UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`AMAZON.COM, INC., AMAZON DIGITAL SERVICES, INC., AMAZON
`FULFILLMENT SERVICES, INC., HULU, LLC, and NETFLIX, INC.,
`Petitioners
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`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-00948
`PATENT 8,566,960
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`PATENT OWNER’S CONTINGENT MOTION TO
`AMEND CLAIMS 1, 22, and 25 OF U.S. PATENT NO. 8,566,960
`UNDER 37 C.F.R. § 42.121
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
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`
`
`
`AMAZON.COM, INC., AMAZON DIGITAL SERVICES, INC., AMAZON
`FULFILLMENT SERVICES, INC., HULU, LLC, and NETFLIX, INC.,
`Petitioners
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
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`
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`IPR2017-00948
`PATENT 8,566,960
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`PATENT OWNER’S CONTINGENT MOTION TO
`AMEND CLAIMS 1, 22, and 25 OF U.S. PATENT NO. 8,566,960
`UNDER 37 C.F.R. § 42.121
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`TABLE OF CONTENTS
`
`STATEMENT OF RELIEF REQUESTED ………………………………1
`I.
`INTRODUCTION ………………………………………………………….1
`II.
`III. LISTING OF CLAIM AMENDMENTS ………………………………….1
`IV. SCOPE OF THE PROPOSED SUBSTITUTE CLAIMS ………………..2
`V.
`SUPPORT FOR THE PROPOSED SUBSTITUTE CLAIMS ………….4
`VI. THE PROPOSED SUBSTITUTE CLAIMS RESPOND TO A
`GROUND OF UNPATENTABILITY IN THE TRIAL …………………8
`A.
`The proposed amendment indisputably confirms that the
`recited validity verification and record check are distinct
`requirements. ………………………………………………………….8
`The proposed amendment indisputably confirms that the
`recited license data and device identity are distinct elements. ………..9
`The proposed amendment indisputably confirms that the
`independent claims require adjusting the allowed copy count .………9
`VII. PETITIONER HAS THE BURDEN TO PROVE
`UNPATENTABILITY ..…………………………………………………..11
`A.
`The conditional “adjusting” limitations are patentable ……………...12
`B.
`The multifaceted “request” limitations are patentable ..…………….15
`C.
`The “device identity” determination is patentable ……….………….17
`VIII. PATENT OWNER HAS SATISFIED ITS DUTY OF
`DISCLOSURE …………………………………………………………….19
`IX. CONCLUSION ……………………………………………………………20
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`B.
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`C.
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`IPR2017-00948
`U.S. Patent 8,566,960
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`ii
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`
`
`Exhibit No.
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`2001
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`2002
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`2003
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`2004
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`2005
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`IPR201 7-00948
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`US. Patent 8,566,960
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`UPDATED LIST OF EXHIBITS
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`Description
`
`Declaration of Dr. Val DiEuliis (previouslyfiled)
`
`Petitioner’s Motion before the District Court (previouslyfiled)
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`Application” (newlyfiled)
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`Dr. Rubin’s Deposition Transcript (newlyfiled)
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`US. Application Serial No. 12/272,570 or “the ’570
`Application” (newlyfiled)
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`US. Application Serial No. 60/988,778 or “the ’778
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`iii
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`U.S. Patent 8,566,960
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`I.
`
`STATEMENT OF RELIEF REQUESTED
`To the extent the Board finds independent claims 1, 22, or 25 unpatentable,
`Uniloc Luxembourg S.A. (“Patent Owner”) moves to amend U.S. Patent No.
`8,566,960 (“the ’960 patent”) by replacing the claim(s) deemed unpatentable with a
`corresponding one of the proposed substitute independent Claims 26, 27, or 28. See
`37 C.F.R. §§ 42.22(a)(2); 42.121; 35 U.S.C. § 316(d).
`
`II.
`
`INTRODUCTION
`The proposed substitute claims satisfy the statutory and regulatory
`requirements. No more than one substitute claim is proposed for each challenged
`claim. 37 C.F.R. § 42.121(a)(3). The proposed substitute claims do not enlarge the
`scope of the issued claims and do not introduce new matter. 37 C.F.R.
