throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 8
`Entered: September 9, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`WILLIAM GRECIA,
`Patent Owner.
`____________
`
`Case IPR2016-00789
`Patent 8,402,555 B2
`____________
`
`
`
`Before GLENN J. PERRY, RAMA G. ELLURU, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`

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`IPR2016-00789
`Patent 8,402,555 B2
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`
`Unified Patents Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1–26 of U.S. Patent No. 8,402,555
`B2 (Ex. 1001, “the ’555 patent”). William Grecia (“Patent Owner”) filed a
`Preliminary Response (Paper 5, “Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314(a), which provides that an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” For the reasons that follow, we deny institution of an inter
`partes review.
`
`
`I. BACKGROUND
`A. The ’555 Patent
`The ’555 patent is titled “Personalized Digital Media Access System
`(PDMAS).” Ex. 1001, at [54]. The ’555 patent describes a digital rights
`management system that manages access rights across a plurality of devices
`via digital media personalization to protect digital media subject to illegal
`copying. Id. at 1:19–26; 4:47–48.
`The system includes a first receipt module, an authentication module,
`a connection module, a request module, a second receipt module, and a
`branding module. See id. at Fig. 1. The first receipt module receives a
`branding request from a user’s (content acquirer’s) device. Id. at 5:45–47.
`The branding request is a read and write request of metadata of the digital
`media and includes a membership verification token corresponding to the
`digital media. Id. at 5:47–50. The authentication module authenticates the
`membership verification token. Id. at 5:56–57. The connection module
`establishes communication with the user’s device. Id. at 5:58–60. The
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`request module requests an electronic identification reference from the
`user’s device. Id. at 6:4–6. The second receipt module receives the
`electronic identification reference. Id. at 6:6–8. The branding module
`brands metadata of the digital media by writing the membership verification
`token and the electronic identification into the metadata. Id. at 6:8–11.
`Figure 3, which is reproduced below, illustrates this process.
`
`
`In particular, Figure 3 is a flow chart of the process of digital media
`personalization. Id. at 4:23–25. A user posts a branding request via
`Kodekey GUI 301, which prompts the user to enter a token and press the
`redeem button. Id. at 6:65–67, 7:1–3. Product metadata 302 is associated
`with the digital media to be acquired. Id. at 7:3–4. The Kodekey GUI is
`connected to token database 305. Id. at 7:6–7. The user is then redirected to
`APIwebsite.com GUI 307, which prompts the user to enter a login id and
`password to access the digital media from database 309. Id. at 7:10–11, 14–
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`17. The APIwebsite.com GUI interfaces to a web service membership,
`where the user’s electronic identification is collected and sent back to the
`Kodekey GUI. Id. at 7:10–14. The database containing the digital media is
`connected to the web service membership. Id. at 7:17–19.
`
`
`B. Illustrative Claim
`Petitioner challenges claims 1–26 of the ’555 patent. Claims 1, 12,
`and 15 are independent. Claim 1 is illustrative of the claims under
`challenge:
`1. A method for monitoring access to an encrypted digital
`media, the method facilitating interoperability between a
`plurality of data processing devices, the method comprising:
`receiving an encrypted digital media access branding request
`from at least one communications console of the plurality of
`data processing devices, the branding request being a read or
`write request of metadata of the encrypted digital media, the
`request comprising a membership verification token provided
`by a first user, corresponding to the encrypted digital media;
`authenticating
`the membership verification
`token,
`the
`authentication being performed in connection with a token
`database;
`establishing a connection with the at least one communications
`console wherein
`the communications console
`is a
`combination of a graphic user interface (GUI) and an
`Application Programmable Interface (API) protocol, wherein
`the API is related to a verified web service, the verified web
`service capable of facilitating a two way data exchange to
`complete a verification process;
`requesting at least one electronic identification reference from
`the at least one communications console wherein the
`electronic identification reference comprises a verified web
`service account identifier of the first user;
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`receiving the at least one electronic identification reference from
`the at least one communications console; and
`branding metadata of the encrypted digital media by writing the
`membership verification
`token
`and
`the
`electronic
`identification reference into the metadata.
`
`
`Basis
`§ 102
`§ 103
`
`Claims Challenged
`1–6, 8–22, 24, and 25
`1–10, 12–15, and 17–24
`
`C. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–26 of the ’555 patent on the following
`grounds.1 Pet. 4, 14–59.
