Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 9
`Entered: December 4, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MASTERCARD INTERNATIONAL INCORPORATED,
`Petitioner,
`
`v.
`
`WILLIAM GRECIA,
`Patent Owner.
`___________
`
`
`
`
`
`
`Cases IPR2017-00788
`Patent 8,402,555 B2
`___________
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`BACKGROUND
`I.
`In a Decision rendered on July 3, 2017, we denied institution of trial
`with respect to claims 1–26 of U.S. Patent No. 8,402,555 B2 (“the ’555
`patent”) on any alleged ground of unpatentability asserted in the Petition.
`
`

`

`IPR2017-00788
`Patent 8,402,555 B2
`Paper 7 (“Dec.”). The Decision stated that the Petition alleged the following
`grounds of unpatentability:
`Claim(s) Challenged
`
`Basis
`
`1–25
`
`26
`
`§ 103(a)
`
`§ 103(a)
`
`References
`Ameerally and Zweig, with further
`support by Frakes, Gautier,
`Anderson, Taylor, Christman, and
`iTunes® Terms
`Ameerally, Zweig, Kondrk, and
`Suitts, with further support by
`Frakes, Gautier, Anderson, Taylor,
`Christman, and iTunes® Terms
`
`
`
`Id. at 7.
`On August 2, 2017, Petitioner filed a Request for Rehearing
`(“Request” or “Req. Reh’g”) (Paper 8). Petitioner requests that we
`“reconsider obviousness under Section 103 of claims 1–11 and 15–23 of the
`’555 Patent.” Id. at 2.
`On request for rehearing, the burden of showing a decision on whether
`to institute trial should be modified lies with the party challenging the
`decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a
`panel will review the decision for an abuse of discretion.” 37 C.F.R.
`§ 42.71(c). “The request must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or a reply.”
`37 C.F.R. § 42.71(d). For reasons discussed below, we decline to modify
`the Decision to institute trial on any claim. Thus, Petitioner’s Request is
`denied.
`
`
`
`
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`IPR2017-00788
`Patent 8,402,555 B2
`
`II. DISCUSSION
`Petitioner frames the issue for this rehearing request as follows:
`
`Independent claim 1 of the ’555 Patent recites a method
`that can be broken into six steps. (Decision, p. 5). Independent
`claim 15 recites a computer program that performs the steps
`recited in claim 1. (Decision, p. 4). Step six is “branding
`metadata of the encrypted digital media by writing (a) the
`membership verification
`token and
`(b)
`the electronic
`identification reference into the metadata.” (Ex. 1001, col. 14,
`lns. 62–64) (annotated with “(a)” and “(b)” for clarity.
`
`The Board concluded that the Petitioner’s evidence
`showed steps 1–5 and subpart (a) of step 6. (Decision pp. 32–
`33). However, the Board determined that Petition did not show
`that the prior art taught subpart (b) of step 6, specifically
`“branding metadata of the encrypted digital media by writing . . .
`(b) the electronic identification reference into the metadata.”
`
`Petitioner submits that the Board misapprehended or
`overlooked evidence presented in the Petition regarding subpart
`(b) of step 6 and the state of the art at the time of the claimed
`invention.
`Req. Reh’g 2 (footnote omitted).
`We did not misapprehend or overlook any evidence presented by
`Petitioner in the Petition regarding subpart (b) of step 6 of independent
`claims 1 and 15, including the state of the art at the time of the claimed
`invention. Rather, as we indicated in the Decision, Petitioner has not
`adequately explained why that which Petitioner regards as the electronic
`identification reference written into the metadata, as recited in subpart (b) of
`step 6, is or comes from the login information supplied by the user, i.e., the
`user’s email address, that the iTunes® system had requested and received
`according to the prior steps of claims 1 and 15. Dec. 32–33. That is what
`claims 1 and 15 require, and sufficient explanation is lacking in the Petition.
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`IPR2017-00788
`Patent 8,402,555 B2
`For instance, with respect to Petitioner’s discussion of Frakes, we
`stated:
`The Figure illustrates detailed information kept by Frakes’
`
`iTunes® system for a digital movie file. Id. at 4. Petitioner
`asserts: “Frakes illustrates ‘Purchased By’ and ‘Account Name’
`in the metadata of the iTunes® media file (grayed out in image
`for privacy, but field illustrated), such that the claimed
`‘electronic identification reference’ was necessarily written into
`the metadata as saved by iTunes®. (Cherukuri Decl. ¶ 139).” Pet.
`41–42. However, neither Petitioner nor Mr. Cherukuri explains
`why the “Purchased By” or “Account Name” field is necessarily
`the login information, e.g., the user’s e-mail address, that the
`iTunes® system had requested and received, as had been
`explained by Petitioner and Mr. Cherukuri above when
`accounting for requesting an electronic identification reference
`and receiving the electronic identification reference. It is not
`explained why the fields cannot be another identification
`reference.
