IPR 2017-00793 Request for Rehearing
`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 300
`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 2017–00793
`Patent 8,887,308
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`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 300
`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 2017–00793
`Patent 8,887,308
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`IPR 2017-00793 Request for Rehearing
`U.S. Patent 8,887,308
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................2
`
`RELIEF REQUESTED ...................................................................................3
`
`III.
`
`STANDARD OF REVIEW.............................................................................3
`
`IV. MATTERS MISAPPREHENDED / OVERLOOKED - obviousness
`over Ameerally and Muller..............................................................................4
`
`A.
`
`B.
`
`C.
`
`The Decision misapprehended and overlooked Petitioner’s
`explanation of how the stored media access response
`information of Muller corresponds to the claimed “computer
`readable authorization object.”..............................................................4
`
`The Decision misapprehended and overlooked Petitioner’s
`argument for “creating a computer readable authorization object
`by writing into the data store of (a) . . . .” .............................................6
`
`The Decision misapprehended and overlooked Petitioner’s
`argument for “wherein the computer readable authorization
`object is processed by the apparatus of (a) using a cross-
`referencing action during subsequent user access requests to
`determine one or more of a user access permission for the cloud
`digital content.” .....................................................................................8
`
`V.
`
`CONCLUSION..............................................................................................12
`
`1
`
`
`
`IPR 2017-00793 Request for Rehearing
`U.S. Patent 8,887,308
`
`I.
`
`INTRODUCTION
`Petitioner, having requested review in the Petition for Inter Partes Review
`
`filed in IPR2017-00793 (the “Petition”), respectfully requests reconsideration of
`
`the Decision Denying Instituting Inter Partes Review (the “Decision”) of U.S.
`
`Patent No. 8,887,308 (the “‘308 Patent”).1
`
`The Petition was denied because the Patent Trial and Appeal Board (the
`
`“Board”) misapprehended Petitioner’s argument in the Petition as to what in
`
`Muller corresponded to the claimed “computer readable authorization object.”
`
`Based on this misapprehension, the Board asserted that the Petition did not
`
`“explain adequately how items [mentioned in the Petition] meet all the
`
`requirements of” the claim limitations for “a computer readable authorization
`
`object by writing into the data store of (a) . . . .” and “wherein the computer
`
`readable authorization object is processed by the apparatus of (a) using a cross-
`
`referencing action during subsequent user access requests to determine one or more
`
`of a user access permission for the cloud digital content.”
`
`The Decision overlooks and misapprehends several aspects of the Petition as
`
`detailed below. Petitioner respectfully requests rehearing on these points.
`
`1 Prior art and other abbreviations are those used in the Petition and the Decision
`
`2
`
`
`
`IPR 2017-00793 Request for Rehearing
`U.S. Patent 8,887,308
`
`II.
`
`RELIEF REQUESTED
`Petitioner requests a rehearing of the Decision and institution of an inter
`
`partes review (“IPR”) based on obviousness over Ameerally2 and Muller3, as set
`
`forth in the Petition.
`
`III.
`
`STANDARD OF REVIEW
`
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`
`panel will review the decision for an abuse of discretion.” An abuse of discretion
`
`occurs when a “decision was based on an erroneous conclusion of law or clearly
`
`erroneous factual findings, or ... a clear error of judgment.” PPG Indus. Inc. v
`
`Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988)
`
`(citations omitted). 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). The PTAB has noted that, “in [its] view, when [it] recognize[s] that [it
`
`has] misapprehended or overlooked a significant fact, the necessary abuse of
`
`discretion” is established. IPR2014-01279, Paper 18 at 8 (noting that “[t]he ‘abuse
`
`of discretion’ standard applicable to requests for rehearing of decisions not to
`
`2 U.S. Patent Application Pub. No. 2006/0212401 (Ex. 1004; “Ameerally”).
`
`3 U.S. Patent Application Pub. No. 2005/0203959 (Ex. 1005; “Muller”).
`
`3
`
`
`
`IPR 2017-00793 Request for Rehearing
`U.S. Patent 8,887,308
`
`institute is based on the Director’s rule (37 C.F.R. § 42.71(c)), and not necessarily
`
`Article III practice”).
`
`IV. MATTERS MISAPPREHENDED / OVERLOOKED - OBVIOUSNESS
`OVER AMEERALLY AND MULLER
`
`A.
`
`The Decision misapprehended and overlooked Petitioner’s
`explanation of how the stored media access response information
`of Muller corresponds to the claimed “computer readable
`authorization object.”