`Reference(s)
`DeMello2
`DeMello, Wieder,3 and
`“the admitted prior art”
`Pestoni4
`Pestoni, Wieder, and
`“the admitted prior art”
`DeMello, Wieder, Wiser,5 and
`“the admitted prior art”
`
`§ 102
`§ 103
`
`§ 103
`
`1–10, 12–15, and 17–24
`1–10, 12–15, and 17–24
`
`11, 16, 25, and 26
`
`
`1 In summarizing its asserted grounds on page 4 of the Petition, Petitioner
`requests cancellation of claims 1–26 as unpatentable under 35 U.S.C § 103
`based on “[t]wo main references,” but states on page 14 of the Petition that
`the same references “anticipate and/or render obvious the claimed subject
`matter.” Given the substance of Petitioner’s arguments, we address claims
`1–25 under 35 U.S.C. §§ 102 and 103. We address claim 26 under only
`35 U.S.C. § 103 because Petitioner does not present an anticipation
`argument for this claim.
`2 DeMello, U.S. Patent No. 6,891,953 B1, issued May 10, 2005 (Ex. 1005).
`3 Wieder, U.S. Patent No. 8,001,612 B1, issued Aug. 16, 2011 (Ex. 1007).
`4 Pestoni, U.S. Publ’n No. 2008/0313264 A1, published Dec. 18, 2008
`(Ex. 1006).
`5 Wiser, U.S. Patent No. 6,385,596 B1, issued May 7, 2002 (Ex. 1008).
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`Reference(s)
`Pestoni, Wieder, Wiser, and
`“the admitted prior art”
`In support of its arguments, Petitioner proffers the declaration of Ravi S.
`Cherukuri (Ex. 1009). See id.
`
`
`Claims Challenged
`11, 16, 25, and 26
`
`Basis
`§ 103
`
`D. Claim Construction
`We construe claims in an unexpired patent by applying the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Under this 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 entire disclosure. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A “claim term
`will not receive its ordinary meaning if the patentee acted as his own
`lexicographer,” however, and clearly set forth a definition of the claim term
`in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`1366 (Fed. Cir. 2002).
`Petitioner provides proposed interpretations for various limitations of
`the claims. See Pet. 12–14. Patent Owner does not respond. For purposes
`of this Decision, we find it necessary to construe the following claim phrase,
`which appears in all challenged independent claims 1, 12, and 15: “the
`request comprising a membership verification token provided by a first user,
`corresponding to the encrypted digital media.”
`With respect to this claim phrase, Petitioner argues that the language
`“corresponding to the encrypted digital media” modifies the request, not the
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`membership verification token, because “the membership verification token
`is not related to the media until the branding is completed.” Pet. 18. We are
`unpersuaded by this argument. Claims 1, 12, and 15 recite additionally that
`the request is “an encrypted digital media access branding request,” where
`the language “digital media” modifies the request. Adopting Petitioner’s
`construction would render the language “digital media” in this instance
`redundant and superfluous. See Digital-Vending Servs. Int’l, LLC v. Univ. of
`Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (claim terms are to be
`construed “such that words in a claim are not rendered superfluous”).
`Moreover, the ’555 patent specification consistently describes a
`membership verification token as corresponding to digital media. Ex. 1001,
`5:47–50 (“The branding request is a read and write request of metadata of
`the encrypted digital media and includes a membership verification token
`corresponding to the encrypted digital media.”), 6:37–39 (“According to an
`embodiment of the present invention, the membership verification token is a
`kodekey. The kodekey is a unique serial number assigned to the encrypted
`digital media.”).
`Based on the record at this stage of the proceeding, we construe the
`claim phrase “the request comprising a membership verification token
`provided by a first user, corresponding to the encrypted digital media” such
`that the language “corresponding to the encrypted digital media” modifies
`the membership verification token.
`
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`
`II. DISCUSSION
`A. Anticipation by DeMello
`Petitioner argues that DeMello anticipates claims 1–6, 8–22, 24, and
`25 of the ’555 patent. See Pet. 14–28, 37–40, 42–56. For the reasons
`explained below, we are not persuaded that Petitioner has demonstrated a
`reasonable likelihood of prevailing on its asserted ground.
`
`
`1. DeMello
`DeMello describes a digital rights management system that distributes
`and protects rights in content, such as electronic books (eBooks). Ex. 1006,
`at [57], 4:43–45. As shown in Figure 4, which is reproduced below, the
`system includes a retail site, a fulfillment site, and an activation site.
