IPR 2017-_____ Petition
`U.S. Patent 8,887,308
`
`DOCKET NO.: 079833–000045
`Filed on behalf of MasterCard International Incorporated.
`By: Brian Michaelis, Reg. No. 34,221
`David A. Klein, Reg. No. 46,835
`Joseph Walker, Reg. No. 66,798
`Joseph Lanser, Reg. No. 44,860
`
`Seyfarth Shaw LLP
`Two Seaport Lane, Suite Three
`Boston, MA 02210–2028
`Tel: (617) 946–4830
`Email: bmichaelis@seyfarth.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`WILLIAM GRECIA
`Patent Owner
`
`IPR 2017–_____
`Patent 8,887,308
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,887,308
`CHALLENGING CLAIM 1
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`

`

`IPR2017-_____ Petition
`U.S. Patent 8,887,308
`
`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES .............................................................................1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party–in–Interest ...........................................................................1
`
`Related Matters......................................................................................1
`
`Counsels ................................................................................................2
`
`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
`
`1.
`
`2.
`
`U.S. Pub. 2006/0212401, filed on Mar. 15, 2005 and
`published on Sep. 21, 2006 (“Ameerally” (Ex. 1004)),
`which is prior art under 35 U.S.C. §§ 102 and 103. ...................3
`
`U.S. Pub. 2005/0203959, filed on May 10, 2005 and
`published on Sep. 15, 2005 (“Muller” (Ex. 1005)), which
`is prior art under 35 U.S.C. §§ 102 and 103...............................3
`
`B.
`
`Grounds for Challenge ..........................................................................4
`
`IV. OVERVIEW OF THE ‘308 PATENT ............................................................5
`
`A.
`
`B.
`
`C.
`
`Priority Date of the ‘308 Patent.............................................................5
`
`Summary of the ‘308 Patent..................................................................6
`
`Person of Ordinary Skill in the Art .......................................................9
`
`V.
`
`CLAIM CONSTRUCTION ............................................................................9
`
`A.
`
`B.
`
`C.
`
`“apparatus” / “apparatus of (a)” ..........................................................11
`
`“credential assigned to the apparatus of (a)”.......................................11
`
`“requesting the query data, from the apparatus of (a)”.......................12
`
`i
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`IPR 2017-_____ Petition
`U.S. Patent 8,887,308
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`VI.
`
`PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS
`A REASONABLE LIKELIHOOD OF PREVAILING ................................12
`
`A.
`
`The ‘308 Patent is unpatentable as obvious over Ameerally (Ex.
`1004) in view of Muller (Ex. 1005). ...................................................13
`
`1.
`
`2.
`
`3.
`
`Ameerally..................................................................................14
`
`Muller........................................................................................16
`
`Motivation to Combine Ameerally and Muller ........................18
`
`B.
`
`Claim 1 is Obvious over Ameerally in combination with Muller ......22
`
`VII. CONCLUSION..............................................................................................55
`
`ii
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`IPR 2017-_____ Petition
`U.S. Patent 8,887,308
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`EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 8,887,308 to Grecia
`
`Unified Patents, Inc. v. Grecia, IPR2016-00602, Preliminary
`Response (PTAB June 2, 2016)
`
`‘308 Patent Notice of Allowance and Fees Due (PTOL-37)
`
`U.S. Pub. No. 2006/0212401 to Ameerally, Prior Art under 35 U.S.C.
`§ 103
`
`U.S. Pub. No. 2005/0203959 to Muller, Prior Art under 35 U.S.C. §
`103
`
`Invalidity Claim Chart of U.S. Patent No. 8,887,308 to Grecia
`
`Declaration of Peter Alexander
`
`Exhibit
`No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`iii
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`IPR2017-_____ Petition
`U.S. Patent 8,887,308
`
`I.
`
`MANDATORY NOTICES
`
`A.
`
`Real Party–in–Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that (1) MasterCard
`
`International Incorporated (“MasterCard”) is the real party–in–interest, which is a
`
`subsidiary of MasterCard Incorporated; and (2) no other party exercised control or
`
`could exercise control over MasterCard’s participation in this proceeding, the filing
`
`of this petition, or the conduct of any ensuing trial.
`
`B.
