`
`
`Paper 7
`Entered: January 19, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`WILLIAM GRECIA,
`Patent Owner.
`____________
`
`Case IPR2016-01519
`Patent 8,887,308 B2
`____________
`
`
`
`Before RAMA G. ELLURU, JAMES B. ARPIN, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2016-01519
`Patent 8,887,308 B2
`
`
`DISH Network L.L.C. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claim 1 of U.S. Patent No. 8,887,308 B2
`(Ex. 1001, “the ’308 patent”). William Grecia (“Patent Owner”) filed a
`Preliminary Response (Paper 5, “Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a),
`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 decline to
`institute an inter partes review.
`
`
`I. BACKGROUND
`A. Related Proceedings
`The parties identify nine federal district court cases involving the
`’308 patent. Pet. 2; Paper 4. The parties also identify four related petitions
`for inter partes review. Pet. 2; Paper 4.
`
`
`B. The ’308 Patent
`The ’308 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. Ex. 1001,
`1:20–27, 4:48–49. 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 (content acquirer). Id. at
`5:46–48. The branding request is a read and write request of metadata of the
`digital media and includes a membership verification token corresponding to
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`the digital media. Id. at 5:48–51. The authentication module authenticates
`the membership verification token. Id. at 5:57–58. The connection module
`establishes communication with a communication console. Id. at 5:59–61.
`The request module requests an electronic identification reference from the
`communication console. Id. at 6:5–7. The second receipt module receives
`the electronic identification reference. Id. at 6:7–9. The branding module
`brands metadata of the digital media by writing the membership verification
`token and the electronic identification reference into the metadata. Id. at
`6:9–12.
`Figure 3 of the ’308 patent, which illustrates this process, is
`reproduced below.
`
`
`Figure 3 is a flow chart of a digital media personalization process. Id. at
`4:24–26. A user (i.e., content acquirer) posts a branding request via
`Kodekey GUI 301, which prompts the user to enter a token and press the
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`redeem button. Id. at 6:66–7:4. Kodekey GUI 301 is connected to token
`database 305, which is used to authenticate the token. Id. at 7:7–8, 8:20–22.
`After authentication, the user is 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 7:11–12, 15–18. The APIwebsite.com GUI
`interfaces to a web service membership (e.g., Facebook), where an
`electronic identification for the user is collected and sent to Kodekey GUI
`301. Id. at 7:11–15, 10:41–44. Kodekey GUI 301 also is connected to
`product metadata 302, which is readable/writable metadata associated with
`the digital media to be acquired. Id. at 7:4–5. Product metadata 302 is
`branded by writing the token and the user’s electronic identification
`reference into the metadata. Id. at 8:28–31, 11:24–27. For a subsequent
`access request, the user’s electronic identification reference is compared
`against the electronic identification reference in metadata 302. Id. at 13:54–
`56. If there is a match, access rights are granted to the user. Id. at 13:56–58.
`
`
`C. Challenged Claim
`Petitioner challenges claim 1 of the ’308 patent, which recites:
`1. A process for transforming a user access request for cloud
`digital content into a computer readable authorization object, the
`process for transforming comprising:
`a) receiving an access request for cloud digital content
`through an apparatus in process with at least one CPU, the access
`request being a write request to a data store, wherein the data
`store is at least one of:
`a memory connected to the at least one CPU;
`a storage connected to the at least one CPU; and
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`a database connected to the at least one CPU through the
`Internet; wherein
`the access request further comprises verification data provided
`by at least one user, wherein the verification data is recognized
`by the apparatus as a verification token; then
`b) authenticating the verification token of (a) using a
`database recognized by the apparatus of (a) as a verification
`token database; then
`c) establishing an API communication between the apparatus
`of (a) and a database apparatus, the database apparatus being a
`different database from the verification token database of (b)
`wherein the API is related to a verified web service, wherein the
`verified web service is a part of the database apparatus, wherein
`establishing the API communication requires a credential
`assigned to the apparatus of (a), wherein the apparatus assigned
`credential is recognized as a permission to conduct a data
`exchange session between the apparatus of (a) and the database
`apparatus to complete the verification process, wherein the data
`exchange session is also capable of an exchange of query data,
`wherein the query data comprises at least one verified web
`service account identifier; then
`d) requesting the query data, from the apparatus of (a), from
`the API communication data exchange session of (c), wherein
`the query data request is a request for the at least one verified
`web service identifier; then
`e) receiving the query data requested in (d) from the API
`communication data exchange session of (c); and
`f) creating a computer readable authorization object by
`writing into the data store of (a) at least one of:
`the received verification data of (a); and
`the received query data of (e); wherein
`the created computer readable authorization object is
`recognized by the apparatus of (a) as user access rights associated
`to the cloud digital content, wherein the computer readable
`authorization object is processed by the apparatus of (a) using a
`cross-referencing action during subsequent user access requests
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`to determine one or more of a user access permission for the
`cloud digital content.