`§ 42.221(a)(2)(ii); 35 U.S.C. § 316(d)(3). The amendments simply clarify the
`meaning of the claims in a manner that is consistent with the description of the
`inventions in the specifications as originally filed. The amendments are responsive
`to a ground of unpatentability involved in the trial. 37 C.F.R. § 42.121.
`The Board verbally acknowledged that the scheduled conference call between
`the parties and the Board, which took place on November 8, 2017, satisfies Rule
`42.221. During the conference call, the Board confirmed that trial will continue to
`proceed pursuant to the Scheduling Order (Paper 11) entered in this matter on August
`14, 2017. This Motion is timely filed by Due Date 1 of the Scheduling Order.
`
`III. LISTING OF CLAIM AMENDMENTS
`The following is a complete listing of amendments with a correlation of the
`substitute claim to the original claim. See 37 C.F.R. § 42.121(b).
`
`1
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`Claims 1-25 (Instituted)
`Claim 26 (Proposed substitute for original independent Claim 1)
`Claim 27 (Proposed substitute for original independent Claim 22)
`Claim 28 (Proposed substitute for original independent Claim 25)
`Pursuant to 37 C.F.R. § 42.221(3)(b), Appendix A attached hereto provides
`a complete listing of proposed contingent claim amendments with a correlation of
`the substitute claims to the originally challenged claims. Patent Owner contingently
`proposes amendments affecting only challenged independent Claims 1, 22, and 25.
`No proposed amendments are made to any dependent claims. It is intended that the
`antecedent claims referenced in the dependent claims will reflect proper claim
`dependency if the proposed substitute claims are entered (e.g., if proposed Claim
`26 is entered, the dependent claims previously depending from Claim 1 will then
`depend, instead, from Claim 26, and so forth).
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`IV. SCOPE OF THE PROPOSED SUBSTITUTE CLAIMS
`Each proposed substitute claim corresponds to a respective claim originally
`challenged in the Petition, thereby satisfying the provision that “only one substitute
`claim would be needed to replace each challenged claim.” See 37 C.F.R.
`§ 42.121(a)(3). The proposed substitute claims do not enlarge the scope of the
`originally challenged claims or introduce new matter. 37 C.F.R. § 42.121(2)(ii); 35
`U.S.C. § 316(d)(3). Specifically, the claim language originally recited in the
`challenged Claims 1, 22, and 25 is recited in the proposed substitute Claims 26, 27,
`and 28, respectively, together with several clarifying amendments that do not
`enlarge claim scope.
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`2
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`First, the proposed substitute claims clarify that the received “request”
`includes both the “license data associated with the digital product” and the “device
`identity.”
`Second, the proposed substitute claims further clarify that the “device
`identity” is “generated at the given device.”
`Third, the proposed substitute claims expressly recite the additional
`limitation “in
`response
`to
`the
`license data being verified as valid,
`[determine/determining] whether the device identity is currently on a record.” This
`additional limitation (which is implicit in the originally challenged claims)
`indisputably confirms (consistent with the intrinsic specifications) that the recited
`validity verification and the record check are distinct requirements.
`Fourth, the proposed substitute claims also clarify that the “setting”
`limitations reflect the “adjusting” language introduced in the preamble. This is
`requirement is made explicit, for example, in the amended limitation “in response
`to the device identity not currently being on the record, temporarily adjust the
`
`allowed copy count from its current number to a different number by setting the
`allowed copy count to a first upper limit for a first time period ….” This proposed
`amendment resolves a claim construction dispute injected by Petitioner’s incorrect
`interpretation that none of the originally-challenged independent claims required
`any adjustment of the allowed copy count, notwithstanding the explicit “adjusting”
`language introduced in the preamble.
`Although these clarifying amendments are at least implicit in the originally
`challenged claims, the proposed substitute claims make these requirements
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`3
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`undeniably explicit. To the extent the scope is changed at all by these clarifying
`amendments, the scope can only be narrowed by their collective requirements.
`Accordingly, the proposed amendment does not “seek to enlarge the scope of the
`claims of the patent.” 37 C.F.R. § 42.121(2)(ii); see also 35 U.S.C. § 316(d)(3).
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`V.
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`SUPPORT FOR THE PROPOSED SUBSTITUTE CLAIMS
`To facilitate citations to the record, and pursuant to express permission
`received from the Board during the scheduled conference call between the Board
`and the parties, which took place on November 8, 2017, support for the proposed
`substitute claims is provided in tabular form in Appendix B. See 37 C.F.R.
