UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMAZON.COM, INC., AMAZON DIGITAL SERVICES, INC., AMAZON
`FULFILLMENT SERVICES, INC., HULU, LLC, and NETFLIX, INC.,
`Petitioners,
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`
`CASE: IPR2017-00948
`Patent No. 8,566,960
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and MICHELLE N.
`WORMMEESTER, Administrative Patent Judges.
`
`PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMAZON.COM, INC., AMAZON DIGITAL SERVICES, INC., AMAZON
`FULFILLMENT SERVICES, INC., HULU, LLC, and NETFLIX, INC.,
`Petitioners,
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`
`CASE: IPR2017-00948
`Patent No. 8,566,960
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and MICHELLE N.
`WORMMEESTER, Administrative Patent Judges.
`
`PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`THE SUBSTITUTE CLAIMS ARE INELIGIBLE UNDER § 101..............1
`
`A.
`
`B.
`
`Uniloc’s Motion to Amend Did Not Address § 101, Despite a
`Prior Adverse Judgment on That Issue ................................................1
`
`The Proposed Substitute Claims Recite Patent-Ineligible
`Subject Matter Under § 101 .................................................................2
`
`1.
`
`2.
`
`The Substitute Claims Are Directed to an Abstract Idea...........3
`
`The Substitute Claims Lack an Inventive Concept
`Capable of Imparting Patent Eligibility.....................................9
`
`II.
`
`THE SUBSTITUTE CLAIMS ARE UNPATENTABLE UNDER
`§ 103 .............................................................................................................11
`
`A.
`
`B.
`
`C.
`
`D.
`
`Claim 26 Would Have Been Obvious Over DeMello and Hu...........13
`
`Claim 27 Would Have Been Obvious Over DeMello and Hu...........18
`
`Claim 28 Would Have Been Obvious Over DeMello and Hu...........19
`
`The Dependent Claims Would Remain Unpatentable Over the
`Prior Art..............................................................................................20
`
`THE SUBSTITUTE CLAIMS SHOULD BE REJECTED AS
`VIOLATING THE STATUTORY PROHIBITION AGAINST
`ENLARGING CLAIM SCOPE....................................................................21
`
`THE SUBSTITUTE CLAIMS ARE UNPATENTABLE DUE TO
`INDEFINITENESS ......................................................................................24
`
`III.
`
`IV.
`
`V.
`
`CONCLUSION.............................................................................................25
`
`-i-
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`Alice Corp. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014)..............................................................................3, 4, 5, 9
`
`PAGE(S)
`
`Amazon.com, Inc. v. Personalized Media Commc’ns, LLC,
`IPR2014-01530, Paper 55 (PTAB Mar. 24, 2016)...............................................1
`
`Aqua Products, Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) ............................................................................2
`
`Ariosa Diagnostics v. Isis Innovation Ltd.,
`IPR2012-00022, Paper 166 (PTAB Sept. 2, 2014) ..........................................1, 2
`
`Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
`687 F.3d 1266 (Fed. Cir. 2012) ............................................................................3
`
`Bilski v. Kappos,
`561 U.S. 593 (2010)..............................................................................................5
`
`buySAFE, Inc. v. Google, Inc.,
`765 F.3d 1350 (Fed. Cir. 2014) ............................................................................5
`
`Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.,
`776 F.3d 1343 (Fed. Cir. 2014) ............................................................................5
`
`CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011) ............................................................................6
`
`Elec. Power Grp., LLC v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016) ............................................................................7
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016) ............................................................................8
`
`Euro-Pro Operating LLC v. Acorne Enters., LLC,
`IPR2014-00351, Paper 38 (PTAB July 9, 2015)................................................24
`
`FairWarning IP, LLC v. Iatric Sys., Inc.,
`839 F.3d 1089 (Fed. Cir. 2016) ............................................................................7
`
`-ii-
`
`
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`In re Bennett,
`766 F.2d 524 (Fed. Cir. 1985) (en banc) ............................................................22
`
`In re Freeman,
`30 F.3d 1459 (Fed. Cir. 1994) ............................................................................22
`
`In re Packard,
`751 F.3d 1307 (Fed. Cir. 2014) ..........................................................................24
`
`In re TLI Commc’ns LLC,
`823 F.3d 607 (Fed. Cir. 2016) ..........................................................................8, 9
`