`
`Related Matters
`
`U.S. Patent No. 8,887,308 (“‘308 Patent” (EX1001)) is a continuation of
`
`U.S. Patent No. 8,533,860 (“‘860 Patent”), which is a continuation of U.S. Patent
`
`No. 8,402,555 (“‘555 Patent”). An IPR petition on the ‘860 Patent was filed by
`
`MasterCard on January 27, 2017 (IPR2017–_____). An IPR petition on the ‘555
`
`Patent was filed by MasterCard on January 27, 2017 (IPR2017–_____).
`
`Grecia has asserted the ‘308 Patent against Amazon; American Express;
`
`Apple Inc.; MasterCard; Samsung; Sony Network Entertainment; and Visa. Grecia
`
`has asserted the ‘860 Patent against MasterCard, Adobe Systems; AT&T; Charter
`
`Communications; Comcast; Digital Entertainment Content Ecosystem; DirecTV;
`
`DISH Network; Google; Microsoft; RCN Telecom Services; Time Warner Cable;
`
`Vudu; Walt Disney; and WideOpenWest Finance. Grecia has asserted the ‘555
`
`Patent against Big Ten Network Services, LLC; Cablevision Systems Corporation;
`
`1
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`IPR2017-_____ Petition
`U.S. Patent 8,887,308
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`Fox Entertainment Group, Inc.; NFL Network Services, LLC; Starz Entertainment,
`
`LLC; Adobe Systems Incorporated: Adorama Camera, Inc.; Cox Communications,
`
`Inc.; McDonald’s Corporation; MasterCard Incorporated; American Express
`
`Company; and Visa Incorporated.
`
`A Petition for Inter Partes review was filed by Sony Network Entertainment
`
`International LLC, against the ‘860 Patent (IPR2015–00422, PTAB, December 14,
`
`2014, and later dismissed by request of the parties). Petitions for Inter Partes
`
`review were filed by Unified Patents, Inc., (collectively “the UPI IPRs”) against
`
`the ‘308 Patent (IPR2016-00602, Decision Denying Institution entered Aug. 30,
`
`2016), ‘555 Patent (IPR2016-00602, Decision Denying Institution entered Sept. 9,
`
`2016) and ‘860 Patent (IPR2016-00602, Decision Denying Institution entered Aug.
`
`16, 2016). Another Petition for Inter Partes review was filed by Dish Network
`
`L.L.C. against the ‘308 Patent (IPR2016-01519, Decision Denying Institution
`
`entered January 19, 2017).
`
`C.
`
`Counsels
`
`Lead Counsel for Petitioner in this matter is Brian Michaelis (Reg. No.
`
`34,221), of Seyfarth Shaw LLP. Back–up Counsel is Joseph Lanser (Reg. No.
`
`44,860), David A. Klein (Reg. No. 46,835) and Joseph Walker (Reg. No. 66,798),
`
`all of Seyfarth Shaw LLP.
`
`2
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`IPR2017-_____ Petition
`U.S. Patent 8,887,308
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`D.
`
`Service Information, Email, Hand Delivery, and Postal
`
`MasterCard consents to electronic service at bmichaelis@seyfarth.com,
`
`jlanser@seyfarth.com; daklein@seyfarth.com and jmwalker@seyfarth.com.
`
`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 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
`
`claim 1 of the ‘308 Patent.
`
`A.
`
`Prior Art Patents and Printed Publications
`
`The following references are pertinent to the grounds of unpatentability
`
`explained below:1
`
`1.
`
`2.
`
`U.S. Pub. 2006/0212401, filed on Mar. 15, 2005 and published
`on Sep. 21, 2006 (“Ameerally” (Ex. 1004)), which is prior art
`under 35 U.S.C. §§ 102 and 103.
`
`U.S. Pub. 2005/0203959, filed on May 10, 2005 and published
`on Sep. 15, 2005 (“Muller” (Ex. 1005)), which is prior art under
`35 U.S.C. §§ 102 and 103.
`
`1 The ‘308 Patent issued from a patent application filed prior to enactment of the America
`Invents Act (“AIA”). Accordingly, pre–AIA statutory framework applies.
`
`3
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`IPR2017-_____ Petition
`U.S. Patent 8,887,308
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`B.