`Id. at 14:31–15:14.
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claim 1 of the ’308 patent on the following
`ground: obviousness over Tiu,1 Fetterman,2 and the knowledge of a person
`of ordinary skill in the art (“POSITA”) under 35 U.S.C. § 103.3 Pet. 5, 34–
`67. In support of its arguments, Petitioner proffers the declaration of Dr.
`Benjamin Goldberg, Ph.D. (Ex. 1011). See id.
`
`
`E. 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
`
`
`1 Tiu, U.S. Publ’n No. 2008/0222199 A1, published Sept. 11, 2008
`(Ex. 1004).
`2 Fetterman, U.S. Publ’n No. US 2008/0313714 A1, published Dec. 18, 2008
`(Ex. 1006).
`3 Because grounds in an inter partes review must be based on “patents or
`printed publications” (35 U.S.C. § 311(b); 37 C.F.R. § 42.104(b)(2)), we
`understand Petitioner’s reference to “the knowledge of the Person of
`Ordinary Skill in the Art (‘POSITA’)” (Pet. 5) here to refer to a person of
`skill in the art’s understanding of the applied reference or combined
`references and not to supply missing limitations or as shorthand to
`incorporate an unspecified disclosure by reference to supply missing
`limitations (37 C.F.R. § 42.6(a)(3)).
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`generally 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. Pet. 15–20. Patent Owner responds. Prelim. Resp. 17–23. For
`purposes of this Decision, we conclude that no term requires express
`construction to resolve a controversy in this proceeding. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
`those terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”).
`
`
`II. DISCUSSION
`Petitioner argues that claim 1 of the ’308 patent would have been
`obvious over Tiu, Fetterman, and the knowledge of a POSITA. Pet. 5, 34–
`67. For the reasons explained below, we are not persuaded that Petitioner
`has demonstrated a reasonable likelihood of prevailing on its asserted
`ground.
`
`
`A. Tiu
`Tiu describes a system for managing multimedia content appearing on
`user pages of an online social network (e.g., Friendster). Ex. 1004 ¶ 8. For
`example, the system lets a Friendster user display a video from a third party
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`website (e.g., YouTube) on his or her Friendster user page (landing page).
`See id. ¶ 28.
`Figure 5 of Tiu, which illustrates how to display such a video on a
`landing page, is reproduced below.
`
`
`Figure 5 is a flow diagram of the steps for generating a webpage with embed
`codes for multimedia content (e.g., the video). Id. ¶¶ 18, 34. Steps 510–518
`are carried out by the server computer of the external video site, while steps
`520–524 are carried out by the server computer of the online social network.
`Id. ¶ 34. In step 510, the user navigates to an external video site (e.g.,
`YouTube), where the user selects a video for viewing. Id. ¶ 35. In step 512,
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`the video is streamed to the user’s computer where it is displayed. Id. In
`step 514, the user may select the hyperlink “Post to Friendster,” which
`allows the user to feature the video on the user’s landing page. Id. If the
`user selects the hyperlink, the user is prompted for his or her Friendster user
`ID and password in step 516. Id. In step 518, the external video site
`transmits this information along with information about the video to the
`online social network. Id. In step 520, the online social network
`authenticates the user ID against the password using its user database. Id.