`§§ 42.121(3)(b)(1-2). More specifically, Appendix B provides charts identifying
`adequate support for the proposed substitute claims in the form of citations to both
`the non-provisional application that issued as the ’948 patent (U.S. Application
`Serial No. 12/272,570 or “the ’570 Application”, attached hereto as Exhibit 2004)
`and the provisional application (U.S. Application Serial No. 60/988,778 or “the ’778
`Application”, attached hereto as Exhibit 2005), to which the non-provisional ’570
`Application claims priority under 35 U.S.C. § 119.
`While Appendix B is itself sufficient to satisfy the requirements of 37 C.F.R.
`§§ 42.121(3)(b)(1-2), to assist the Board, Patent Owner provides the following
`explanatory overview of the citations set forth in Appendix B. For the sake of
`brevity, the following overview focuses on the non-provisional ’570 Application,
`though analogous (if not identical) disclosure is also included within the provisional
`’778 Application, as shown by the parallel citations provided in Exhibit B.
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`The specification of the non-provisional ’570 Application includes teachings
`that describe, with reference to Figure 2, the distinction between the validity
`verification of license data and the record check. Figure 2 is a flowchart illustrating
`“an exemplary approach for adjusting a license for a digital product.” EX2004, 4:21-
`22. A portion of Figure 2 is copied below for the convenience of the Board.
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`
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`As shown in the portion of Figure 2 copied above, in certain embodiments the
`algorithmic structure involves responding to a request for authorization by executing
`multiple and distinct determinations, which ultimately control whether a digital
`product is allowed to run on the requesting device.
`In the illustrated example, “the device 50 requesting authorization collects
`license related information 10 and unique device identifying information 11,
`compiles the collected information into a communication and sends it to the
`authorization authority 55.” (EX2004, 7:4-6; Figure 2, steps 10-12.) The ’570
`Application characterizes the communication received from device 50 as a “request
`for authorization 12.” (7:13; Figure 2, steps 10-12.) These teachings (among others)
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`provide sufficient support for the recitation “… the request comprising: license data
`associated with the digital product; and a device identity generated at the given
`device at least in part by sampling physical parameters of the given device ….”
`Upon receipt of the request for authorization 12, “the license authority 55
`checks that the license information is valid (step 13).” (7:6-8; Figure 2, step 13.) If
`the validity verification fails, the digital product is not allowed to run and the process
`terminates. (7:8-12; Figure 2, step 14.) These teachings (among others) concerning
`the validity verification provide sufficient support for the recitation “verify that the
`license data associated with the digital product is valid ….”
`If the validity verification passes, certain identity information of the
`requesting device is checked to see if it currently exists in a database of
`authorizations. (7:13-21; Figure 2, step 15.) If the identity information is currently
`on record, authorization of the digital product is automatically allowed. (7:13-21;
`Figure 2, steps 16-18.) If the identity information is not on record, however, then the
`allowed copy count may be adjusted for a limited time to accommodate a reasonable
`and legitimate request. (5:21-26; 7:22-25; Figure 2, step 19.)
`The ’570 Application teaches various embodiments for conditionally
`adjusting an allowed copy count of a license from its current value to a different
`value for a limited time period. According to one example, a “license may state that
`the publisher authorizes the user to use their software on up to, for example, five
`devices, but that the publisher reserves the right to increase this limit at their own
`discretion.” (5:11-13.) Within weeks of the purchase the licensed user reasonably
`seeks to exceed the five-device limit by one. (5:13-26.) The ’570 Application
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`discloses temporarily adjusting the allowed copy count upward, such that the sixth
`uniquely-identified device requesting to operate the software “may be allowed to run
`even though the publisher[’]s stated device limit per license is five.” (Id.) In another
`embodiment, the ’960 Patent teaches that certain circumstances may warrant
`temporarily decreasing (i.e., adjusting) the discretionary limit allowed for in the
`license, such as upon detection of individual instances of copy abuse. (9:23-27.)
`The above example teachings (among others) provide sufficient support for
`the recitations “in response to the license data being verified as valid, determine
`whether the device identity is currently on a record …” and “in response to the device
`identity not currently being on the record, temporarily adjust the allowed copy count
`from its current number to a different number by setting the allowed copy count to
`a first upper limit for a first time period ….”