`
`Grounds for Challenge
`
`This Petition, supported by the declaration of Peter Alexander (Ex. 1007
`
`(“Alexander Decl.”)) requests cancellation of claim 1 of the ‘308 Patent as
`
`unpatentable under 35 U.S.C. §§ 103 over Ameerally and Muller. The prior art and
`
`challenge set forth herein by Petitioner has not been considered by the PTAB in
`
`any prior proceeding relating to the ‘308 Patent.
`
`Well before Grecia filed his patent applications purporting to improve the art
`
`of Digital Rights Management (DRM), Apple Computer, Inc. (“Apple”) had
`
`already developed and filed patent applications on its iTunes system that included
`
`Digital Rights Management (DRM) technology. Regarding the “invention” in the
`
`‘308 Patent, Grecia has previously argued that “the actual reason for allowance
`
`was the ‘308 Patent’s use of an API connection between an apparatus and a
`
`database, and use of this API connection to facilitate the apparatus’ request and
`
`receipt of an account
`
`identifier.” (Ex. 1002 (IPR2016-00602, Preliminary
`
`Response)). See also (Ex. 1003 (Notice of Allowance and Fees Due (PTOL-37)).
`
`The Apple iTunes DRM technology, as represented and disclosed in the published
`
`patent applications cited in this Petition, uses an API connection between an
`
`apparatus and a database, and uses the API connection to facilitate the apparatus’
`
`request and receipt of an account identifier. These prior art published patent
`
`applications disclose what Grecia asserts as the reasons the PTO allowed his
`
`4
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`IPR2017-_____ Petition
`U.S. Patent 8,887,308
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`patents over the prior art. They disclose all of the elements of the claim of the `308
`
`Patent and provide the basis for challenging the `308 Patent. The Claim Charts
`
`submitted herewith, as Ex. 1006, show the correspondence of the disclosure in the
`
`cited references to the claim elements, and are consistent with the arguments below
`
`and with the Declaration of Peter Alexander submitted herewith (Ex. 1007).
`
`IV. OVERVIEW OF THE ‘308 PATENT
`
`A.
`
`Priority Date of the ‘308 Patent
`
`The ‘308 Patent resulted from Application 13/888,051, filed on May 6, 2013
`
`which claims priority back, through several continuations, to Application No.
`
`12/728,218, filed on Mar. 21, 2010, now abandoned. Although not listed on the
`
`‘308 Patent, in a 11–27–2012 response in the prosecution history of the ‘555
`
`Patent,
`
`the Patent Owner claimed priority to a Provisional Application No.
`
`61/303,292 (filed Feb. 10, 2010)
`
`to swear behind Baiya U.S. Pub. No.
`
`20110288946. Petitioner does not believe the ‘308 Patent is entitled to the Feb. 10,
`
`2010 priority date, but assumes that is the effective date for the purposes of this
`
`petition. All the prior art cited is more than a year earlier than this date.
`
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`IPR2017-_____ Petition
`U.S. Patent 8,887,308
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`B.
`
`Summary of the ‘308 Patent2
`The ‘308 Patent, titled “Digital Cloud Access (PDMAS Part III),” is directed
`
`to Digital Rights Management (DRM). The prior art was alleged to be deficient in
`
`that it tied access to digital content or media to a particular user or limited number
`
`of devices:
`
`DRM schemes for e–books include embedding credit
`card information and other personal information inside
`the metadata area of a delivered file format and
`restricting the compatibility of the file with a limited
`number of reader devices and computer applications.
`(‘308 Patent (Ex. 1001) at 2:19–23).
`
`***
`The current metadata writable DRM measures do not
`offer a way to provide unlimited interoperability between
`different machines. Therefore, a solution is needed to
`give consumers the unlimited interoperability between
`devices ....” (Id. at 3:1 – 3:5).
`
`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. Id. at 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’s
`
`2 The PTAB’s Decision Denying Institution of Inter Partes Review of the ‘308 Patent, entered
`August 30, 2016 in IPR2016-00602, contained an accurate and concise description of the ‘308
`Patent, which is borrowed from extensively here, with thanks.
`
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`(content acquirer’s) device. 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 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 the user’s device. Id. at 5:59–
`
`61. The request module requests an electronic identification reference from the
`
`user’s device. 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 into the metadata. Id. at 6:9–12.
`
`Figure 3, reproduced below, illustrates this process.
`
`7
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`IPR2017-_____ Petition
`U.S. Patent 8,887,308
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`In particular, Figure 3 is a flow chart of the process of digital media
`
`personalization. Id. at 4:24-26. 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
`
`6:66-7:4. Product metadata 302 is associated with the digital media to be acquired.