`Dec. 32. With respect to Petitioner’s discussion of Zweig, we stated:
`The argument [about Zweig] establishes that, in the metadata for
`the digital content purchased or downloaded by a user, there is
`an identifier, an electronic identification reference, that identifies
`that user. However, neither Petitioner nor Mr. Cherukuri
`explains why that identifier in the metadata is necessarily the
`login information, i.e., the user’s e-mail address, that the iTunes®
`system had requested and received, as had been explained by
`Petitioner and Mr. Cherukuri above when accounting for
`requesting an electronic identification reference and receiving
`the electronic identification reference. It is not explained why
`the fields cannot be another identification reference . . . .
`Id. at 32–33. With respect to the other references, we stated:
`
`As applied by Petitioner, none of the other prior art
`references, on this record, makes up for this deficiency with
`regard to the step or operation of “branding metadata of the
`encrypted digital media by writing the membership verification
`
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`IPR2017-00788
`Patent 8,402,555 B2
`token and the electronic identification reference into the
`metadata” recited in claims 1, 12, and 15.
`Id. at 33.
`Petitioner in the Request identifies various other portions of prior art,
`not identified and explained in the Petition in connection with what
`Petitioner identifies as step 6 of claims 1 and 15: “branding metadata of the
`encrypted digital media by writing the membership verification token and
`the electronic identification reference into the metadata.” Req. Reh’g 5–12.
`Petitioner points to Figure 5 of Ameerally and Figure 7B of Gautier, each of
`which shows in the upper right-hand corner of a screen shot of an iTunes
`display an email address in a box named “Account.” Id. at 6–7. Petitioner
`does not point out where in the Petition such specific identification and
`corresponding explanation exist in connection with the last step, i.e., step 6,
`of claims 1 and 15. Petitioner also notes a screenshot appearing in Taylor,
`on the upper right-hand corner of which is an unlabeled box containing an
`email address. Id. at 6. Petitioner does not point out where in the Petition
`such specific identification, and any corresponding explanation, exist for the
`last step, i.e., step 6, of claims 1 and 15.
`Similarly, Petitioner cites to and reproduces text from Gautier’s
`Paragraph 83, and notes that that text refers to “account identifier” by the
`description “such as an email address.” Id. at 8. Petitioner suggests that that
`disclosure from Gautier is discussed on page 39 of the Petition. Req. Reh’g
`8. Page 39 of the Petition does not contain any discussion or explanation
`with regard to Paragraph 83 of Gautier, especially with regard to the last step
`of claims 1 and 15. In any event, the quoted text from Gautier actually
`undermines Petitioner’s position, in that it describes the user’s email address
`only as an example of an account identifier, by use of the language “such
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`IPR2017-00788
`Patent 8,402,555 B2
`as.” It suggests that multiple items may be used as an account identifier in
`the iTunes® system, and not that the user’s email address is the one and only
`account identifier. The term “such as” is exemplary in nature and indicates
`only that an email address can be an account identifier, and not that in
`iTunes the account name necessarily is a user’s email address.
`To the extent that Petitioner now offers more explanation in the
`Request, identifying evidence not previously identified in connection with
`the limitation at issue, and even submitting additional evidence not
`previously of record at the time of rendering of the Decision, the effort is
`belated and inappropriate for a rehearing request. We could not have
`misapprehended or overlooked evidence that was not presented by Petitioner
`in the context of the limitation at issue. The Board also is not an advocate
`for either party, and need not search the record independently for evidence
`that was not presented by Petitioner in connection with a specific limitation,
`but which arguably might aid the Petitioner in some way, and then formulate
`a winning argument for Petitioner on the basis of that evidence. At this
`stage, it is too late for Petitioner to add further explanation in a request for
`rehearing.
`Petitioner, in the Request, also seeks to introduce evidence not in the
`record at the time of rendering of the Decision. That is inappropriate.
`Specifically, with its Petition, Petitioner provided a copy of Frakes (Ex.
`1006) having the Figure on page 5 thereof, which is said by Petitioner to be
`“grayed out” where the entry appears for “Purchased By” and “Account
`Name.” Pet. 41. In the Request, however, Petitioner states “Frakes actually
`shows that the ‘Account Name’ is a user’s e-mail address,” and provides
`what it alleges to be an enlarged and contrast-enhanced portion of the screen
`
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`IPR2017-00788
`Patent 8,402,555 B2
`shot of Frakes showing the “Account Name” field. Req. Reh’g 9. We
`decline to consider this new evidence, i.e., an enlarged and contrast-
`enhanced version of the screen shot from Frakes, which was not provided by
`the Petition. The Request is not an opportunity for a party to start afresh
`with the arguments it desires to make and the evidence it desires to submit.
`In the Petition, Petitioner already took the approach that the entries for
`“Account Name” and “Purchased By” in the screen shot from Frakes are
`“grayed out,” and did not assert that they are visible in the screen shot
`provided. Pet. 41. Here, in the context of the Request, Petitioner’s
`argument that the entry as actually shown is the user’s email address, and the
`supporting evidence in the form of an enlarged and contrast-enhanced copy
`of the screen shot in Frakes, are both new. We decline to consider them.