`It is also worth noting that Exhibit B provides several citations to the
`independent claims themselves, as originally filed in the ’570 Application. (18:1-
`22:27.) This is because both the independent claims that issued and the proposed
`substitute claims largely consist of language recited (nearly verbatim) in
`corresponding independent claims of the ’570 Application as originally filed. (Id.)
`It is now well accepted that a satisfactory written description under 35 U.S.C. § 112
`may be found entirely within the claims as originally filed. See M.P.E.P. § 2163
`(citing In re Koller, 613 F.2d 819, 204 USPQ 702 (CCPA 1980) (original claims
`constitute their own description); accord In re Gardner, 475 F.2d 1389, 177 USPQ
`396 (CCPA 1973); accord In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA
`1976). Moreover, the U.S. Patent Office has already determined the claim language
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`of the issued claims (and consequently the same verbatim language appearing the
`proposed substitute claims) to be have adequate written description support; and, in
`any event, the limited scope of inter partes review does not allow Petitioner to
`present a § 112 challenge to the claim language as originally issued.
`
`VI. THE PROPOSED SUBSTITUTE CLAIMS RESPOND TO A GROUND
`OF UNPATENTABILITY IN THE TRIAL
`The Federal Circuit recently instructed in Aqua Products, Inc. v. Matal1 that
`“Rule 42.121(a)(2)(i) merely requires the patent owner to show that its proposed
`amendment is responsive to at least one ground of unpatentability at issue in the
`IPR.” Aqua Prod., 872 F.3d at 1317 (emphasis added). The Federal Circuit noted
`that “the PTO explained to the public that this requirement was merely to ensure that
`the proposed amendment had a minimal level of relevancy to the IPR.” Id. (emphasis
`added). The proposed amendment directly addresses and resolves several claim
`construction disputes (injected by the Petition) which affect all grounds upon which
`trial has been instituted. This clearly satisfies Rule 42.121(a)(2)(i).
`
`A. The proposed amendment indisputably confirms that the recited
`validity verification and record check are distinct requirements.
`In addressing the claims as issued in the ’960 patent, the Petition
`impermissibly conflates the recitation “[verify/verifying] that a license data
`associated with the digital product is valid …” with the expressly distinguished
`conditional responses based, instead, on whether the “device identity” is “on a
`record.” See, e.g., Pet. 27-28. Those distinct determinations involving expressly
`
`1 No. 2015-1177, 2017 WL 4399000, 872 F.3d 1290 (Fed. Cir. Oct. 4, 2017) (“Aqua
`Products”).
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`8
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`distinguished inquiries and elements cannot reasonably be construed as one and the
`same, as Petitioner at least implicitly argues. See Declaration of Dr. DiEuliis
`(previously filed as Ex. 2001, hereinafter “EX2001”) at ¶ 58.
`To conclusively resolve this dispute, the proposed substitute claims expressly
`recite the additional limitation “in response to the license data being verified as valid,
`[determine/determining] whether the device identity is currently on a record.” This
`additional limitation (which is implicit in the originally challenged claims)
`indisputably confirms (consistent with the specifications) that the recited validity
`verification and the record check are distinct requirements. Notably, this
`clarification in the proposed amendment is also consistent with the Board’s
`observation that “Figure 2 [of the ’960 patent] shows step 13 (‘License Info
`checked’) and steps 15 and 16 (‘Authorization Database consulted,’ ‘Is device
`identity on record?’) as separate tests.” Paper 10 (Institution Decision) at 9.
`
`B.
`
`The proposed amendment indisputably confirms that the recited
`license data and device identity are distinct elements.
`To further clarify that the recited validity verification and the record check are
`distinct inquiries concerning different elements, and thereby further address the
`dispute injected by the Petition, the proposed amendment also recites that the
`received “request” includes both the “license data associated with the digital
`product” and the “device identity.”
`
`C. The proposed amendment
`indisputably confirms that the
`independent claims require adjusting the allowed copy count.
`The Petition compounds its claim construction error in its refusal to
`acknowledge that the “set(ting)” limitations (in the originally issued claims) refer to
`
`9
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`an adjustment of the allowed copy count (i.e., from its current number to another
`number). In reaching its erroneous interpretation, Petitioner turns a blind eye to the
`introductory language in the preambles of the independent claims and paradoxically
`argues the claimed “[system / method] for adjusting” requires no adjusting
`whatsoever.
