IPR2016-01271 Petition
`Patent 8,566,960
`
`Filed on behalf of Unified Patents Inc.
`By: Vincent J. Galluzzo, Reg. No. 67,830
`
`Teresa Stanek Rea, Reg. No. 30,427
`
`CROWELL & MORING LLP
`
`1001 Pennsylvania Avenue, N.W.
`
`Washington, D.C. 20004
`
`Tel: (202) 624-2781
`
`Email: vgalluzzo@crowell.com
`
`Jonathan Stroud, Reg. No. 72,518
`Unified Patents Inc.
`1875 Connecticut Avenue, N.W., Floor 10
`Washington, D.C. 20009
`Tel: (202) 805-8931
`Email: jonathan@unifiedpatents.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.
`Patent Owners
`
`IPR2016-01271
`Patent 8,566,960
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT 8,566,960
`CHALLENGING CLAIMS 1–25
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`
`
`
`
`
`

`
`IPR2016-01271 Petition
`Patent 8,566,960
`
`TABLE OF CONTENTS
`
`I. MANDATORY NOTICES ......................................................................................... 1
`A.
`Real Party-in-Interest ................................................................................................ 1
`B.
`Related Matters .......................................................................................................... 1
`C.
`Counsel ......................................................................................................................... 2
`D.
`Service Information, Email, Hand Delivery, and Postal .................................. 3
`II.
`CERTIFICATION OF GROUNDS FOR STANDING ....................................... 3
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ....................... 3
`A.
`Prior Art Patents and Printed Publications .......................................................... 3
`B.
`Grounds for Challenge ............................................................................................. 4
`IV.
`INTRODUCTION ......................................................................................................... 4
`V.
`TECHNOLOGY BACKGROUND ........................................................................... 6
`A.
`License Management and DRM in General ........................................................ 6
`B.
`Validation of License Requests .............................................................................. 7
`C.
`Enforcement of License Consumption Rules ..................................................... 8
`D.
`Transmission, Validation, and Registration of Device Identity ................... 11
`VI. OVERVIEW OF THE ’960 PATENT ................................................................... 13
`A.
`Summary of the Alleged Invention ..................................................................... 13
`B.
`Level of Ordinary Skill in the Art ....................................................................... 16
`C.
`Prosecution History ................................................................................................. 16
`VII. CLAIM CONSTRUCTION ...................................................................................... 17
`VIII. SPECIFIC GROUNDS FOR PETITION .............................................................. 20
`A.
`Ground I: Claims 1, 3–5, 8, 18–22, and 25 are anticipated
`by Abburi ................................................................................................................... 21
`Overview of Abburi .............................................................................................. 21
`Claims 1, 22, and 25 are anticipated by Abburi ........................................... 24
`Claim 3 is anticipated by Abburi ...................................................................... 35
`Claim 4 is anticipated by Abburi ...................................................................... 35
`Claim 5 is anticipated by Abburi ...................................................................... 35
`
`1.
`2.
`3.
`4.
`5.
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`IPR2016-01271 Petition
`Patent 8,566,960
`Claim 8 is anticipated by Abburi ...................................................................... 36
`6.
`Claim 18 is anticipated by Abburi ................................................................... 37
`7.
`Claim 19 is anticipated by Abburi ................................................................... 37
`8.
`Claim 21 is anticipated by Abburi ................................................................... 38
`9.
`10. Claim 20 is anticipated by Abburi ................................................................... 38
`Ground II: Claims 1–19 and 22–25 are obvious over Gilder
`B.
`in view of Hu and Goringe .................................................................................... 39
`Overview of Gilder ............................................................................................... 39
`1.
`Overview of Hu ..................................................................................................... 42
`2.
`Overview of Goringe ............................................................................................ 43
`3.
`Claims 1, 22, and 25 are obvious over Gilder in view of Hu .................... 45
`4.
`Claim 2 is obvious over Gilder in view of Hu ............................................... 53
`5.
`Claim 3 is obvious over Gilder in view of Hu ............................................... 54
`6.
`Claim 4 is obvious over Gilder in view of Hu ............................................... 55
`7.
`Claim 5 is obvious over Gilder in view of Hu ............................................... 56
`8.
`Claim 6 is obvious over Gilder in view of Hu ............................................... 56
`9.