`
`Id. at 7:4-5. The Kodekey GUI is connected to token database 305. Id. at 7:7:-8.
`
`The user is then redirected to APlwebsite.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 APlwebsite.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 7:11-15. The database containing the digital media is connected to the
`
`web service membership. Id. at 7:18-20.
`
`The ‘308 Patent is a continuation of U.S. Patent No. 8,533,860 (“the ‘860
`
`Patent), which is a continuation of U.S. Patent No. 8,402,555 (“the ‘555 Patent).
`
`Claim 1 as issued was presented in a preliminary amendment, and was allowed in a
`
`first office action with an Examiner’s amendment. The reasons for allowance cited
`
`Baiya and Wimmer as the closest prior art, and referred in particular to elements c)
`
`and d) of claim 1 (relating to communicating with the verified web service and
`
`obtaining the verified web service identifier). (Ex. 1003 (Notice of Allowance and
`
`Fees Due (PTOL-37)). A terminal disclaimer to obviate an obviousness– type
`
`double patenting rejection was filed prior to the first action by the Examiner.
`
`8
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`IPR2017-_____ Petition
`U.S. Patent 8,887,308
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`C.
`
`Person of Ordinary Skill in the Art
`
`One of ordinary skill in the art at time of the earliest claimed effective filing
`
`date of the ‘308 Patent (Feb. 10, 2010) would possess at least a university degree
`
`or have equivalent professional experience related to electronics and/or software,
`
`with some experience in digital rights management, such as two years of work
`
`experience. See Alexander Decl. (Ex. 1007) at ¶¶17-18. The claims of the ‘308
`
`Patent are directed to a DRM system used with standard computers communicating
`
`over known network means. Thus, one of ordinary skill
`
`in the art requires
`
`knowledge of DRM programs, generally. Id.
`
`V.
`
`CLAIM CONSTRUCTION
`
`Below are proposed constructions of certain claimed phrases and terms. Any
`
`claim terms or phrases not included should be given their ordinary meaning in light
`
`of the specification, as commonly understood by those of ordinary skill in the art.
`
`During Inter Partes Review, claims are given the “broadest reasonable
`
`construction in light of the specification.” See 37 C.F.R. § 42.100(b); see also
`
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 1231, 2144-46 (2016) (confirming the
`
`use of the broadest reasonable interpretation standard). Under this standard, claim
`
`terms are given their ordinary and customary meaning, as understood by one of
`
`ordinary skill in the art, in the context of the patent specification. See In re
`
`Translogic Tech., Inc. 504 F.3d 1249, 1257 (Fed. Cir. 2007). The broadest
`
`9
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`IPR2017-_____ Petition
`U.S. Patent 8,887,308
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`reasonable interpretation of a claim term or phrase may be the same as or broader
`
`than the construction to be provided under the standard set forth in Phillips v. AWH
`
`Corp, 415 F.3d 1303 (Fed. Cir. 2005), but cannot be narrower. See Facebook, Inc.
`
`v. Pramatus AV LLC, 2014 U.S. App. LEXIS 17678, *11 (Fed. Cir. 2014).
`
`There have been no claim constructions provided in any of the District Court
`
`litigations involving the ‘308 Patent. There was a joint claim construction
`
`statement submitted by Grecia and Amazon in Grecia v Amazon.com, No. 2:14–
`
`cv–00530 (W.D. Wash. Dec. 22, 2014) (EX1002)); see also 37 C.F.R. § 42.62 and
`
`F.R.E. 801(d)(2). In the UPI IPRs, the Petitioner proposed interpretations for seven
`
`claim terms (“verified web service”; “verification data”; “verification token”;
`
`“authorization object”; “credential assigned to the apparatus of (a)”; “apparatus of
`
`(a)”; and “recognized”3). Patent Owner, in its Preliminary Response in the UPI
`
`IPR, only objected to and proposed alternative constructions for “credential
`
`assigned to the apparatus of (a)”; “apparatus of (a)”…. For purposes of its
`
`Decision, the Board concluded that “no term requires interpretation at this time to
`
`resolve a controversy in this proceeding.” (IPR2016-00602, Decision Denying
`
`Institution entered Aug. 30, 2016).