`Based on the copy of Frakes provided when the Petition was filed, we do not
`see an email address in the entry for “Account Name,” and the Petition
`nowhere asserts that an email address is visible in the entry on the copy
`provided with the Petition.
`Petitioner notes that Patent Owner, in its Preliminary Response,
`introduced the term “Apple ID,” and recognized that “Apple ID” refers to
`the iTunes® account identification and login information. Req. Reh’g 10.
`Petitioner further identifies Kondrk as describing Apple ID as an account
`identifier and login information. Id. at 11. However, that information does
`not provide meaningful assistance to Petitioner. Even assuming that Apple
`ID, as login information, may serve as an identifier for a user account, that
`does not mean only the user’s login information, i.e., email address, may be
`used as Account Name. Patent Owner has not admitted that the reference in
`Frakes to “Account Name” refers to the user’s email address or even to an
`
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`IPR2017-00788
`Patent 8,402,555 B2
`Apple ID. Petitioner also has not identified where in the Petition it relied on
`Kondrk to meet the limitation at issue.
`Petitioner argues that at the time of the invention, “one skilled in the
`art would have known that ‘Account Name’ tag in Frakes is no different
`than every other illustration of ‘account’ used in other prior art disclosing
`the iTunes® system – namely, identifying the account by the e-mail address
`(i.e., the Apple ID).” Req. Reh’g 11–12. There are numerous problems with
`that argument. First, it is mere attorney argument, and Petitioner cites no
`expert testimony that states the same. Second, it is new argument not made
`in the Petition. Third, none of the prior art actually indicates that account
`name or account identifier must be and can only be the user’s email address.
`Fourth, as noted above, Gautier actually suggests that there may be other
`account identifiers, and that email address is not the only way to identify an
`account. Fifth, Petitioner did not in its Petition make any explanation about
`“Account Name” or account identifier in the context of the limitation at
`issue, i.e., step 6 of claims 1 and 15. All of these additional explanations are
`belated. As we indicated in the Decision, Petitioner did not adequately
`explain how the limitation at issue is met by the prior art. Dec. 32–33.
`Finally, Petitioner argues: “Moreover, Petitioner’s Expert provided
`corroborating testimony showing that the ‘Account Name’ shown in Frakes
`evidences that the ‘identification reference’ in Ameerally is written into the
`metadata of digital media (See Declaration of Ravi S. Cherukuri, Ex. 1013,
`at paras. 122-123 and 139 (cited in the Petition, pp. 28 and 42).” Req. Reh’g
`12. We note, however, that paragraph 122 of Mr. Cherukuri’s Declaration
`was not cited on either page 28 or page 42 of the Petition, as Petitioner
`states. We could not have misapprehended or overlooked that which was
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`IPR2017-00788
`Patent 8,402,555 B2
`not identified and presented in connection with an argument. Furthermore,
`we did not misapprehend or overlook paragraphs 123 and 139 of
`Mr. Cherukuri’s Declaration. Rather, we addressed the issue as follows:
`
`The Figure illustrates detailed information kept by Frakes’
`iTunes® system for a digital movie file. Id. at 4. Petitioner
`asserts: “Frakes illustrates ‘Purchased By’ and ‘Account Name’
`in the metadata of the iTunes® media file (grayed out in image
`for privacy, but field illustrated), such that the claimed
`‘electronic identification reference’ was necessarily written into
`the metadata as saved by iTunes®. (Cherukuri Decl. ¶ 139).” Pet.
`41–42. However, neither Petitioner nor Mr. Cherukuri explains
`why the “Purchased By” or “Account Name” field is necessarily
`the login information, e.g., the user’s e-mail address, that the
`iTunes® system had requested and received, as had been
`explained by Petitioner and Mr. Cherukuri above when
`accounting for requesting an electronic identification reference
`and receiving the electronic identification reference. It is not
`explained why the fields cannot be another identification
`reference.
`Dec. 32. There was inadequate explanation with regard to a specific
`requirement of the claims.
`
`Through its Request, as discussed above, Petitioner presents
`explanations not previously presented regarding the limitation at issue, and
`also new evidence not previously in the record.
`III. CONCLUSION
`For the foregoing reasons, Petitioner has not met its burden of
`demonstrating that the Decision denying instituting trial (Paper 7) should be
`modified.
`
` ORDER
`IV.
`For the reasons given, it is ORDERED that Petitioner’s Request is
`denied.
`
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`IPR2017-00788
`Patent 8,402,555 B2
`PETITIONER:
`
`Joseph Lanser
`David Klein
`Joseph Walker
`Brian Michaelis
`SEYFARTH SHAW LLP
`jlanser@seyfarth.com
`daklein@seyfarth.com
`jmwalker@seyfarth.com
`bmichaelis@seyfarth.com
`
`
`
`PATENT OWNER:
`
`Isaac Rabicoff
`RABICOFF LAW LLC
`isaac@rabilaw.com
`
`
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