`
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`Figure 4 is a block diagram of one embodiment of DeMello’s digital rights
`management system. Id. at 4:19–21. The retail site sells eBooks to
`consumers, the fulfillment site provides the sold eBooks to the consumers,
`and the activation site enables consumer reading devices to use eBooks with
`enhanced levels of copy protection (e.g., eBooks requiring licenses). Id. at
`[57], 6:10–16, 21:36–37.
`In order to access an eBook, a consumer begins by choosing a title
`from the retail site and paying for the title. Id. at 26:1–4. The retail site then
`issues a receipt page with a link for downloading the title. Id. at 26:4–7.
`When the consumer clicks on the link, a download server at the fulfillment
`site adds the consumer’s name to the title metadata. Id. at 26:15–23, Fig. 4.
`The title is then downloaded to the consumer’s device, and the eBook is
`opened to its cover page with the rightful owner’s name appearing under the
`author’s name. Id. at 26:35–36, 27:45–46.
`
`
`2. Analysis
`Independent claims 1, 12, and 15 recite a “request comprising a
`membership verification token provided by a first user, corresponding to the
`encrypted digital media.” For this limitation, Petitioner identifies the
`communication between a bookstore server 72 and a user as a “request.”
`Pet. 18–19. Petitioner further argues that “DeMello teaches ‘user
`authentication’ and establishing a membership relationship with a retailer
`(left of Figure 4), which inherently would include providing a token, such as
`a retailer password and/or email (e.g., Amazon log-on credentials).” Pet. 18;
`see also id. at 16 (“authentication credentials (e.g., Amazon.com log-on
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`credentials), which is a verification token”); id. at 19 (“establish their
`membership relationship with the retailer [verification token]”).
`We are unpersuaded by this argument. Consistent with our claim
`construction above, Patent Owner points out that the claims require a
`membership verification token that corresponds to digital media. Prelim.
`Resp. 22. Petitioner does not provide persuasive explanation as to how a
`retailer password or e-mail corresponds to digital media. Based on the
`record presented, we are not persuaded that DeMello discloses the recited
`membership verification token.
`Petitioner further argues that the following items in DeMello also
`satisfy the recited membership verification token: “the username and other
`credentials,” the purchaser credit card, the purchaser name, and the
`PASSPORT ID. Pet. 19, 28. Again, Petitioner does not provide persuasive
`explanation as to how any of these items corresponds to digital media.
`Based on the record presented, we are unpersuaded by Petitioner’s
`argument.
`In view of the foregoing, we determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing in showing that DeMello
`anticipates independent claims 1, 12, and 15. See also Pet. 48 (referring to
`analysis of claim 1 for claim 12), 49 (referring to analysis of claim 1 for
`claim 15). Claims 2–6, 8–11, 13, 14, 16–22, 24, and 25 depend from claims
`1, 12, or 15. Accordingly, we also determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing in showing that DeMello
`anticipates these dependent claims.
`
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`B. Obviousness over DeMello, Wieder, and the Admitted Prior Art
`Petitioner argues that claims 1–10, 12–15, and 17–24 of the ’555
`patent would have been obvious over DeMello, Wieder, and “the admitted
`prior art.” See Pet. 14–52. For the reasons explained below, we are not
`persuaded that Petitioner has demonstrated a reasonable likelihood of
`prevailing on its asserted ground.
`Independent claims 1, 12, and 15 recite “authenticating the
`membership verification token, the authentication being performed in
`connection with a token database.” For this limitation, Petitioner appears to
`rely on either DeMello or the admitted prior art for teaching authentication
`of a membership verification token, while relying on Wieder for teaching the
`token database. Id. at 19. In particular, Petitioner identifies Wieder’s usage-
`rights repository as a “token database.” Id. Petitioner also seems to rely
`additionally on Wieder for teaching the membership verification token,
`identifying Wieder’s Purchase-Record as a “verification token.” Id. at 20.
`It is not sufficient, however, for Petitioner to demonstrate that each of
`the claim elements is known. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 418 (2007). Petitioner must also provide “some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
`In that regard, Petitioner does not appear to proffer a sufficient reason
`for combining either DeMello or Wieder and the admitted prior art.