`10. Claim 7 is obvious over Gilder in view of Hu ............................................... 57
`11. Claim 8 is obvious over Gilder in view of Hu ............................................... 58
`12. Claim 18 is obvious over Gilder in view of Hu ............................................. 59
`13. Claim 19 is obvious over Gilder in view of Hu ............................................. 61
`14. Claims 9 and 23 are obvious over Gilder in view of
`Hu and Goringe ..................................................................................................... 61
`15. Claims 14 and 24 are obvious over Gilder in view of
`Hu and Goringe ..................................................................................................... 64
`16. Claims 10, 11, and 15 are obvious over Gilder in view of
`Hu and Goringe ..................................................................................................... 66
`17. Claims 12 and 16 are obvious over Gilder in view of
`Hu and Goringe ..................................................................................................... 67
`18. Claims 13 and 17 are obvious over Gilder in view of
`Hu and Goringe ..................................................................................................... 68
`IX. CONCLUSION ............................................................................................................ 68
`
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`IPR2016-01271 Petition
`Patent 8,566,960
`
`I. MANDATORY NOTICES
`
`A. Real Party-in-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Unified Patents Inc. (“Unified” or
`
`“Petitioner”) certifies that Unified is the real party-in-interest, and further certifies
`
`that no other party exercised control or could exercise control over Unified’s
`
`participation in this proceeding, the filing of this petition, or the conduct of any
`
`ensuing trial. In this regard, Unified has submitted voluntary discovery. See
`
`EX1046 (Petitioner’s Voluntary Interrogatory Responses).
`
`B. Related Matters
`
`U.S. Patent 8,566,960 (“the ’960 Patent” (EX1001)) is owned by Uniloc
`
`Luxembourg S.A. and exclusively licensed to Uniloc USA, Inc. (collectively,
`
`“Uniloc” or “Patent Owners”). See EX1047 (Complaint), at 7.
`
`On May 30, 2016, Uniloc filed multiple lawsuits in the Eastern District of
`
`Texas:
`
`Uniloc USA, Inc., et al v. Amazon.com, Inc. et al, No. 2:16-cv-00570 (E.D.
`
`Tex. filed May 30, 2016);
`
`Uniloc USA, Inc., et al v. Google Inc., No. 2:16-cv-00571 (E.D. Tex. Filed
`
`May 30, 2016);
`
`Uniloc USA, Inc., et al v. Home Box Office, Inc., No. 2:16-cv-00572
`
`(E.D.
`
`Tex. May 30, 2016);
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`IPR2016-01271 Petition
`Patent 8,566,960
`Uniloc USA, Inc., et al v. Hulu, LLC, No. 2:16-cv-00573 (E.D. Tex. Filed
`
`May 30, 2016);
`
`Uniloc USA, Inc., et al v. Netflix, Inc., No. 2:16-cv-00574 (E.D. Tex. Filed
`
`May 30, 2016); and
`
`Uniloc USA, Inc., et al v. Valve Corp., No. 2:16-cv-00575 (E.D. Tex. Filed
`
`May 30, 2016).
`
`Uniloc filed against, inter alia, Amazon.com, Inc., Google Inc., Home Box
`
`Office, Inc., Hulu, LLC, Netflix, Inc., and Valve Corporation, claiming that certain
`
`of these companies’ products or services infringe the ʼ960 Patent. It is the sole
`
`patent raised. The cases are in their early stages and no schedule or trial date has
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`been set. Uniloc also filed an earlier lawsuit on November 20, 2015 against
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`Electronic Arts Inc. related to the ʼ960 Patent in Uniloc USA, Inc., et al v.
`
`Electronic Arts Inc., No. 6:15-cv-01009 (E.D. Tex. Nov. 20, 2015). That lawsuit
`
`was dismissed with prejudice on January 12, 2016.
`
`C. Counsel
`
`Vincent J. Galluzzo (Reg. No. 67,830) will act as lead counsel; Teresa
`
`Stanek Rea (Reg. No. 30,427) and Jonathan Stroud (Reg. No. 72,518) will act as
`
`back-up counsel.
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`IPR2016-01271 Petition
`Patent 8,566,960
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`D.