`Notably, the testifying experts in this matter appear to agree the independent
`claims (as originally issued) require adjusting the allowed copy count in the
`“set(ting)” limitations. For example, Dr. DiEuliis and Dr. Rubin both observed that
`the preamble of independent claim 22 confirms to a person of ordinary skill in the
`art that the claimed method is used for adjusting a license in terms of its allowed
`copy count. Compare EX2001 (Dr. DiEuliis Dec.) ¶¶ 43−46 with EX1002 (Dr.
`Rubin Dec.) at ¶ 70. Moreover, Dr. Rubin testified at his deposition that claim 1 (as
`issued in the ’960 patent) requires “adjusting” by conditionally setting the allowed
`copy count to a first upper limit:
`Q: Can you tell me if there is any adjusting occurring in claim 1?
`MR. SHVODIAN: Same objections. Vague.2
`THE WITNESS: … the second in response to limitation shows
`an adjustment.
`Q: And what is being adjusted in that limitation?
`MR. SHVODIAN: Same objections.
`THE WITNESS: The allowed copy count.
`
`2 As the transcript shows, throughout the deposition of Dr. Rubin, counsel for
`Petitioner, Mr. Shvoidian, repeatedly lodged improper coaching objections, such as
`the “vague” signal to the witness here. See Office Patent Trial Practice Guide,
`Federal Register, Vol. 77, Issue No. 157 (Aug. 14, 2012), Appendix D (“Examples
`of objections that would not be proper are: ‘‘… ‘‘Objection, vague’’ ….’).
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`Q: And can you tell me how the allowed copy count is being
`adjusted?
`A: It’s being set to a first upper limit.
`EX2003, 19:12‒20:9.
`While Patent Owner maintains that the claims as issued in the ’960 patent at
`least implicitly require a form of adjusting, to conclusively resolve this claim
`construction dispute, the proposed substitute claims indisputably clarify that the
`“setting” limitations reflect the “adjusting” language introduced in the preamble.
`This requirement is made explicit, for example, in the amended limitation “in
`response to the device identity not currently being on the record, temporarily adjust
`the allowed copy count from its current number to a different number by setting the
`allowed copy count to a first upper limit for a first time period ….”
`
`VII. PETITIONER HAS THE BURDEN TO PROVE UNPATENTABILITY
`The Federal Circuit instructed in Aqua Prod. that once the patent owner meets
`its burden of showing its amendment is non-broadening, supported, and responsive
`to a ground already at issue, the petitioner must satisfy its burden to prove
`unpatentability of the amended claims. Aqua Prod., 872 F.3d at 1305-06, 1308.
`Here, Petitioner has yet to come forward with any challenge addressing the
`patentability of the proposed substitute claims; and Patent Owner cannot reasonably
`be expected to speculate now what Petitioner might argue on the issue of
`patentability. Nevertheless, Patent Owner notes that the art of record is admittedly
`deficient with respect to the proposed substitute claims for several independent
`reasons.
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`11
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`The Board instituted trial on the following grounds presented in the Petition:
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`IPR20 1 7-00948
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`US. Patent 8,566,960
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`m Reference<s>
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`16-18, 22—25 6-7, 11-12, 15-16
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`1—5, 7—10, 12—14,
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`102
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`DeMeIIo3
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`DeMelIo and alleged knowledge of POSITA
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`DeMe/Io and Stamiala“
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`As explained above,
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`the deficiencies of the Petition are largely derived from
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`Petitioner’s erroneous claim constructions. The present amendment reinforces and
`
`clarifies Patent Owner’s original interpretation of the claims and, consequently,
`
`further emphasizes the deficiencies in the Petition with respect to its application of
`
`the references cited therein. Example substantive deficiencies are explained below.5
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`A.
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`The conditional “adjusting” limitations are patentable.
`
`The art of record, either alone or in combination, does not disclose or suggest
`
`“in response to the device identity not currently being on the record, temporarily
`
`adjust the allowed copy count from its current number to a different number by
`
`setting the allowed copy count to a first upper limit for a first time period
`
`The
`
`proposed substitute claims make clear that the “setting” limitations require an
`
`adjustment of the allowed copy count (i-e., from its current number to different
`
`number). This limitation explicitly reflects the contextual phrase introduce in the
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`3 EX1002, US. Patent No. 7,047,411 (“DeMeI/o”).