`As to combining DeMello and Wieder, however, Petitioner argues
`that “[b]ecause Wieder and DeMello both relate to Digital Rights
`Management, and both relate to supporting multiple users or user devices, it
`would be obvious to combine Wieder with DeMello to implement a database
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`of user personas associated with multiple user readers.” Pet. 20. Petitioner
`relies on the testimony of Mr. Cherukuri to support this argument. Id.
`(citing Ex. 1009 ¶¶ 75–85).
`Neither Petitioner nor Mr. Cherukuri explains sufficiently why one of
`ordinary skill in the art would have considered combining DeMello and
`Weider to arrive at the claimed invention. The mere fact that both DeMello
`and Weider are in the same field of endeavor falls short of an adequate
`rationale. The same field of endeavor analysis is merely the jumping-off
`point in reaching the determination of whether a claimed invention is
`obvious. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir.
`2012) (to qualify as prior art in an obviousness analysis, references must be
`analogous art—either from the same field of endeavor, or reasonably
`pertinent to the problem with which the inventor is involved).
`Moreover, as discussed above, the only items that Petitioner identifies
`as satisfying the recited membership verification token are: DeMello’s
`retailer password or e-mail, “username and other credentials,” purchaser
`credit card, purchaser name, and PASSPORT ID, as well as Weider’s
`Purchase-Record. Neither Petitioner nor Mr. Cherukuri explains
`persuasively how “implement[ing] a database of user personas” provides
`DeMello’s system with a “token database.”
`Petitioner further argues that “DeMello specifically refers to “credit
`card validation” and “requiring the users to authenticate themselves,” thus
`referencing the many standard ways of doing this, of which Wieder is just
`one example.” Id. at 20. We are unpersuaded by this argument. Wieder’s
`usage-rights repository is “a user’s collection of compositions, represented
`by the set of usage-rights tokens a user acquires.” Ex. 1007, 8:38–41; see
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`also id. at 14:13–16 (“To eliminate user concerns about the loss of their
`tokens (representing their collection), a user’s complete collection of tokens
`may be recovered by accessing the usage-rights repository token database.”).
`Neither Petitioner nor Mr. Cherukuri provides persuasive explanation as to
`why one of ordinary skill in the art would have considered modifying
`DeMello’s system to include Wieder’s usage-rights repository for
`authenticating a membership verification token, when Wieder’s usage-rights
`repository appears to be simply a collection of compositions.
`Finally, Petitioner argues adding various items of DeMello, including
`the PASSPORT ID, the username, and other credentials, to Wieder’s usage-
`rights repository. Pet. 20. Again, neither Petitioner nor Mr. Cherukuri
`provides persuasive explanation as to why one of ordinary skill in the art
`would have considered adding these items of DeMello to Wieder’s usage-
`rights repository for authenticating a membership verification token.
`On this record, we are not persuaded that Petitioner has provided
`adequately articulated reasoning with some rational underpinning to support
`the legal conclusion of obviousness. See Kahn, 441 F.3d at 988.
`Accordingly, we determine that Petitioner has not demonstrated a reasonable
`likelihood of prevailing in showing that claims 1, 12, and 15 would have
`been obvious over DeMello, Wieder, and the admitted prior art. See also
`Pet. 48 (referring to analysis of claim 1 for claim 12), 49 (referring to
`analysis of claim 1 for claim 15). Claims 2–6, 8–11, 13, 14, 16–22, 24, and
`25 depend from claims 1, 12, or 15. We therefore also determine that
`Petitioner has not demonstrated a reasonable likelihood of prevailing in
`showing that these dependent claims would have been obvious over
`DeMello, Wieder, and the admitted prior art.
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`
`C. Anticipation by Pestoni
`Petitioner argues that Pestoni anticipates claims 1–10, 12–15, and 17–
`24 of the ’555 patent. See Pet. 14, 28–52. For the reasons explained below,
`we are not persuaded that Petitioner has demonstrated a reasonable
`likelihood of prevailing on its asserted ground.
`
`
`1. Pestoni
`Pestoni describes a system with domain management for digital
`media. Ex. 1007, at [57]. As shown in Figure 1, which is reproduced below,
`the system includes a domain administrator, a content provider, and a license
`server.
`
`
`Figure 1 illustrates one embodiment of a system that employs domain
`management for digital media. Id. ¶ 6. Media playback device 112 or 114
`may obtain content from content provider 104 by submitting a content
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`request to the content provider. Id. ¶ 67. In order to access and play back
`the content, the device must have a domain membership license from
`domain administrator 102 and a content license from license server 106. Id.