`
`Service Information, Email, Hand Delivery, and Postal
`
`Unified consents to electronic service at vgalluzzo@crowell.com and
`
`jonathan@unifiedpatents.com. Petitioner can be reached at Crowell & Moring
`
`LLP, 1001 Pennsylvania Avenue, N.W., Washington, DC 20004, Tel.: (202) 624-
`
`2781, Fax: (202) 628-8844 and Unified Patents Inc., 1875 Connecticut Avenue,
`
`N.W., Floor 10, Washington, D.C. 20009, Tel.: (650) 999-0899.
`
`II. CERTIFICATION OF GROUNDS FOR STANDING
`
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
`
`review is sought is available for inter partes review and that Petitioner is not
`
`barred or estopped from requesting an inter partes review challenging the patent
`
`claims on the grounds identified in this Petition.
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)–(2), Petitioner challenges
`
`claims 1–25 of the ʼ960 Patent.
`
`A.
`
`Prior Art Patents and Printed Publications
`
`The following references are pertinent to the grounds of unpatentability
`
`explained below:1
`
`
`1 The ʼ960 Patent issued from a patent application filed prior to enactment of the
`
`America Invents Act (“AIA”). Accordingly, pre-AIA statutory framework applies.
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`3
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`

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`IPR2016-01271 Petition
`Patent 8,566,960
`U.S. Patent 7,203,966 (filed on June 27, 2001; published on April 10,
`
`1.
`
`2007) (“Abburi”) (EX1002), which is prior art under 35 U.S.C.
`
`§§ 102(a) and 102(e).
`
`2.
`
`U.S. Patent Application Publication 2008/0148363
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`(filed on
`
`December 15, 2006; published on June 19, 2008) (“Gilder”)
`
`(EX1003), which is prior art under 35 U.S.C. §§ 102(e).
`
`3.
`
`U.S. Patent 7,752,139 (filed on December 27, 2005; published on July
`
`6, 2010) (“Hu”) (EX1004), which is prior art under 35 U.S.C.
`
`§ 102(e).
`
`4.
`
`U.S. 7,707,115 (filed on July 25, 2002; published on April 27, 2010)
`
`(“Goringe”) (EX1005), which is prior art under 35 U.S.C. §§ 102(e).
`
`B. Grounds for Challenge
`
`This Petition, supported by the Declaration of Ivan Zatkovich (“Zatkovich
`
`Declaration” (EX1031)), requests cancellation of challenged claims 1–25 as
`
`unpatentable under 35 U.S.C. §§ 102 or 103. See 35 U.S.C. § 314(a)
`
`IV.
`
`INTRODUCTION
`
`The inventor of the ʼ960 Patent suggests that he invented DRM license
`
`limitations in 2007, but DRM had been a well-researched and widely implemented
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`technology, both here and abroad, well before 2007. That was particularly true for
`
`early versions of commercially available software. Early software companies—
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`IPR2016-01271 Petition
`Patent 8,566,960
`like Microsoft, IBM, and Hewlett-Packard—needed to figure out how to limit the
`
`number of people who could copy a purchased software program. See EX1002
`
`(Abburi); EX1021 (Baratti); EX1024 (Harter); EX1025 (Cox); EX1010 (May);
`
`EX1011 (Herington). That was also true for music, video, and text files, articles,
`
`and many other forms of digital content, and was well understood by the
`
`companies selling that digital content—like Sony Pictures Entertainment. See
`
`EX1014 (Singer); EX1015 (Singer Assignments Data).
`
`As companies worked to manage and monetize digital content while
`
`restricting or limiting piracy, they began to exercise simple rules-based limits on
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`the number of authorized devices on which software or content was available, well
`
`before the critical date. See, e.g., EX1021 (Baratti) at 1:10–33 (discussing how the
`
`“advent of wide spread computer networks” disrupted the traditional software
`
`licensing model, and discussing the IBM License Use Management product
`
`available in 1996).
`
`One of the more widely known examples was implemented in Microsoft
`
`Windows XP at least as early as 2001. See EX1059 (Technical Details on
`
`Microsoft Product Activation), at 1. At the time, when a user desired to activate a
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`retail boxed copy of Windows XP, the user needed to provide two things: a
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`product ID and a hardware hash. Id. at 2. The product ID should be familiar to
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`anyone who installed software in the 2000s, taking the form, for example, “12345-
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`IPR2016-01271 Petition
`Patent 8,566,960
`123-1234567-12345.” Id. The hardware hash was an 8-byte value automatically
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`“created by running 10 different pieces of information from the [user’s] PC’s
`
`hardware components through a one-way mathematical transformation.” Id. The
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`Microsoft servers then used these two values to process the user’s activation
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`request. Id. at 2–3. Other Microsoft examples prior to 2007 include copy-limited
`
`licenses in, for example, Microsoft Windows Vista. See EX1060 (Volume
`
`Activation 2.0 Guide), at 1–2.