`¶ 36. After authentication, the information about the video is stored in a
`multimedia content database of the online social network along with the user
`ID in step 522. Id. Finally, in step 524, embed codes corresponding to the
`video are generated and inserted into the HTML file corresponding to the
`user’s landing page.
`
`
`B. Fetterman
`Fetterman describes a system for accessing data from a web-based
`social network via a third-party application. Ex. 1006 ¶ 26. As shown in
`Figure 1 of Fetterman, which is reproduced below, the system includes third-
`party application 115, network device 140, and a web-based social network
`(e.g., Facebook) comprising application program interface 105, cache
`memory 130, and distributed database 135. Id. ¶ 18.
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`Figure 1 illustrates an architecture for network authentication. Id. ¶ 6.
`Third-party application 115 may be a program for generating an
`electronic birthday card. Id. ¶ 19. A user of device 140 may use third-party
`application 115 to access data from memory 130 or database 135 through
`application program interface 105. Id. ¶¶ 23, 26. To gain such access, the
`user first logs into the third-party application. Id. ¶¶ 27–28. If the user is
`logging into the third-party application for the first time, the user will be
`asked to log into the social network (if not already logged in) to accept the
`terms of service for using the third-party application. Id. ¶ 27. After
`accepting the terms of service, the user will be directed to return to the third-
`party application, where the user will be able to access data from the social
`network. Id. Alternatively, the user may complete the login process
`(including logging into the social network and accepting the terms of
`service) via the third-party application. Id. ¶ 28, Figs. 3A–3B.
`
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`
`C. Analysis
`Claim 1 recites: (1) “establishing an API communication between the
`apparatus of (a) and a database apparatus,” (2) “establishing the API
`communication requires a credential assigned to the apparatus of (a),” and
`(3) “the computer readable authorization object is processed by the
`apparatus of (a) using a cross-referencing action . . . to determine one or
`more of a user access permission for the cloud digital content.” We address
`these limitations in turn.
`
`
`1. “establishing an API communication between
`the apparatus of (a) and a database apparatus”
`For this limitation, Petitioner identifies Tiu’s computer 270 as the
`“apparatus of (a)” and Tiu’s database 254 of an online social network as a
`“database apparatus.” Pet. 37 (discussing claim limitation (a), which recites
`“an apparatus”), 47. Petitioner also identifies Fetterman’s network device
`140 as the “apparatus of (a)” and Fetterman’s web-based social network
`(e.g., Facebook) as a “database apparatus.” See id. at 48. As Petitioner
`notes, Tiu’s database 254 “is in direct communication with the API
`communications 290 from the third-party content site 280,” not computer
`270. Id. at 47 (emphasis added). On the other hand, according to Petitioner,
`“Fetterman teaches that the user device . . . itself calls to Facebook’s API
`from the user’s browser such that the user device communicates directly
`with Facebook and its databases using a Facebook API call.” Id. at 48
`(citing Ex. 1006 ¶¶ 23, 28, Fig. 2); see also id. at 31 (citing Ex. 1006 ¶¶ 23,
`28). Petitioner further argues that “a POSITA would have been motivated to
`use the simpler login API method provided by the Facebook API described
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`by Fetterman in place of the more effort-intensive coding process required in
`Tiu whereby the third party server mediates the API.”4 Id. at 48; see also id.
`at 33 (“[T]he POSITA would be freed from having to program the third-
`party server to act as an API agent between the user’s device and social
`network and, instead, the API could simply be called from the user’s device
`using a few lines of HTML code.”). We are unpersuaded by Petitioner’s
`argument.
`In support of its argument, Petitioner cites disclosures in Fetterman
`that describe an API communication between a web-based social network
`and a third party application, not a user device. For example, paragraph 23
`of Fetterman teaches that “the third-party application 115 . . . may access a
`distributed database and/or a volatile cache memory associated with a social
`network through an application program interface for the social network.”