`
`3 Note that Grecia did not object to “recognize” in the UPI Prel. Resp. but did in the Dish
`Network Prel. Resp., despite the fact that the same definition was proposed.
`
`10
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`IPR2017-_____ Petition
`U.S. Patent 8,887,308
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`The following discussion proposes constructions and support for those
`
`constructions for the only terms that Petitioner believes may be necessary to
`
`resolve a controversy in this proceeding. Any claim terms not included in the
`
`following discussion should be given their ordinary meaning in light of the
`
`specification, as commonly understood by those of ordinary skill in the art. The
`
`constructions proposed below should be applied regardless of whether the terms
`
`are interpreted under
`
`the Phillips
`
`standard or
`
`the “broadest
`
`reasonable
`
`interpretation” standard.
`
`“apparatus” / “apparatus of (a)”
`A.
`The Patent Owner has previously argued, in the Preliminary Response by
`
`Patent Owner William Grecia, filed June 2, 2016 in IPR2016-00602 (Ex. 1002 at
`
`p. 24), that the apparatus of (a) is “any equipment, whether the equipment is
`
`hardware or software or some combination of both ….”
`
`For purposes of this Petition, Petitioner treats the claim terms “apparatus”
`
`and “apparatus of (a)” consistent with the Patent Owner’s previous assertion, as
`
`meaning a user device and any hardware, software, or web application running on
`
`the user device.
`
`“credential assigned to the apparatus of (a)”
`B.
`The Patent Owner has previously argued, in the Preliminary Response by
`
`Patent Owner William Grecia, filed June 2, 2016 in IPR2016-00602 (Ex. 1002 at
`
`11
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`IPR2017-_____ Petition
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`p. 22), that the “credential assigned to apparatus of (a)” is “data that represents a
`
`permission to conduct a data exchange session ….”
`
`For purposes of this Petition, Petitioner treats the claim term “credential
`
`assigned to apparatus of (a)” consistent with the Patent Owner’s previous assertion,
`
`as meaning any data that represents a permission to conduct a data exchange
`
`session.
`
`“requesting the query data, from the apparatus of (a)”
`C.
`The Patent Owner has previously argued, on page 29 of the Preliminary
`
`Response by Patent Owner William Grecia, October 28, 2016 (in Dish Networks
`
`L.L.C. v. Wiliam Grecai Patent Owner, IPR2016-01519), that the request is a
`
`request that is made by the apparatus of (a) for the query data, not a request that
`
`requests query data from the apparatus of (a) as the literal language of the claim
`
`suggests.
`
`For purposes of this Petition, Petitioner treats the claim term “requesting the
`
`query data, from the apparatus of (a)” consistent with the Patent Owner’s previous
`
`assertion, as meaning a request that is made by the apparatus of (a).
`
`VI. PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A
`REASONABLE LIKELIHOOD OF PREVAILING
`
`The references addressed below render obvious the claimed subject matter,
`
`and are corroborated by the opinion in the Alexander Declaration (Ex. 1007).
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`IPR2017-_____ Petition
`U.S. Patent 8,887,308
`
`A.
`
`The ‘308 Patent is unpatentable as obvious over Ameerally (Ex.
`1004) in view of Muller (Ex. 1005).
`
`Since the mid-2000’s, Apple’s iTunes® digital media system practiced each
`
`of the elements of the ‘308 Patent4. For example, as of 2008, Apple ran a
`
`promotion allowing users to obtain a unique code on a card available from
`
`Starbucks®. This unique code allowed the user to download a specific song in
`
`iTunes®, which changed on a weekly basis. This unique promotional code used by
`
`iTunes® was associated with a specific downloadable song – i.e., the code could
`
`not be used to download a song not associated with the code.
`
`In general, a user input the code into the iTunes® media player interface
`
`API on the user’s client computer device, which connected to and sent the code to
`
`the iTunes® web-based system. The iTunes® system further authenticated the user
`
`with a verified login identification, as the user was required to be logged into
`
`his/her iTunes® user account to access the iTunes® media server and the content
`
`corresponding to the code. After the user sent a request with the unique code via
`
`the iTunes® media player interface, the iTunes® system authenticated the code
`
`(i.e., confirmed it was valid and not used) and granted rights to the user’s iTunes®
`
`media player to access the specific digital media associated with that code.