`Intellectual Ventures I LLC v. Capital One Fin. Corp.,
`850 F.3d 1332 (Fed. Cir. 2017) ....................................................................5, 8, 9
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)............................................................................................16
`
`Mortgage Grader, Inc. v. First Choice Loan Servs., Inc.,
`811 F.3d 1314 (Fed. Cir. 2016) ........................................................................5, 6
`
`Nippon Suisan Kaisha Ltd. v. Pronova Biopharma Norge, AS,
`PGR2017-00033, Paper 7 (PTAB Jan. 17, 2018)...............................................24
`
`OIP Techs., Inc. v. Amazon.com, Inc.,
`788 F.3d 1359 (Fed. Cir. 2015) ............................................................................5
`
`Pannu v. Storz Instruments, Inc.,
`258 F.3d 1366 (Fed. Cir. 2001) ..........................................................................23
`
`Smart Sys. Innovations, LLC v. Chicago Transit Auth.,
`873 F.3d 1364 (Fed. Cir. 2017) ............................................................................9
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`839 F.3d 1138 (Fed. Cir. 2016) ............................................................................5
`
`Thermalloy, Inc. v. Aavid Eng’g, Inc.,
`121 F.3d 691 (Fed. Cir. 1997) ............................................................................22
`
`-iii-
`
`
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC,
`874 F.3d 1329 (Fed. Cir. 2017) ............................................................................7
`
`Uniloc USA, Inc. v. Amazon.com, Inc.,
`243 F. Supp. 3d 797 (E.D. Tex. 2017)......................................................1, 3, 4, 9
`
`U.S. Dept. of Homeland Sec. v. Golden,
`IPR2014-00714, Paper 35 (PTAB Oct. 1, 2015)................................................22
`
`Versata Dev. Grp., Inc. v. SAP Am., Inc.,
`793 F.3d 1306 (Fed. Cir. 2015) ............................................................................5
`
`STATUTES
`
`35 U.S.C. § 101............................................................................................1, 2, 3, 11
`
`35 U.S.C. §§ 102(a), (b), and (e) .............................................................................12
`
`35 U.S.C. § 112, ¶ 2.................................................................................................24
`
`35 U.S.C. § 251........................................................................................................22
`
`35 U.S.C. § 305........................................................................................................22
`
`35 U.S.C. § 316(d)(3).........................................................................................21, 22
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.11 .......................................................................................................2
`
`37 C.F.R. § 42.121(a)(2)(ii)...............................................................................21, 24
`
`-iv-
`
`
`
`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
`
`Petitioners respectfully submit this Opposition to Patent Owner’s Contingent
`
`Motion to Amend (Paper 17) filed on January 5, 2018. The proposed substitute
`
`claims are unpatentable and violate the statutory limits on amendment practice dur-
`
`ing IPR proceedings. The motion should therefore be denied.
`
`5
`
`I.
`
`THE SUBSTITUTE CLAIMS ARE INELIGIBLE UNDER § 101.
`
`Uniloc’s motion should be denied because the substitute claims recite ineli-
`
`gible subject matter under 35 U.S.C. § 101. IPR petitions are restricted to anticipa-
`
`tion and obviousness, but when a patent owner moves to amend during an institut-
`
`ed IPR, the proposed substitute claims must satisfy all conditions for patentabil-
`
`10
`
`ity—including § 101. Amazon.com, Inc. v. Personalized Media Commc’ns, LLC,
`
`IPR2014-01530, Paper 55 at 45-54 (PTAB Mar. 24, 2016); Ariosa Diagnostics v.
`
`Isis Innovation Ltd., IPR2012-00022, Paper 166 at 50-53 (PTAB Sept. 2, 2014).
`
`In this case, the original claims of the ʼ960 Patent were held invalid under
`
`§ 101 in parallel district court proceedings, the motion to amend did nothing to ad-
`
`15
`
`dress the patent-eligibility problems underlying that judgment, and the substitute
`
`claims suffer the same deficiencies. The motion should therefore be denied.
`
`A.
`
`Uniloc’s Motion to Amend Did Not Address § 101, Despite a Prior
`Adverse Judgment on That Issue.
`
`On March 20, 2017—months before Uniloc filed its motion to amend—
`
`20
`
`every claim of the ʼ960 Patent was invalidated on § 101 grounds in district court.
`
`Uniloc USA, Inc. v. Amazon.com, Inc., 243 F. Supp. 3d 797 (E.D. Tex. 2017)
`
`-1-
`
`
`
`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
`
`(granting motion to dismiss under Fed. R. Civ. P. 12(b)(6)).1 Despite receiving
`
`clear notice of patent-eligibility concerns surrounding the ʼ960 Patent, Uniloc de-
`
`clined to address whether the substitute claims satisfy § 101 in its motion to amend.