`Ex. 1006 ¶ 23 (emphasis added). Similarly, paragraph 28 of Fetterman
`teaches “logging into the third-party application and the social network from
`[the same] screen 320,” which illustrates a login procedure for the third-
`party application. Id. ¶¶ 8, 28, Fig. 3A.
`In addition, Petitioner directs us to Figure 2 of Fetterman, asserting
`that “the Facebook API documentation explains to the programmer of the
`third-party application that the web page presented to the user of the third-
`party application should include HTML code to call to Facebook’s API such
`that the user’s device itself becomes an ‘API client.’” Pet. 31–32. We note
`
`
`4 Petitioner proposes an assessment of a person of ordinary skill in the art.
`Pet. 13–14 (citing Ex. 1011 ¶ 10). Patent Owner does not challenge
`Petitioner’s proposed assessment and does not propose an alternative. To
`the extent necessary and for purposes of this Decision, we adopt Petitioner’s
`assessment.
`
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`Petitioner’s later assertion with respect to Figure 2, however, that
`“‘YOUR_API_KEY’ represents the API key assigned to the vendor of the
`third-party application that wants to gain access to Facebook on the user’s
`behalf.” Id. at 53. That the API key is assigned to the vendor of the third-
`party application implies an API communication between Facebook and the
`vendor of the third-party application, not the user’s device itself.
`Given the cited disclosures, Petitioner does not explain persuasively
`why one of ordinary skill in the art would have considered combining Tiu
`and Fetterman to arrive at the claimed invention, which includes “an API
`communication between the apparatus of (a) and a database apparatus.”
`Moreover, we note that logging into Facebook from the Facebook site as
`described in Figure 2 of Fetterman requires switching from the third-party
`site to the Facebook site to log into Facebook via Facebook’s site, rather
`than at the third-party site, and then switching back to the third-party site to
`access data from Facebook. Ex. 1006, Fig. 2 (“for a Facebook API client to
`use the API, the user of the client application must be logged in to
`Facebook,” “the user will be directed to close their browser window and
`return to the application”). Such a process seems “more effort-intensive”
`(see Pet. 48) than logging into a social network from the third-party site,
`where the user can stay to exchange data with the social network, as
`described in Tiu. Accordingly, we are unpersuaded by Petitioner’s proffered
`reasoning for replacing Tiu’s API communication with Fetterman’s API
`communication, namely, to simplify the coding process. See In re Kahn, 441
`F.3d 977, 988 (Fed. Cir. 2006) (“there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness”).
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`
`Based on the record before us, we are unpersuaded that the recited
`“API communication” would have been obvious over Tiu, Fetterman, and
`the knowledge of a POSITA.
`
`
`2. “establishing the API communication requires
`a credential assigned to the apparatus of (a)”
`For this limitation, Petitioner argues that Fetterman’s API key teaches
`a “credential assigned to the apparatus of (a).” Pet. 53. According to
`Petitioner, “Fetterman discloses that when a user is prompted to engage in an
`API communication with Facebook, it is provisioned an API key that will, in
`turn, be sent to Facebook as proof that the user is allowed to engage in the
`API communication.” Id. Thus, Petitioner concludes, “a POSITA would
`find it obvious that an API key would be utilized in calls to the social
`network site Friendster in Tiu, a social network similar to Facebook, which
`Patent Owner admits required API keys for utilization of its API services.”
`Id. at 53–54.
`We are unpersuaded by Petitioner’s argument. As discussed above,
`Petitioner identifies Fetterman’s network device 140 as the “apparatus of
`(a).” Id. at 48. With respect to Fetterman’s API key, Petitioner
`acknowledges that it “represents the API key assigned to the vendor of the
`third-party that wants to gain access to Facebook on the user’s behalf,” not
`to device 140. Id. at 53; see also Ex. 1006, Fig. 2 (“api_key” is “[u]niquely
`assigned to the vendor”); Prelim. Resp. 29 (“Because Fetterman teaches that
`the API key is assigned to the vendor application and [Petitioner] maintains
`that the apparatus of (a) is the user device, Fetterman when combined with
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`Tiu does not disclose a credential assigned to the apparatus of (a).”