`
`The Decision asserted on pages 10-11 that:
`
`Petitioner asserts, at various points in the Petition, that
`
`each of the following items in Muller corresponds to the
`
`recited “computer readable authorization object”: query
`
`data response from the media commerce server; media
`
`commerce server response; media access response; media
`
`content URL; a download key; a security token; digital
`
`media item components 115; license keys; user account
`
`information; media access information; media access
`
`response information; licensing information; DRM data;
`
`media storage access pointers; media information
`
`response; various combinations of these items; and
`
`various combinations of these items when “written into
`
`the memory of the client computer.” This listing is
`
`4
`
`
`
`IPR 2017-00793 Request for Rehearing
`U.S. Patent 8,887,308
`
`problematic, however, as the Petition, at various points,
`
`mentions some of these items as corresponding to the
`
`recited “computer readable authorization object,” but not
`
`others, with no explanation as to why that is the case.
`
`Furthermore, the Petition does not explain adequately
`
`how some of these items meet all the requirements of the
`
`aforementioned claim limitations for a “computer
`
`readable authorization object. . . . Insofar as we can
`
`discern from the Petition, no single “computer readable
`
`authorization object” from the prior art has been
`
`identified to account for all the limitations directed to the
`
`claimed computer readable authorization object.
`
`However, the Petition does not assert that each of the individual items listed
`
`above corresponds to the claimed “computer readable authorization object.”
`
`Rather, the Petition clearly states that the media access response of Muller (a single
`
`item, which comprises multiple pieces of information), becomes the claimed
`
`“computer readable authorization object,” when the information in the media
`
`access response is “written into the memory of the client computer.” (Petition, pp.
`
`47-48). While, the media access response of Muller “contains a media content
`
`URL, a download key, and a security token, and one or more digital media item
`
`5
`
`
`
`IPR 2017-00793 Request for Rehearing
`U.S. Patent 8,887,308
`
`components 115 that include license keys and user account information (i.e., query
`
`data)” (Petition, pp. 47-48), the claim language in no way requires that the
`
`“computer readable authorization object” contain a single piece of information. In
`
`fact, as stated in the claim, the “computer readable authorization object” is created
`
`“by writing into the data store of (a) . . . the received query data of (e).” The
`
`claimed “query data” can include multiple pieces of information, as indicated in
`
`the claim when the claim recites “the query data comprises at least one verified
`
`web service account identifier” (emphasis added).
`
`Accordingly, the Muller equivalent of the `308 patent claimed “computer
`
`readable authorization object” contains multiple pieces of information, such as the
`
`media content URL, download key, security token, and one or more digital media
`
`item components 115 that include license keys and user account information.
`
`Again, the `308 patent, claim 1 does not require that the “computer readable
`
`authorization object” be a “single” piece of information.
`
`B.
`
`The Decision misapprehended and overlooked Petitioner’s
`argument for “creating a computer readable authorization object
`by writing into the data store of (a) . . . .”
`
`The Decision asserted on page 11 that: “Petitioner mentions digital media
`
`item components 115, and, indeed, only mentions digital media item components
`
`115, as being disclosed in Muller as “stored in the memory of the client computer
`
`(i.e., the data store of (a)),” which is the language in this portion of the Petition that
`
`6
`
`
`
`IPR 2017-00793 Request for Rehearing
`U.S. Patent 8,887,308
`
`most closely mirrors the claim limitation of “creating a computer readable
`
`authorization object by writing into the data store of (a) . . . .””
`
`As described above, and in the Petition, the media access response of
`
`Muller, becomes the claimed “computer readable authorization object,” when the
`
`information in the media access response is “written into the memory of the client
`
`computer.” (Petition, pp. 47-48). While the media access response of Muller
`
`includes multiple items, the claim only requires that “the received query data of
`
`(e)” be written “into the data store of (a).” As claimed, “the query data comprises
`
`at least one verified web service account identifier.” Accordingly, the Petition
`
`explains that “the user account information, download key, and/or security token
`
`represent “verified web service account identifiers.”” (Petition, p. 42). The Petition
`
`also explains that “the digital media item components 115 . . . are stored in the
`
`memory of the client computer (i.e., the data store of (a)).” (Petition, p. 48). The
`
`storing of the digital media item components 115 (which are part of the media
`
`access response), meets the claim limitation of “creating a computer readable
`
`authorization object . . . .”