`
`The Board should deny the motion for that reason alone. See Ariosa,
`
`5
`
`IPR2012-00022, Paper 166 at 52 (denying motion to amend where the patent own-
`
`er did not address a district court judgment of invalidity under § 101). After Aqua
`
`Products, Inc. v. Matal, 872 F.3d 1290, 1340-41 (Fed. Cir. 2017) (Reyna J., con-
`
`curring), Uniloc still bears the burden of production regarding patentability of the
`
`substitute claims. Uniloc has done nothing to carry that burden as to patent eligi-
`
`10
`
`bility. In addition, Uniloc had a duty under 37 C.F.R. § 42.11 to disclose infor-
`
`mation material to patentability in the motion to amend, which should have includ-
`
`ed the prior invalidity judgment under § 101. Under the circumstances, Uniloc’s
`
`motion should be denied for failing even to address patent eligibility.
`
`15
`
`B.
`
`The Proposed Substitute Claims Recite Patent-Ineligible Subject
`Matter Under § 101.
`
`The substitute claims do nothing to remedy the fundamental § 101 problems
`
`of original claims 1, 22, and 25. Under the Supreme Court’s two-part test for pa-
`
`tent eligibility, the analysis turns on whether the claims are directed to an abstract
`
`
`1 That case is now on appeal before the Federal Circuit. Uniloc USA, Inc. v.
`
`Amazon.com, Inc., No. 2017-2051 (Fed. Cir.).
`
`-2-
`
`
`
`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
`
`idea, and, if so, whether they contain an “inventive concept” sufficient to transform
`
`the claims into significantly more than the abstract idea itself. Alice Corp. v. CLS
`
`Bank Int’l, 134 S. Ct. 2347, 2355 (2014). Like the original claims, Uniloc’s substi-
`
`tute claims are directed to an abstract business concept—a license that adjusts over
`
`5
`
`time—and implement that abstract idea using generic computer components per-
`
`forming routine and conventional functions. The substitute claims are thus indis-
`
`tinguishable from those that have been consistently invalidated by the Federal Cir-
`
`cuit and the Supreme Court and should be rejected under § 101.
`
`The Substitute Claims Are Directed to an Abstract Idea.
`1.
`Under Alice step one, the district court recognized that the original claims of
`
`10
`
`the ʼ960 Patent were directed to the abstract idea of a time-adjustable license.
`
`Uniloc, 243 F. Supp. 3d at 803-04. Substitute claims 26-28 are directed to the
`
`same abstract idea, and the proposed amendments render them no less abstract.
`
`As a threshold matter, there is no meaningful distinction among the substi-
`
`15
`
`tute system, method, and “computer program product” claims. Those claims are
`
`substantively identical, and Uniloc’s motion consistently argues the substitute
`
`claims as a group. (See, e.g., Paper 17 at 3, 6, 9-18.) The claims should therefore
`
`be considered together for patent-eligibility purposes. See Alice, 134 S. Ct. at 2360
`
`(“[T]he system claims are no different from the method claims in substance.”);
`
`20
`
`Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266,
`
`-3-
`
`
`
`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
`
`1277 (Fed. Cir. 2012) (treating substantively identical system and method claims
`
`as equivalent for patent-eligibility purposes).
`
`As the district court recognized, licenses are “abstract exchanges of intangi-
`
`ble contractual obligations,” and licensing is a “fundamental economic practice.”
`
`5
`
`Uniloc, 243 F. Supp. 3d at 804. Each substitute claim recites “adjusting a license
`
`for a digital product over time,” reflecting the core abstract idea of a time-
`
`adjustable license. In addition, the written description consistently emphasizes that
`
`concept as the patent’s key innovation. (E.g., Ex. 2004 at 23 (Abstract) (describing
`
`techniques “for adjusting the number of devices allowed to use a digital product”
`
`10
`
`over different time periods); id. at 3:1-5 (“[V]arious aspects are described in con-
`
`nection with adjusting a license for a digital product over time.”); id. at 5:6-7 (“The
`
`techniques described herein allow for a changing number of device installations on
`
`a per license basis over time.”).) The claims thus articulate a business concept (ad-
`
`justing license terms over time) intended to solve a business problem (the changing
`
`15
`
`needs of licensees who use a licensed product on multiple devices). (See id. at
`
`1:26-2:7.) The substitute claims solve do not solve any technological problem;
`
`they are instead directed to an abstract “method of organizing human activity.”