`¶ 17.
`
`To obtain a domain membership license, the device submits a join-
`domain request to the domain administrator. Id. ¶ 38. The request includes
`parameters to identify the device, such as a device certificate, user
`credentials, and a device description. Id. ¶ 39. If the domain administrator
`approves the request, the device becomes a member of the domain and
`receives a domain membership license. Id. ¶¶ 38, 44.
`To obtain a content license, the device submits a content license
`request to the license server. Id. ¶¶ 69, 72. The request includes parameters,
`such as a key ID, a domain ID, and a domain certificate, to identify both the
`content for which the license is being requested and the domain of which the
`device is a member. Id. ¶ 72. In response to the request, the license server
`validates the domain certificate, and, if successful, approves the request. Id.
`¶¶ 75, 79. Once the request is approved, the license server generates a
`content license, binds the license to the domain identified in the request, and
`provides the device with the license. Id. ¶¶ 79–80, 82, 84.
`
`
`2. Analysis
`We note that Petitioner argues that the asserted references “anticipate
`and/or render obvious the claimed subject matter, and are corroborated by
`the opinion in the Cherukuri Declaration.” Pet. 14. Petitioner does not set
`forth its entire anticipation analysis in the Petition, however, relying instead
`on Mr. Cherukuri’s declaration testimony to set forth portions of the
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`analysis. For example, claim 1 recites a “GUI” and an “API.” Without
`addressing in the Petition whether Pestoni discloses these claim elements
`(see id. at 32–34), Petitioner directs us to Mr. Cherukuri’s declaration
`testimony regarding claim 1 generally. Id. at 29 (citing Ex. 1009, Exhibit
`D). That testimony includes a statement that “Pestoni anticipates this claim”
`as well as Mr. Cherukuri’s anticipation analysis of claim 1. Ex. 1010,
`Exhibit D. Such reliance on Mr. Cherukuri’s declaration testimony is an
`improper incorporation by reference of arguments asserted in a declaration,
`which we will not consider here. See 37 C.F.R. § 42.6(a)(3) (“Arguments
`must not be incorporated by reference from one document into another
`document.”). Petitioner’s asserted ground fails for this reason.
`Based on the record presented, we determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing in showing that Pestoni
`anticipates independent claims 1, 12, and 15. See also Pet. 48 (referring to
`analysis of claim 1 for claim 12), 50 (referring to analysis of claim 1 for
`claim 15). Claims 2–10, 13, 14, and 17–24 depend from claims 1, 12, or 15.
`Accordingly, we also determine that Petitioner has not demonstrated a
`reasonable likelihood of prevailing in showing that Pestoni anticipates these
`dependent claims.
`
`D. Obviousness over Pestoni, Wieder, and the Admitted Prior Art
`Petitioner argues that claims 1–10, 12–15, and 17–24 of the ’555
`patent would have been obvious over Pestoni, Wieder, and “the admitted
`prior art.” See Pet. 14, 28–52. For the reasons explained below, we are not
`persuaded that Petitioner has demonstrated a reasonable likelihood of
`prevailing on its asserted ground.
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`As discussed above, claims 1, 12, and 15 recite “authenticating the
`membership verification token, the authentication being performed in
`connection with a token database.” For this limitation, Petitioner appears to
`rely on either Pestoni or the admitted prior art for teaching authentication of
`a membership verification token, while relying on Wieder for teaching the
`token database. Id. at 31–32. Petitioner particularly identifies Wieder’s
`usage-rights repository as a “token database” and also Wieder’s Purchase-
`Record as a “verification token.” See id.
`As noted above, Petitioner must provide “some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness” in addition to demonstrating that each of the claim elements is
`known. See Kahn, 441 F.3d at 988; KSR, 550 U.S. at 418.
`In that regard, Petitioner does not appear to proffer any reason for
`combining either Pestoni or Wieder and the admitted prior art, stating only
`that “Pestoni does a similar authentication, as in the admitted prior art, and
`thus it is the part of Pestoni is admitted to be obvious.” Pet. 31. Petitioner
`does not explain sufficiently why one of ordinary skill in the art would have
`considered combining Pestoni or Wieder and any other patent or printed
`publication to arrive at the claimed invention.