`4 EX1004, Irish Patent Application No. 2002/0429 (“Staruiala”).
`5 The example deficiencies identified herein are not meant to be exhaustive. Given
`that Petitioner has the burden to prove unpatentability, Patent Owner expressly
`reserves the right to fully address and rebut whatever arguments of unpatentability
`Petitioner presents in its forthcoming response.
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`preamble: “[a method / system / computer program product] for adjusting ….” The
`references of record do not teach such a conditional and temporary adjustment.
`The Petition identifies no such adjusting in applying the cited references
`against the independent claims as issued in the ’960 patent. Rather, in addressing the
`claim language as issued, the Petition argues the claimed “first time period begins
`on the date of first activation [and] requires the device limit to be set for the first
`time period at the time of first activation.” Pet. 30. In other words, the Petition argues
`the “set(ting)” limitations recited in the independent claims (as issued) require no
`adjustment whatsoever of the allowed copy count. Based on this erroneous
`construction, the Petition points exclusively to DeMello’s alleged teaching of “the
`initial setting of the device authorization limit to five devices.” Id. at 30‒31.
`Petitioner proposed the same erroneous claim construction in district court
`and, in so doing, offered party admissions that are relevant to the present discussion.
`There, Petitioner argued that “‘adjusting’ in the context of the alleged invention
`refers to changing the device limit from one level (for example five devices for the
`first five days) to another level (seven devices for the next 25 days) (’960 patent at
`4:27‒31), which was only recited in some of the dependent claims (see, e.g., id. at
`12:42‒51 (claim 9)).” Uniloc USA, Inc. et al. v. Amazon.com, Inc. et al., No. 2:16-
`cv-00570-RWS, Dkt. 119 at 12 (E.D.T.X May 5, 2017) (previously filed in this
`matter as Exhibit 2002, hereinafter “EX2002”) (emphasis added).6 Referring to the
`independent claims as issued in the ’960 patent, Petitioner further argued before the
`
`
`6 The quoted statement made by Petitioner in its briefing before the district court is
`offered here as a binding party admission under Federal Rule of Evidence 801(d)(2).
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`district court that “no reasonable litigant would argue that a limit is ‘adjusted’ when
`it is ‘newly set’ for the first time.” Id.7 Thus, according to Petitioner, an adjustment
`of a limit from one number to another number is distinguishable from initializing a
`limit for the first time.
`Accordingly, Petitioner has conceded, including by its own party admissions
`that an “initial setting” of a limit is not an adjustment of that limit, that its application
`of the cited references does not disclose or suggest “in response to the device identity
`not currently being on the record, temporarily adjust the allowed copy count from
`its current number to a different number by setting the allowed copy count to a first
`upper limit for a first time period”, as recited in the proposed substitute claims.
`Petitioner cannot cure this conceded deficiency of the references of record by
`applying, instead, the arguments it had previously presented against the dependent
`claims. One readily-apparent distinction between DeMello and the “adjusting”
`limitations (among others) is DeMello’s reliance on a predetermined and static
`schedule of activation limits. See, e.g., EX1004 2:61-65 (“the number of devices that
`a particular persona may activate may be limited by rate and or by number (e.g., five
`activations within a first 90[-]day period, followed by an additional activation for
`every subsequent 90 day period, up to a maximum often activations).”). Increasing
`the activation limit according to a predetermined, fixed schedule is distinguishable
`from conditionally and temporarily adjusting the allowed copy count from its current
`number to a different number in response to a determination of whether a device
`identity is on a record, which is an event that may randomly, if ever, occur.
`
`7 See notes 6 and 7, supra.
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`Notably, the conditional nature of the “adjusting” was successfully
`emphasized as a point of novelty during prosecution. In addressing much of the same
`claim language at issue here, Applicant explained the following:
`
`The first sub-element (in response to the device identity not being
`on the record) sets up a condition that is required for the
`execution of the second sub-element (set the allowed copy count
`to a first upper limit for a first time period). The cause-and-effect
`relationship of these two sub-elements cannot be ignored in the
`obviousness inquiry.
`EX1002, p. 32 (emphasis original). Applicant successfully distinguished this
`claimed “cause-and-effect relationship” from art (like DeMello) that, instead, only
`increases limits according to a preset schedule. Id.