`
`Myriad other DRM and license management schemes resulted, many of
`
`which included the basic abstract concepts claimed by the ʼ960 Patent, both alone
`
`and in combination. The ʼ960 Patent was not novel, and was obvious in November
`
`2007, in light of at least these myriad schemes. Claims 1–25 of the ʼ960 Patent are
`
`unpatentable in light of at least the grounds presented herein.
`
`V. TECHNOLOGY BACKGROUND
`
`A. License Management and DRM in General
`
`The technology discussed in this Petition generally relates to systems and
`
`methods to enable the monitoring and adjusting of software usage under a software
`
`license. EX1001 (ʼ960 Patent), at 1:16–20. This is known as “digital rights
`
`management,” or “DRM,” representing simple, abstract rules governing who can
`
`access certain digital content. More specifically, the Petition discusses the
`
`concepts of digital product license systems and how those systems (a) validate a
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`Patent 8,566,960
`license authorization request from a user and (b) control the number of devices
`
`allowed to be used with a given product license at any given time.
`
`DRM in its most general sense is a “collection of technologies that enable
`
`technically enforced licensing of digital information.” EX1006 (Koenen), at 883.
`
`At a minimum, a well-designed DRM system at the filing date of the ʼ960 Patent
`
`included three things: (1) “control, or governance, via the use of programming
`
`language methods executed in a secure environment”; (2) secure association of
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`usage rules with the digital content throughout the lifecycle of the content; and (3)
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`persistent protection of the digital content throughout the content’s commercial
`
`lifecycle. Id. In layman’s terms, that meant computer-coded rules limiting who
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`could use the product, in a secure environment, lasting the life of the product.
`
`B. Validation of License Requests
`
`In a general DRM scheme well before the 2007 filing date of the ʼ960
`
`Patent, license servers managed and distributed licenses for digital content to users
`
`who requested them. Id. These license severs had to process license requests,
`
`validate credentials from the requesting party, associate or bind the licenses
`
`accordingly, deliver associated licenses to the requesting entities, and manage and
`
`enforce license usage and subscription data. Id. Part of the validation of
`
`credentials from the requesting party included validating “information about the
`
`requesting
`
`system
`
`environment
`
`and user
`
`context—including possibly
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`IPR2016-01271 Petition
`Patent 8,566,960
`personalization data, locale, system capabilities, security level or evidence of
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`current certification, and information about the content.” Id.
`
`A DRM scheme at that time would also generally validate “the identity of
`
`the requesting system (e.g., using a fingerprint based on characteristic attributes of
`
`the specific system, or an indelible identifier or key).” Id. Other information that
`
`could be used for validation included device information such as a “unique
`
`identity, the unique identity of any removable secure memory or media associated
`
`with it, . . . other functional and/or security-related capabilities of the device,” as
`
`well as “device or removable storage hardware IDs.” Id. at 889.
`
`C. Enforcement of License Consumption Rules
`
`The license server would also enforce any consumption rules, such as
`
`“limitations on the number of plays” or “time-based usage or expiration.” Id. at
`
`888. To do this, a DRM system “must support device interfaces and nonvolatile
`
`state (such as copy and check-in/check-out counts) used to maintain compliance
`
`with the rules.” Id. DRM systems with such license consumption rules, including
`
`count limits, were well-known in the art much earlier than 2007.
`
`For instance, O’Connor discloses a flexible licensing arrangement from
`
`2001 that uses “tokens” to track the uses of a licensed software product. EX1007
`
`(O’Connor), at ¶¶ [0005], [0008]. A user has a maximum number of tokens that
`
`the user can consume, which corresponds to the user’s license consumption. Id. at
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`IPR2016-01271 Petition
`Patent 8,566,960
`¶ [0008]. When a user requests authorization to use a software product, a
`
`monitoring system grants or denies permission based on the remaining available
`
`tokens. Id. at ¶¶ [0009], [0021]–[0023], [0032]. If there are sufficient tokens, the
`
`balance is reduced by the number of tokens consumed and permission is granted.