`As to combining Pestoni and Wieder, Petitioner argues that “[b]ecause
`Wieder and Pestoni both relate to Digital Rights Management, and both
`relate to supporting multiple users or user devices, it would be obvious to
`combine Wieder with Pestoni to implement a database of user domains
`associated with multiple user readers.” Id. at 31–32. Petitioner does not,
`however, explain sufficiently why one of ordinary skill in the art would have
`considered combining Pestoni and Weider to arrive at the claimed invention.
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`As explained above, the mere fact that both Pestoni and Weider are in the
`same field of endeavor falls short of an adequate rationale, as the same field
`of endeavor analysis is merely the jumping-off point in reaching the
`determination of whether a claimed invention is obvious. See K-TEC, 696
`F.3d at 1375.
`Moreover, the only items that Petitioner identifies as satisfying the
`recited membership verification token are: Pestoni’s user ID, password, and
`digital certificate; Weider’s Purchase-Record; and credit card information
`and other personal information in the admitted prior art. Pet. 31, 36–37.
`Petitioner does not explain persuasively how “implement[ing] a database of
`user domains” provides Pestoni’s system with a “token database.”
`Petitioner further argues that “[t]he Wieder database is also described
`as including other information, and it would be obvious to include the other
`data of Pestoni, and it would be obvious to do this in a single database or
`multiple databases.” Id. at 32. Again, Petitioner does not explain
`persuasively why one of ordinary skill in the art would have considered
`combining Pestoni and Wieder to arrive at the claimed invention.
`Based on the record presented, we are not persuaded that Petitioner
`has provided adequately articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness. See Kahn, 441
`F.3d at 988. Accordingly, we determine that Petitioner has not demonstrated
`a reasonable likelihood of prevailing in showing that claims 1, 12, and 15
`would have been obvious over Pestoni, Wieder, and the admitted prior art.
`See also Pet. 48 (referring to analysis of claim 1 for claim 12), 49 (referring
`to analysis of claim 1 for claim 15). Claims 2–10, 13, 14, and 17–24 depend
`from claims 1, 12, or 15. We therefore also determine that Petitioner has not
`
`18
`
`

`
`IPR2016-00789
`Patent 8,402,555 B2
`
`demonstrated a reasonable likelihood of prevailing in showing that these
`dependent claims would have been obvious over Pestoni, Wieder, and the
`admitted prior art.
`
`
`E. Obviousness over DeMello or Pestoni in View of
`Wieder, Wiser, and the Admitted Prior Art
`Petitioner argues that dependent claims 11, 16, 25, and 26 of the ’555
`patent would have been obvious over DeMello or Pestoni in view of Wieder,
`Wiser, and the admitted prior art. See Pet. 52–59. Claims 11, 16, 25, and 26
`depend from claims 1, 12, or 15. Petitioner’s arguments and evidence
`regarding these dependent claims do not remedy the deficiencies discussed
`above with respect to the challenges to claims 1, 12, and 15 based on
`DeMello or Pestoni, either separately or in combination with Wieder and the
`admitted prior art. On this record, and for the reasons discussed above, we
`determine that Petitioner has not demonstrated a reasonable likelihood of
`prevailing on its assertion that claims 11, 16, 25, and 26 would have been
`obvious over DeMello or Pestoni in view of Wieder, Wiser, and the admitted
`prior art.
`
`
`III. CONCLUSION
`For the foregoing reasons, we are not persuaded that Petitioner has
`demonstrated a reasonable likelihood that it would prevail with respect to
`any of the challenged claims of the ’555 patent.
`
`
`19
`
`

`
`IPR2016-00789
`Patent 8,402,555 B2
`
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that the Petition is denied as to all challenged claims, and
`no trial is instituted.
`
`
`
`PETITIONER:
`
`Paul Haughey
`Scott Kolassa
`KILPATRICK TOWNSEND & STOCKTON LLP
`
`Jonathan Stroud
`Kevin Jakel
`UNIFIED PATENTS INC.
`
`phaughey@kilpatricktownsend.com
`SKolassa@kilpatricktownsend.com
`jonathan@unifiedpatents.com
`kevin@unifiedpatents.com
`
`
`
`PATENT OWNER:
`
`Patrick Richards
`Clare Frederick
`RICHARDS PATENT LAW P.C.
`
`Patrick@richardspatentlaw.com
`Clare@richardspatentlaw.com
`
`20

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