`
`4 As is often the case, with a system as diverse and complex as the iTunes® system, there is not a
`single publication that describes the system in its entirety, but rather, multiple publications that
`disclose various components or elements of the system. As such, each of the prior art references
`discussed herein describe a specific feature or component of the overall iTunes® system.
`
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`IPR2017-_____ Petition
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`iTunes® further wrote the user’s account or login information into the metadata of
`
`the downloaded media (e.g., it included information such as “Purchased by” and
`
`“Account Name,” with the Account Name being the user’s e-mail address).
`
`Further, the iTunes® system utilized a unique key or serial number written into the
`
`metadata header of the media, which was used in-part to encrypt and decrypt the
`
`media for multiple devices and/or authorized users.
`
`Each of the inventions disclosed in the prior art used in the Invalidity
`
`analysis of the ‘308 Patent is either owned by Apple, or specifically references
`
`Apple’s iTunes® system; therefore, the iTunes® system, which employed each of
`
`the inventions and features described in these prior art references, renders the
`
`claims of the ‘308 Patent invalid under §103. Significantly, since each of the prior
`
`art references specifically relate to Apple’s iTunes® system, there would have
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`been a clear motivation or suggestion to one skilled in the art to combine the
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`teachings of this prior art, since (among other things), they were in fact combined
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`in the iTunes® system.
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`1.
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`Ameerally
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`Ameerally is a patent application published on September 21, 2006, assigned
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`to Apple Computer, Inc. Ameerally describes a promotion system created by Apple
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`using the iTunes® system for downloading digital songs with unique codes. In
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`particular, a “unique promotional code” (208) was obtained by a user, such as in
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`the form of a promotion card including the unique code. Ameerally, Ex. 1004 at
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`FIG. 2. The user inputs the code (502) into the iTunes® media player API interface
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`on the user’s device, and presses a “submit” button (508), which submits a request
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`to the iTunes® system that included the promotion code. Id. at [0046]. Then, “[a]t
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`step 402, a unique promotional code is received. At step 404, the unique
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`promotional code is evaluated (e.g., by processing a database such as the database
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`306 in FIG. 3) to determine the promotion with which the promotional code is
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`associated.” Id. at [0045]. In other words, “[a]t step 316, it is determined what is
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`the particular digital media content associated with the received promotional code.
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`Specifically, the database 306 is processed to determine the particular digital media
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`content associated with the received promotional code.” Id. at [0039].
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`Ameerally describes that in order to obtain access to the digital media, the
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`user must be logged into the iTunes® system. In particular, “[s]tep 317 includes
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`processing associated with user accounts with the digital media purchase system
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`100. If the user is already logged into an account with digital media purchase
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`system 100, then processing continues at step 318. Otherwise, the user is
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`prompted/requested to log into an account (if the user has previously created an
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`account) or to create an account. Most of the step 317 processing, for account
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`handling, is part of a conventional digital media purchase system.” Id. at [0041].
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`Then, “[a]t step 318, the particular digital media content determined to be
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`associated with the received promotional code is made accessible to the consumer
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`312.” Id. at [0042]. “In one embodiment, the downloaded digital media content is
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`encrypted as received at the client 104 but is decrypted and then re-encrypted
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`before persistent storage on the client 104. Thereafter, the digital media player 108
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`can present (e.g., play) the digital media content at the client 104.” Id. at [0025].
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`2. Muller
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`While Muller does not refer to iTunes by name in the specification, Muller is
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`an Apple application. Moreover, like Ameerally, Muller incorporates U.S.
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`Application 10/833,267 by reference (published as US 2005/0021478 to Gautier et
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`al.), which includes screen shots of iTunes in FIGS. 5B, 7B, 11A-11C, 13A-14B,
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`and 15C as the application program. Muller discloses that a buy request is sent by a
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`client to the media commerce server on behalf of a user of the client (namely, a
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`user of a media player operating on the client). Muller, Ex. 1005 at [0055]. This
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`buy request includes an account identifier for the user of the client, a digital media
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`item identifier, media price, and a password token. Id. The password token is a
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`token sent to the client by a media storage server as a result of successful
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`authentication of the user. Id.
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`Further, even if the media player 108 (i.e., the iTunes® application) is
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`already deemed to be authenticated, the media server may nevertheless request re-
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`authentication at Muller’s step 308 “to confirm that the particular user of the client
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`(e.g., media player) is indeed the authorized user for such a system.” Id. at [0056].