`
`However, the claim clearly indicates that the “query data” can include
`
`multiple pieces of information, and does not preclude other pieces of information
`
`from being part of the “query data” and stored, such as the media content URL,
`
`download key, security token, and digital media item component 115 that includes
`
`7
`
`
`
`IPR 2017-00793 Request for Rehearing
`U.S. Patent 8,887,308
`
`license keys and user account information, as disclosed in Muller. As explained in
`
`the Petition, the URL, download key, security token, and digital media item
`
`component 115 are all part of the media access response and stored, thereby
`
`representing the claimed “computer readable authorization object.” (Petition, pp.
`
`47-49); Alexander Decl. (Ex. 1007) at ¶¶163-165. “Any factual dispute created by
`
`testimonial evidence that is material to the institution decision should be resolved
`
`in favor of the petitioner for purposes of determining whether to institute a trial.”
`
`See 81 FR 18750, 18755 (April 1, 2016).
`
`C.
`
`The Decision misapprehended and overlooked Petitioner’s
`argument for “wherein the computer readable authorization
`object is processed by the apparatus of (a) using a cross-
`referencing action during subsequent user access requests to
`determine one or more of a user access permission for the cloud
`digital content.”
`
`The Decision asserted on page 12 that: “[w]hen page 54 of the Petition, as
`
`informed by the aforementioned portion of Muller, is read in conjunction with page
`
`48 of the Petition, however, the resulting claim mapping is that digital media item
`
`components 115 are used to retrieve . . . themselves, which is illogical, and, thus,
`
`digital media item components 115 cannot correspond properly to the recited
`
`“computer readable authorization object.””
`
`However, the Petition does not state that digital media item components 115
`
`are used to retrieve themselves. Rather, the Petition explains that the media access
`
`8
`
`
`
`IPR 2017-00793 Request for Rehearing
`U.S. Patent 8,887,308
`
`response of Muller includes multiple pieces of information, such as the media
`
`content URL, download key, security token, and one or more digital media item
`
`components 115 that include license keys and user account information, as
`
`disclosed in Muller. (Petition, pp. 53-54). As disclosed in Muller and explained in
`
`the Petition, data pointers (which are the same as the URL contained in the media
`
`access response) (Petition, p. 53; Muller ¶ [0035]) are used to cross-reference the
`
`storage locations and retrieve individual digital media content items. (Petition, pp.
`
`53-54). For example, the Petition states that “[o]ne of ordinary skill in the art
`
`would understand that retrieval of the digital media components (content files)
`
`would require a “de-referencing” operation, i.e., extracting a pointer from the
`
`media information response (such as the XML data structure discussed in Muller
`
`(Ex. 1005 at [0027]) and forming a cross referenced URL identifying the data file
`
`location [such as the URL in the media access response].” (Petition, p. 54);
`
`Alexander Decl. (Ex. 1007) at ¶177.
`
`The Decision misapprehends the use of “data pointers” described in the
`
`Petition, and states on page 13: “
`
`Petitioner has not explained the difference between
`
`“media content URL” and “cross referenced URL.”
`
`Plausibly, the two could be one and the same. This is
`
`relevant, because if “media content URL” is meant to
`
`9
`
`
`
`IPR 2017-00793 Request for Rehearing
`U.S. Patent 8,887,308
`
`correspond to the “media storage access pointers”
`
`mentioned earlier on page 54 of the Petition, Petitioner
`
`has not explained adequately how or why a “de-
`
`referencing” operation, using the “media content URL,”
`
`is used to obtain the “cross referenced URL,” when, as
`
`noted above, the two could plausibly be one and the
`
`same.
`
`As described in Muller, “[t]he media access response may be formatted in . .
`
`. Extensible Markup Language (XML).” (Muller, Ex. 1005 at [0013] and [0027]).
`
`“It is well known that XML objects must be parsed to extract the various elements
`
`and attribute values stored in the received XML object. XML parsing by its nature
`
`cannot be performed without storing the XML data structure in computer
`
`memory.” Alexander Decl. (Ex. 1007) at ¶163. “Accordingly, the URL [which is
`
`the same as the data pointers] used to identify the location of digital media
`
`components . . . located at the media storage server (Ex. 1005, Muller at [0035]),
`
`must also be stored in a program that requests the digital media component
`
`downloads.” (Petition, p. 48); Alexander Decl. (Ex. 1007) at ¶164.