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`Id. at ¶ [0022]. If there are insufficient tokens remaining, permission is denied. Id.
`
`The monitoring process also logs the user, computer, time, and other defining
`
`characteristics for later use by the system. Id. at ¶ [0009].
`
`Even earlier examples of count- or time-limited DRM systems developed
`
`and patented by practicing entities include one from the Hewlett-Packard Company
`
`in 1996, more than a decade before the filing date of the ʼ960 Patent. EX1010
`
`(May), at 9:58–11:30. Hewlett-Packard developed another count-limited DRM
`
`system roughly a decade later—still prior to the date in question. EX1011
`
`(Herington). Fuji Xerox Co., Ltd. also developed a count-limited DRM system at
`
`least as early as 2006. EX1012 (Saito); see EX1013 (Saito Assignments Data).
`
`Sony Pictures Entertainment Inc. developed a similar system at least as early as
`
`2003. EX1014 (Singer); see EX1015 (Singer Assignments Data). A plethora of
`
`other count- and time-limited DRM systems are disclosed in Andersson (EX1016),
`
`Kley (EX1009), Lenard (EX1017), Muller (EX1018), Bourdev (EX1019), and
`
`Takahashi (EX1020). In short, most modern systems are atavistic in their
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`IPR2016-01271 Petition
`Patent 8,566,960
`reversion to simple, abstract, long-practiced rules governing use and time limits—
`
`like a contract limiting resale.
`
`It was also known in the art well before the ʼ960 Patent was filed to have
`
`flexible time- and count-limited consumption rules in DRM systems. Johnson
`
`discloses one such solution from 2001 wherein a license monitoring and
`
`authorization system allots a certain number of excess licenses to a user that is
`
`used as needed. EX1008 (Johnson), at Abstract. The system of Johnson includes
`
`a “License Allowance Component” that maintains a count of the number of
`
`available licenses compared to the number of purchased licenses, the allowance of
`
`excess licenses permitted, and the number of licenses used from the allowance. Id.
`
`at ¶ [0015].
`
`When a user exceeds the license count, the License Allowance Component
`
`sends a warning notification to the user and permits an additional number of
`
`temporary licenses up to a second specified maximum license count. Id. at
`
`¶ [0019]. If a user meets that second specified maximum of temporary licenses,
`
`the License Allowance Component refuses to grant any further licenses to the user.
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`Id. at ¶ [0020]. These temporary licenses are time-limited. If a user does not
`
`submit payment for these temporary licenses before a specified period of time
`
`ends, the License Allowance Component revokes allowance of those temporary
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`IPR2016-01271 Petition
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`licenses through a “time bomb” and suspends all temporary licenses. Id. at
`
`¶ [0023].
`
`Still other DRM systems with flexible consumption rules were developed by
`
`IBM Corp. at least as early as 1999, EX1021 (Baratti), and Avaya Inc. at least as
`
`early as 2002, EX1005 (Goringe). Additional disclosures include Zunke (EX1022)
`
`and Ferrante (EX1023).
`
`D. Transmission, Validation, and Registration of Device Identity
`
`When the ’960 Patent was filed, it was known to transmit unique device
`
`identification information, including “physical parameters,” to a license authority
`
`as part of a user request for license authorization. Two of these solutions were
`
`developed by IBM Corp. at least as early as 1998. See EX1024 (Harter), at 3:59–
`
`4:6; EX1025 (Cox), at Abstract, 5:8–14, 7:49–65, 13:24–14:4.
`
`Kley, another such solution, discloses an automated system for upgrading a
`
`hardware device and recovering a software license already registered with the
`
`user’s previous hardware device. EX1009 (Kley), at Abstract. When a user
`
`requests license authorization, the user provides license registration information
`
`and identification, which is recorded for future use. Id. at 2:7–17, 3:58–59. Part of
`
`the identification information that the user provides is “device-specific data unique
`
`to the device” such as a “device fingerprint that is unique to a particular device.”
`
`Id. at 3:3–7, 3:38–41. Kley provides several other examples of such “device-
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`specific data”: a unique processor identification code; properties of the device
`
`such as active ports and microprocessor type number; or any other “types of
`
`device-specific data.” Id. at 3:8–22. The user then receives an unlock code that is
`
`generated using that device-specific data. Id. at 1:59–61.
