resp. 15–16. 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 15.
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.
For convenience, ContentGuard’s argument is reproduced below:
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 ’072 patent says that
“[t]he integrity of the software is generally assured only by
knowledge of its source.” (Ex. 1001, 12:42[-]43.) 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., 12:46-48.) “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.,
12:48-52 (emphasis added).) So, as long as there is some
assurance that “the software does what it is supposed to do,”
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whether by source certification or otherwise, behavioral
integrity can be maintained.

PO Resp. 15 (emphasis in original).
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
interpretation standard applies for claim interpretation, the construction must
be reasonable in light of the specification. In that connection, the
specification states that “[b]ehavioral 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, 12:46–48 (emphasis
added).
Second, ContentGuard does not point to any other means described in
the specification for maintaining 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.

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Third, the general assertion 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 we
accepted ContentGuard’s proposed claim construction, the scope of the
claims would be uncertain and indeterminable.
We do not credit the testimony of ContentGuard’s expert, Dr.
Goodrich, that “a person of ordinary skill in the art of 1994 would [have
understood] that the ’072 patent specification refers to the use of digital
certificates as only an exemplary method of preserving the behavioral
integrity of a repository.” Ex. 2013 ¶ 46. This testimony is unexplained and
conclusory—it does not account for the various factors we have considered
and discussed above.
B. Anticipation by EP ’139—Claims 1–25
ZTE contends that claims 1–25 are anticipated under § 102(b) by
EP ’139. Pet. 11–27. In support of that alleged ground of unpatentability,
ZTE provides explanations as to how EP ’139 describes each claim
limitation. Id. ZTE also submits the Declaration of Dr. Vijay K. Madisetti
(Ex. 1005 ¶¶ 85–96) to support its positions. Upon reviewing ZTE’s
Petition and supporting evidence, as well as ContentGuard’s Patent Owner
Response and supporting evidence, we determine that ZTE has not
demonstrated by a preponderance of the evidence that claims 1–25 are
anticipated by EP ’139.
We begin our analysis with the principles of law that generally apply
to a ground of unpatentability based on anticipation, followed by a brief
discussion of EP ’139, and then we turn to the arguments presented by both
ZTE and ContentGuard that are directed to whether EP ’139 describes a
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“document repository” that maintains “behavioral integrity,” as required by
independent claims 1, 10, and 18.
1. Principles of Law
To establish anticipation under § 102(b), “all of the elements and
limitations of the claim must be shown in a single prior reference, arranged
as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
1383 (Fed. Cir. 2001). “A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co.
of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We analyze the ground of
unpatentability based on anticipation by EP ’139 with the principles stated
above in mind.
2. EP ’139
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, reproduced below, describes the important components of the
software protection mechanism and how they interact. Ex. 1012, 21:29–31.
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According to the embodiment shown in 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 the following three
files: (1) the protected software application including an encrypted portion;
(2) software decryption key AK, encrypted by a different decryption key
CSK provided 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
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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 AK in permanent memory 25. Ex. 1012, 23:11–16. With
access to the software decryption key AK, 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 communicates 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 source
coprocessor 20 can encrypt a right to execute a particular software program
and send it to sink coprocessor 120. Ex. 1012, 26:32–35.
3. “Document Repository” (Claims 1, 10, and 18)
Independent claims 1, 10, and 18 each require a “document
repository.” Ex. 1001, 52:10–14, 51–54; 53:29–32. As discussed above, a
“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
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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 takes the position that EP ’139’s source
computing system 10, 20, constitutes the claimed “document repository.”
Pet. 13–14, 18. In our analysis below, we determine whether EP ’139’s
source computing system 10, 20 constitutes the claimed “document
repository” that maintains “behavioral integrity.”
a. Behavioral Integrity
ContentGuard contends that EP ’139’s source computing system 10,
20 does not amount to the claimed “document repository” because it does
not exhibit “behavioral integrity.” PO Resp. 17–22. That contention 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, itself. PO Resp. 17–18.
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 require the presence and use of a digital
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certificate to authenticate the software digital work being installed in a
repository. PO Resp. 19–21. Instead, ContentGuard argues that “behavioral
integrity” of a repository merely requires checking that the software loaded
onto the repository is authentic or unaltered prior to rendering the software.
Id. at 20–21. In our claim construction analysis, we also found that
contention of ContentGuard unpersuasive.
3.
The third relates to ContentGuard’s contention that software
decryption key AK disclosed in EP ’139, which is associated with the
software digital work being sent to source coprocessor 20, is not a digital
certificate. PO Resp. 21–22. In its Reply, ZTE does not identify specifically
an element or feature disclosed in EP ’139 that constitutes a digital
certificate. See generally Pet. Reply 4–6. However, according to ZTE’s
expert, Dr. Madisetti, the software decryption key AK disclosed in EP ’139
constitutes a digital certificate. Ex. 1024 ¶¶ 14, 15. Taking into account the
evidence presented by both parties, we determine that ZTE has not
demonstrated 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 for the software that authenticates the
source of the software.
Dr. Madisetti testified that, in his opinion, the source coprocessor 20
encrypting a right-to-execute and transmitting that encrypted right-to-
execute to sink coprocessor 120, as described in column 26, lines 32–35 of
EP ’139, indicates that the software in EP ’139 must include a digital
certificate to be installed in a repository. Ex. 1024 ¶ 14. Dr. Madisetti
explained that the right-to-execute is required in order for the protected
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software to be decrypted, stored, and executed. Id. (citing Ex. 1012, 23:16–
21). On that basis, Dr. Madisetti concludes that “in EP [’]139, the
[decryption key] AK 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 operating conditions, may
“serve as” or substitute for a digital certificate authenticating the source of
the software, but whether a decryption key, itself, “is” a digital certificate.
Dr. Madisetti’s testimony falls short of stating that EP ’139’s decryption key
AK would be referred to or identified by one with ordinary skill in the art as
a digital certificate. In our discussion of the construction of “behavioral
integrity,” we were not persuaded by ContentGuard’s contention that a
digital certificate is not required, and that anything which accomplishes a
similar objective in substantially the same way is satisfactory.
ZTE does not account adequately for the fact that, even if decryption
of software with EP ’139’s decryption key AK is regarded as authentication
of the source of the software, the decryption key AK, itself, does not
authenticate anything. Rather, it has to be applied in a decryption step—it is
that process which determines an ascertainable result for further evaluation.
Thus, EP ’139’s decryption key AK is unlike a digital certificate which, by
itself, authenticates the source of the software.
Moreover, ZTE does not explain adequately why decryption indicates
authenticity of the software source. ZTE’s contention assumes that 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.
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Those 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. Pet. Reply 6. For
instance, EP ’139 discloses that a message authentication code may be used
to ensure that a plain text message recovered on decryption can be checked
to see if it matches one actually expected. Ex. 1012, 8:21–39. Indeed, such
disclosure is evidence that decryption, by itself, does not authenticate the
source of the software, which is contrary to ZTE’s position.
Insofar as “assurance” means a specifically expressed indication, we
credit the testimony of ContentGuard’s expert, Dr. Goodrich, that “one 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 ¶ 46
(citing the definition of “digital certificate” from the MICROSOFT
COMPUTER DICTIONARY (4th ed. 1999)). An unexpressed and subjective
thought, on the other hand, does not qualify. As discussed above, EP’139’s
decryption key AK does not meet the requirements of that definition of
“digital certificate.”
In summary, EP ’139’s source computing system 10, 20 does not
constitute a “document repository” that maintains “behavioral integrity,” as
required by independent claims 1, 10, and 18, because ZTE has not
persuaded us that the decryption key AK disclosed in EP ’139 constitutes a
digital certificate. For the foregoing reasons, we conclude that ZTE has not
demonstrated by a preponderance of the evidence that independent claims 1,
10, and 18 are anticipated by EP ’139.