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`During authentication, authorization information (i.e., an account identifier/account
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`information) can be provided or entered 216 by the user associated with the media
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`player and sent to the media commerce server. Id. at [0049].
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`Thereafter, a “media access response provides the media player 108 with
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`information used to obtain access to the one or more digital media content files
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`associated with the particular digital media item that has been purchased.” Id. at
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`[0035]. For example, the media access response includes a URL, a download key,
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`and a security token (id. at [0057]); as well as data pointers to an appropriate one
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`or more of the digital media item components 117 (digital media content files) in
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`the media store 112 as well as other one or more digital media item components
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`115, such as metadata (e.g., artist, author, publisher, title, publication date, etc.),
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`licensing information (e.g., license keys), encryption or DRM data, and user
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`(licensee) account information (id. at [0035]). In general, the client makes a request
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`1705 for a first of the digital media item components in the media access response.
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`Id. at [0039]. Then, a decision 1707 determines if the requested digital media item
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`component has been received and stored in memory. Id. Some digital media item
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`components will arrive with the media access response, and so will be cross
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`referenced and not need to be again requested to access the digital media. Id.
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`3. Motivation to Combine Ameerally and Muller
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`There are many reasons that can support the rationale for a motivation to
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`combine references. For example, “a rationale to combine could arise from
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`‘interrelated teachings of multiple patents; the effects of demands known to the
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`design community or present in the marketplace; and the background knowledge
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`possessed by a person having ordinary skill in the art.’” Unwired Planet, LLC v.
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`Google Inc., 841 F.3d 995, 1003 (Fed. Cir. 2016) (citing KSR Int’l Co. v. Teleflex
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`Inc., 550 U.S. 398, 418 (2007)). “For example, … ‘if a technique has been used to
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`improve one device, and a person of ordinary skill in the art would recognize that it
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`would improve similar devices in the same way, using the technique is obvious
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`unless its actual application is beyond his or her skill.’” Id. (citing KSR, 550 U.S. at
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`417).
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`Ameerally and Muller relate to the secure delivery of multi-media content to
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`consumers operating client computers. Alexander Decl. (Ex. 1007) at ¶41.
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`Ameerally and Muller are both assigned to Apple, and incorporate by reference
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`U.S. Patent Application Ser. No. 10/833,267, which issued as U.S. Patent
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`7,797,242 to Gautier et al. ( herein “Gautier242”), and is also assigned to Apple.
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`Id. at ¶¶42-43.
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`As expected by virtue of their patent family relationship, Ameerally and
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`Muller (and the related Gautier242), all disclose features of the same Apple
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`mechanism for delivery of multi-media files, namely the iTunes® delivery
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`infrastructure. Id. at ¶44. “This can be readily seen from the similarities of the
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`figures in the three references as well as the commonality of terminology used by
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`them.” Id. Figure 1 of Ameerally and figure 1A of Muller both illustrate a client
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`computer connecting to a media commerce server and a database holding media
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`content referred to as a media store. Id. at ¶45. The two figures differ only in that
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`Ameerally provides a promotional token database to authenticate content requests
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`and Muller provides an additional server called a media storage server to provide
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`storage and deliver the additional benefits disclosed in Muller. Id. The Gautier242
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`reference provides a similar architectural diagram. Id. “Since Ameerally includes
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`the Gautier242 patent by reference, it is evident that the Gautier242 architectural
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`diagram of figure 1 is also part of Ameerally’s architectural disclosures.” Id. at ¶46.
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`Ameerally and Muller also use similar language when describing the system
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`components and architecture. Id. at ¶47.
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`Ameerally provides a solution for verification of user access requests by
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`disclosing a verification token in the form of a promotional code that is verified
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`against a promotional code database. Id. at ¶41. Muller builds on the capabilities of
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`Ameerally in two significant ways:
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`(1) Muller provides scalability of storage and delivery not
`disclosed by Ameerally. Muller discloses the use of multiple
`media content servers that are identified by a distinct URL when
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`a client receives a buy request response from the media
`commerce server. By 2010, content suppliers were able to
`determine the general physical location of a client computer, so
`the media commerce server could target a media content server in
`the locale of the client for more efficient and faster delivery of
`content files.
`(2) Muller provides an additional