`
`Still other solutions in the art well before the 2007 filing date of the ʼ960
`
`Patent involved activating a user software license based on a “globally unique
`
`identifier” generated from “arbitrary pieces of the computer’s hardware (called a
`
`hardware hash).” EX1004 (Hu), at 1:24–35. It was also well known to register
`
`this hardware hash in combination with a software ID on a DRM server and to
`
`compare future requests for license authorization to that software ID/hardware
`
`hash unique combination to combat piracy. Id. at 1:24–37. Some proposed
`
`solutions similarly
`
`involved verification of an accessing user’s device’s
`
`microprocessor serial number, EX1026 (Cohen), at ¶ [0079], Media Access
`
`Control (“MAC”) address, EX1014 (Singer), at ¶ [0078], or “unique computer
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`serial number that is specific only to that computer”, EX1023 (Ferrante), at 1:51–
`
`57.
`
`Yet other relevant DRM and license management methods include Endoh
`
`(EX1027) and Nusser (EX1028).
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`IPR2016-01271 Petition
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`VI. OVERVIEW OF THE ’960 PATENT
`
`A.
`
`Summary of the Alleged Invention
`
`The ʼ960 Patent recognizes that digital product license systems commonly
`
`control how many devices are allowed to be used according to the product license
`
`sold to an individual customer or company. EX1001 (ʼ960 Patent), at 1:22–25.
`
`The ʼ960 Patent also recognizes that various prior art solutions existed in
`
`November 2007 for allocating a “relatively high device to license ratio” and
`
`requiring users to turn off license rights on certain devices to free up licenses rights
`
`for other devices. Id. at 1:49–60. The ʼ960 Patent states that these solutions
`
`allegedly do “not take in to consideration the normal attrition that occurs with the
`
`purchase and upgrade of personal computing devices or the like.” Id. at 1:61–65.
`
`The ʼ960 Patent further discounts these solutions as “plac[ing] an expectation on
`
`the user to go through a number of involved steps to retain their rights to use the
`
`software.” Id. at 1:65–67.
`
`To address this purported problem, the ʼ960 Patent describes a method “for
`
`allowing for a changing number of device installations on a per license basis over
`
`time.” Id. at 1:67–2:2. This method combines no more than the steps of (1)
`
`verifying a license based on “a device identity associated with the given device”
`
`and (2) setting a “maximum number of devices authorized for use with the digital
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`product,” otherwise known as a “copy count” or a “device count.” Id. at 2:15–42.
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`These steps, however, were already well known in the prior art, both separately
`
`and in combination.
`
`The ʼ960 Patent describes a process where a device requesting license
`
`authorization collects and sends “unique device identifying information” to an
`
`authorization authority that “checks that the license information is valid.” Id. at
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`4:56–62. If the license information is valid, the authorization authority determines
`
`if the device exists in a database of prior authorizations. Id. at 5:1–5. If the device
`
`identity exists in the database, the authorization authority authorizes the software
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`to run on the requesting device. Id. at 5:5–13. Figure 2 of the ʼ960 Patent
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`illustrates this decision tree:
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`The ʼ960 Patent consults a “copy count” when a device identity does not
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`exist in the database of prior authorizations. There, the authorization authority
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`queries how many successful authorizations for new devices have been allowed.
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`Id. at 5:14–23. If the returned count is less than the maximum number of devices
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`allowed, the authorization authority authorizes the software to run on the
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`requesting device. Id. at 5:23–25. If the returned count is more than the maximum
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`number of devices allowed, the authorization authority denies authorization. Id. at
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`33–35. Figure 2 of the ʼ960 Patent illustrates this decision tree, which supplements
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`the decision tree depicted above:
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`
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`As the prior art repeatedly demonstrates, however, the purported problems
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`solved by the ’960 Patent were well known and studied, and the solutions to that
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`problem recited in the claims of the ’960 Patent were well-known prior to the ʼ960
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`Patent, including the concepts of DRM rules based on device identity and device
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`count, both individually and in combination.
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`B.