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4. Claims 2–9, 11–17, and 19–25
As we indicated previously, claims 2–9, 11–17, and 19–25 depend
directly or indirectly from independent claims 1, 10, and 18, respectively.
Therefore, each of claims 2–9, 11–17, and 19–25 incorporate by reference
the same limitations as their underlying base claim. For the same reasons
discussed above with respect to independent claims 1, 10, and 18, we
conclude that ZTE has not demonstrated by a preponderance of the evidence
that dependent claims 2–9, 11–17, and 19–25 are anticipated by EP ’139.

III. CONCLUSION
ZTE has not demonstrated by a preponderance of the evidence that the
challenged claims of the ’072 patent are anticipated under 35 U.S.C.
§ 102(b) by EP ’139.

IV. ORDER
In consideration of the foregoing, it is:
ORDERED that ZTE has not demonstrated by a preponderance of
evidence that claims 1–25 of the ’072 patent are unpatentable; and
FURTHER ORDERED that, because this is a final written decision,
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.

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For PETITIONER:
Jon Beaupre
Rickard DeMille
David Bluestone
Miyoung Shin
Peter Lee
Lawrence Chen
BRINKS HOFER GILSON & LIONE
jbeaupre@brinkshofer.com
rdemille@brinkshofer.com
dbluestone@brinkshofer.com
mshin@brinkshofer.com
plee@brinkshofer.com
lchen@brinkshofer.com

For PATENT OWNER:
Robert Sterne
Jon Wright
Jason Eisenberg
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
rsterne-PTAB@skgf.com
jwright-PTAB@skgf.com
jasone-PTAB@skgf.com