`(emphases added)).
`We note Petitioner’s assertion that “[t]he ’308 Patent itself admits that
`it was known that APIs used by social network sites, like Facebook, required
`a credential[] such as an API key, in order to utilize the API,” and that
`“[s]uch credentials were assigned to the apparatus.” Pet. 51–52 (citing Ex.
`1001, 10:51–11:7 (“Facebook API system . . . called from a connected
`apparatus (which is usually an Internet powered desktop or browser based
`application) with an API Key”)). Petitioner, however, does not proffer
`sufficient persuasive reasoning for combining Tiu and Fetterman, in view of
`the knowledge of a POSITA, in order to obtain an API key assigned to Tiu’s
`computer 270 or Fetterman’s device 140. See Kahn, 441 F.3d at 988 (“there
`must be some articulated reasoning with some rational underpinning to
`support the legal conclusion of obviousness”).
`Based on the record before us, we are unpersuaded that the recited
`“credential assigned to the apparatus of (a)” would have been obvious over
`Tiu, Fetterman, and the knowledge of a POSITA.
`
`3. “the computer readable authorization object is processed by
`the apparatus of (a) using a cross-referencing action . . . to
`determine one or more of a user access permission for
`the cloud digital content”
`For this limitation, Petitioner argues that,
`[i]n Tiu, the use of the third-party content site username and
`password located in the EMBED CODE or located in the table
`of the multimedia content database 257 (in either instance, the
`claimed ‘authorization object’) to access content on a third-party
`website, acts as a cross-reference insofar as the username and
`password are for accessing the third-party content site (e.g.,
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`Flickr) but are called from the user’s social network (e.g.,
`Friendster).
`Pet. 65; see also id. at 66 (“calling on information in the multimedia content
`database 257 of the social network account for the HTML landing page code
`in order to pull information for retrieving content from a third-party site
`constitutes a cross-referencing action”).
`We are unpersuaded by Petitioner’s argument. The claim recites that
`the apparatus of (a) uses a cross-referencing action to determine a user
`access permission for cloud digital content. As discussed above, Petitioner
`identifies Tiu’s computer 270 as “the apparatus of (a).” See also Pet. 65.
`Petitioner does not explain persuasively that Tiu’s computer 270 uses a
`cross-referencing action to determine a user access permission for cloud
`digital content. For example, using third-party content site Flickr’s
`username and password for accessing content on the Flickr site implies a
`cross-referencing action at the Flickr site, not at computer 270. See id.; see
`also id. at 43 (“the same username and password will be sent to the third-
`party site every time someone visits the user’s landing page (William’s
`Landing Page), thus triggering a call to the third-party site for William’s
`content”); Ex. 1004 ¶ 30 (“The query that is issued to an external web site
`for content associated with a user includes the user ID and password of that
`user as proof that access to the user’s account maintained by the external
`web site is authorized.”). Accordingly, based on the record before us, we are
`unpersuaded that the recited limitation “the apparatus of (a) using a cross-
`referencing action . . . to determine one or more of a user access permission
`for the cloud digital content” would have been obvious over Tiu, Fetterman,
`and the knowledge of a POSITA.
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`In view of the foregoing, we determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing in showing that claim 1
`would have been obvious over Tiu, Fetterman, and the knowledge of a
`POSITA.
`
`
`III. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated a
`reasonable likelihood that it would prevail with respect to challenged claim 1
`of the ’308 patent.
`
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`PETITIONER:
`Robert R. Laurenzi
`Shyamkrishna Palaiyanur
`KAYE SCHOLER LLP
`robert.laurenzi@kayescholer.com
`shyam.palaiyanur@kayescholer.com
`
`PATENT OWNER:
`Patrick D. Richards
`Clare Frederick
`RICHARDS PATENT LAW P.C.
`patrick@richardspatentlaw.com
`clare@richardspatentlaw.com
`
`17
`
`
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