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`Level of Ordinary Skill in the Art
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`A person of ordinary skill in the art (“POSA”) for the ʼ960 Patent would
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`have at least a bachelor’s degree in computer engineering, computer science, or a
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`related subject, and at least three years of experience working with digital rights
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`management, the access and distribution of licensed digital content, or the
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`equivalent. EX1031 (Zatkovich Declaration), at ¶ 23.
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`C.
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`Prosecution History
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`The ʼ960 Patent issued from U.S. Patent Application 12/272,570, which was
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`filed on November 17, 2008, EX1032 (File History, Application (11/17/2008)),
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`and claims priority to U.S. Provisional Application 60/988,778, which was filed on
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`November 17, 2007, EX1001 (ʼ960 Patent), at 1:7–11. The Examiner allowed the
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`claims “in light of applicant’s arguments and amendment[2] filed 11/16/2012.”
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`EX1045 (File History, Notice of Allowability (9/3/2013)), at 3. The Examiner
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`appeared persuaded by the four arguments that the applicant presented in that
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`November 16, 2012 filing.3 EX1042 (File History, Response to Final Office
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`2 The applicant did not file any amendment on November 16, 2012. Petitioner
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`assumes this reference to “amendment” was a typo.
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`3 Petitioner notes that only the first of these arguments relates to a limitation
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`included in the independent claims of the ’960 Patent. See EX1042 (File History,
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`(Continued...)
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`Action (11/16/2012)), at 9. But as described in detail below, each of these
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`arguments relates to limitations (and indeed entire claims) that were well known at
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`the time that the ʼ960 Patent was filed.
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`VII. CLAIM CONSTRUCTION
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`Claim terms of a patent in inter partes review are normally given the
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`“broadest reasonable construction in light of the specification.” 37 C.F.R.
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`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 579 S. Ct. ____, 2016 WL
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`3369425, at *10 (June 20, 2016). The following discussion proposes constructions
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`and support for those constructions. Any claim terms not included in the following
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`discussion should be given their ordinary meaning in light of the specification, as
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`commonly understood by those of ordinary skill in the art.
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`“physical parameters”
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`The phrase “physical parameters” should be interpreted to mean “identifying
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`characteristics of the machine or its component parts.” The phrase “physical
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`________________________
`Response to Final Office Action (11/16/2012)), at 2–7. The other three arguments
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`made by the applicant relate to limitations in dependent claims 9 and 23, dependent
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`claim 20, and dependent claim 21, respectively. Id.
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`parameters” was not included in the specification4 or claims as originally filed, but
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`was introduced by an amendment to claims 1, 22, and 25 to overcome a rejection
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`that the claim was obvious over Ahmad (EX1029) in view of Takano (EX1030).
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`EX1040 (File History, Amendment (8/5/2011)), at 2, 5–9.
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`The ʼ960 Patent does not define the term “physical parameters,” but
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`describes that “generating the device identity may also be described as generating a
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`device fingerprint and may entail the sampling of physical, non-user configurable
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`properties.” EX1001 (ʼ960 Patent), at 9:32–34. The ʼ960 Patent then goes on to
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`provide non-limiting examples of such “physical, non-user configurable
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`properties,” including “unique manufacturer characteristics, carbon and silicone
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`degradation and small device failures,” “chip benchmarking,” “degradation
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`measurements,” “physical, non-user-configurable characteristics of disk drives and
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`solid state memory devices,” “[d]evice parameter sampling,” and “damage
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`4 The terms used in the specification are “physical, non-user configurable
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`properties”, “physical device parameters”, “physical, non-user configurable
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`characteristics”, “device parameter[s]”, “machine or device parameters”, and
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`“machine parameters”. EX1001 (ʼ960 Patent), at 9:34–34, 36–37, 56–57, 63,
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`10:3–5, 11, 16, 21, 25, 31, 36, 41, 45, 49, 53, 57, 61, 65.
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`measurement.” Id. at 9:36–39, 54–57, 63; see id. at 9:36–37 (“Physical device
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`parameters available for sampling may include . . . .” (emphasis added)).
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`The ʼ960 Patent describes that those examples “make up just a part of device
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`fingerprinting technologies described herein” and provides a plethora of examples
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`of physical parameters, which the ʼ960 patent describes in those examples as
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`“machine or device parameters.” Id. at 10:3–67. These examples range from
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`“machine details” to “memory details” to “chassis serial number,” among others.
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`Id. The pr