`
`This parsing of the XML object (i.e., the media access response) includes a
`
`“de-referencing” operation in order to obtain the information in the media access
`
`response (including the data pointers/URL). Thus, the XML object (i.e., the media
`
`10
`
`
`
`IPR 2017-00793 Request for Rehearing
`U.S. Patent 8,887,308
`
`access response) is parsed using a “de-referencing” operation to obtain the URL
`
`(also referred to in the Petition as the cross referenced URL identifying the data
`
`file location). The URL is then “used to reference the storage locations and retrieve
`
`individual digital media content items,” thereby meeting the claim limitation.
`
`(Petition, p. 54); Alexander Decl. (Ex. 1007) at ¶175.
`
`The Decision also states on pages 13-14 that:
`
`pages 47–48 of the Petition do not impart any particular
`
`significance to either “download key” or “security token”
`
`with respect to the recited “computer readable
`
`authorization object,” while page 54 imparts some
`
`significance to “security token,” but not “download key.”
`
`Even in that regard, however, page 54 of the Petition
`
`specifically refers to “security token” and “media storage
`
`access pointers” separately, but only asserts that the latter
`
`is used for the “cross-referencing action” required of the
`
`recited “computer readable authorization object.”
`
`The Decision misapprehends the use of “security token” described in the
`
`Petition. As described above, the URL, download key, security token, and digital
`
`media item component 115 are all part of the media access response and stored,
`
`thereby representing the claimed “computer readable authorization object.” The
`
`11
`
`
`
`IPR 2017-00793 Request for Rehearing
`U.S. Patent 8,887,308
`
`“security token” (i.e., part of the claimed “computer readable authorization
`
`object”) is used to meet the claim limitation of “the created computer readable
`
`authorization object is recognized by the apparatus of (a) as user access rights
`
`associated to the cloud digital content.” For example, as described in the Petition,
`
`“[t]he security token provides authorization for a client to access the digital media
`
`content, i.e., it provides an access right for components stored at the media storage
`
`server 110.” (Petition, p. 51); Alexander Decl. (Ex. 1007) at ¶168. While the
`
`“security token” of Muller is mentioned on page 54 of the Petition, it is used to
`
`signify that the “security token” is also used to access the digital media content
`
`items.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully submits that the Board
`
`should reconsider the grounds for unpatentability of claim 1 of the ‘308 Patent,
`
`and, in turn, conclude that Petitioner has shown a reasonable likelihood that it will
`
`prevail in showing that claim 1 is unpatentable over Ameerally and Muller.
`
`Respectfully submitted,
`
`By: /Brian Michaelis/
`Brian Michaelis
`Registration No. 34,221
`Lead Counsel for Petitioners
`
`12
`
`
`
`Lead Counsel
`Brian Michaelis
`Registration No. 34,221
`bmichaelis@seyfarth.com
`
`Postal and Hand–Delivery Address:
`Seyfarth Shaw LLP
`Two Seaport Lane,
`Suite 300
`Boston, MA, 02210
`Telephone: (617) 946–4830
`Fax: (617) 946–4801
`
`IPR 2017-00793 Request for Rehearing
`U.S. Patent 8,887,308
`
`Back–Up Counsel
`Joseph Lanser
`Reg. No. 44,860
`jlanser@seyfarth.com
`
`Postal and Hand–Delivery Address:
`Seyfarth Shaw LLP
`233 South Wacker Drive, Suite 8000
`Chicago, Illinois 60606
`Tel: (312) 460-5895
`
`Joseph Walker
`Reg. No. 66,798
`jmwalker@seyfarth.com
`
`Postal and Hand–Delivery Address:
`Seyfarth Shaw LLP
`233 South Wacker Drive, Suite 8000
`Chicago, Illinois 60606
`Tel: (312) 460-5267
`
`David A. Klein
`Reg. No. 46,835
`daklein@seyfarth.com
`
`Postal and Hand–Delivery Address:
`
`Seyfarth Shaw LLP
`Two Seaport Lane,
`Suite 300
`Boston, MA, 02210
`Tel: (617) 946–4901
`
`13
`
`
`
`IPR 2017-00793 Request for Rehearing
`U.S. Patent 8,887,308
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of this PETITIONER’S
`
`REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. § 42.71(d) has been
`
`served via electronic mail on the following counsel of record for Patent Owner:
`
`Isaac Rabicoff (isaac@rabilaw.com)
`Rabicoff Law LLC
`73 W Monroe St
`Chicago, IL 60603
`
`Dated: August 2, 2017
`
`Respectfully
`
`By: /Brian Michaelis/
`Brian Michaelis
`Registration No. 34,221
`Counsel for Petitioner
`
`14
`
`
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