`Staruiala does not cure the deficiency of DeMello concerning the “adjusting”
`limitations. The Petition does not argue otherwise. Rather, the Petition cites to
`Staruiala only when addressing the requirement that a “device identity” must be
`generated by sampling physical parameters of the given device.
`For at least the foregoing reasons, the DeMello and Staruiala references,
`either alone or in combination, do not disclosure or suggest “in response to the device
`identity not currently being on the record, temporarily adjust the allowed copy count
`from its current number to a different number by setting the allowed copy count to
`a first upper limit for a first time period ….”
`
`B.
` The multifaceted “request” limitations are patentable.
`The references of record do not disclose or suggest a received “request for
`authorization to use the digital product” that includes both the “license data
`
`15
`
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`IPR2017-00948
`U.S. Patent 8,566,960
`
`associated with the digital product” and the “device identity,” as recited in the
`proposed substitute claims.
`The Petition appears to rely on DeMello’s PASSPORT ID and Hardware ID
`as allegedly disclosing the claimed “license data” and “device identity,”
`respectively. Pet. 27-28. In presenting that challenge, Petitioner concedes that
`DeMello does not disclose providing both the PASSPORT ID and the Hardware ID
`in a “request for authorization to use the digital product” as claimed. Id. (pointing to
`discrete steps in DeMello). The portion of DeMello cited in the Petition discloses the
`following:
`
`Once user’s PASSPORT™ credentials are authenticated (step
`156), a PASSPORT™ API is queried for the user alias and e-
`mail address (step 158). Thereafter, at steps 160-162, the
`activation servers 94 will request that the client (via the ActiveX
`control) upload a unique hardware ID (e.g., which, as noted
`above, may be derived from hardware components on the user's
`computing device which substantially uniquely identify the
`user’s computing device). Next, it is determined at step 164 if
`this is a new activation for the reader (as opposed to a “recovery”
`of a prior activation).
`EX1003 at 22:44-53 (emphasis added). DeMello does not disclose or suggest in the
`quoted passage above (or elsewhere) a “request for authorization to use the digital
`product” that includes both the PASSPORT ID and the Hardware ID.
`
`Yet another related deficiency of the Petition is the failure to explain how
`DeMello’s PASSORT ID is “license data,” let alone “license data associated with
`
`16
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`
`
`IPR2017-00948
`U.S. Patent 8,566,960
`
`the digital product.”8 DeMello describes (including in the block quotation above) its
`PASSPORT ID as a login credentials associated with a user in general. See, e.g.,
`EX1003 at 22:44-53. The Petition makes no attempt to explain how that description
`satisfies the claimed “license data associated with a digital product.”
`Staruiala does not cure the deficiency of DeMello concerning the “request”
`limitations; and the Petition does not suggest otherwise. For at least the foregoing
`reasons, the DeMello and Staruiala references, either alone or in combination, do
`not disclosure or suggest a received “request for authorization to use the digital
`product” that includes both the “license data associated with the digital product” and
`the “device identity,” as recited in the proposed substitute claims.
`
`C. The conditional “device identity” determination is patentable.
`The references of record do not disclose or suggest “in response to the license
`data being verified as valid, [determine / determining] whether the device identity is
`currently on a record.” In the proposed substitute claims “the device identity” has
`antecedent basis in the “request for authorization to use the digital product,” which
`defines “the device identity” as being “generated at the given device at least in part
`by sampling physical parameters of the given device.”
`The Petition impermissibly conflates together what DeMello expressly
`distinguishes—namely, the Hardware ID and the distinct server-generated Machine
`ID. Pet. 27-28. According to Petitioner, “[t]he activation server (94) enforces the
`
`8 This deficiency also taints reliance on the references of record for the recitations
`“verify that the license data associated with the digital product is valid” and “in
`response to the license data being verified as valid,” as recited in the proposed
`substitute claims.
`
`17
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`
`
`IPR2017-00948
`U.S. Patent 8,566,960
`
`limit on activations by storing a list of all the activations that a particular user ID has
`re-quested and checking, when a reactivation request is made, whether ‘the machine
`ID (e.g., the unique number that ties the secure repository to the hardware hosting 5
`the reader) is the same.’ (Id. at 25:1
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