`
`See Alice, 134 S. Ct. at 2356.
`
`In decision after decision, the Supreme Court and the Federal Circuit have
`
`20
`
`held that claims directed to business concepts and regulation of economic activities
`
`-4-
`
`
`
`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
`
`were directed to abstract ideas. E.g., Alice, 134 S. Ct. at 2355-57 (intermediated
`
`settlement of contracts); Bilski v. Kappos, 561 U.S. 593, 609-12 (2010) (hedging
`
`risk); Mortgage Grader, Inc. v. First Choice Loan Servs., Inc., 811 F.3d 1314,
`
`1324-25 (Fed. Cir. 2016) (anonymous loan shopping); Versata Dev. Grp., Inc. v.
`
`5
`
`SAP Am., Inc., 793 F.3d 1306, 1333-34 (Fed. Cir. 2015) (methods for setting pric-
`
`es); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367
`
`(Fed. Cir. 2015) (budgeting); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
`
`1362-63 (Fed. Cir. 2015) (price optimization); Content Extraction & Transmission
`
`LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (collecting
`
`10
`
`cases holding claims directed to the “formation and manipulation of economic rela-
`
`tions” or “financial transactions” abstract).
`
`The substitute claims are similarly directed to financial transactions and reg-
`
`ulating economic relationships. The substitute claims recite a generalized, non-
`
`technical approach to modifying the intangible economic rights and obligations of
`
`15
`
`parties to a license agreement. As the Federal Circuit has remarked of claims di-
`
`rected to similar business concepts, the substitute claims “do not push or even test”
`
`the boundaries of the abstract ideas exception. See buySAFE, Inc. v. Google, Inc.,
`
`765 F.3d 1350, 1354-55 (Fed. Cir. 2014).
`
`In fact, the claimed steps could be performed mentally or using pen and pa-
`
`20
`
`per. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed.
`
`-5-
`
`
`
`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
`
`Cir. 2016); see also Mortgage Grader, 811 F.3d at 1324 (“The series of steps cov-
`
`ered by the asserted claims … could all be performed by humans without a com-
`
`puter.”). For example, substitute claim 27 recites receiving a request comprising
`
`license data and a device identity, verifying the license data, determining whether
`
`5
`
`the device identity is on a record, allowing use if the device is on the record, or ad-
`
`justing the allowed copy count, calculating a device count, and allowing authorized
`
`use if the device count is below the limit. Each of those steps could be performed
`
`by a human using manual bookkeeping procedures and simple calculations: a hu-
`
`man could use a notebook and pen to maintain records of license data, allowed
`
`10
`
`copy counts, and devices authorized to use certain software, review those records
`
`upon receiving a request to add another device, compare license and device records
`
`to license and device identity data included in the request, and allow access for a
`
`previously recorded device or adjust the allowed copy count, compare the device
`
`count with the maximum number of permitted devices, and then grant or deny au-
`
`15
`
`thorization accordingly. (Ex. 1031 at ¶ 17.) The substitute claims do not require
`
`any specific computer technology. (Ex. 1031 at ¶¶ 14-19); see CyberSource Corp.
`
`v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
`
`In addition, the substitute claims provide no improvement in computer tech-
`
`nology or any other technical field. The substitute claims recite only basic steps
`
`20
`
`for implementing the abstract idea of time-adjustable licensing, described at a high
`
`-6-
`
`
`
`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
`
`level of generality. Substitute claim 27 is representative and recites receiving an
`
`authorization request comprising license data and a device identity, verifying the
`
`license data, determining whether the device identity is on a record, and (1) allow-
`
`ing the request, or (2) adjusting the allowed copy count, calculating the number of
`
`5
`
`authorized devices, and allowing the request if the number of authorized devices is
`
`less than the adjusted copy count. The recited limitations neither describe nor re-
`
`quire specialized technology, and any even arguably computer-related limitations
`
`at most involve the mere collection and manipulation of data, such as:
`
` receiving a request, sampling physical parameters, and determining whether
`
`10
`
`the device identity is currently on a record—all data collection;
`
` generating a device identity, verifying license data, temporarily adjusting the
`
`allowed copy count, and calculating a device count—all data manipulation.
`
`Claims that focus on data gathering and analysis without “inventive technology for
`
`performing those functions” are directed to abstract ideas. Elec. Power Grp., LLC
`
`15
`
`v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see also Two-Way Media
`
`Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337-38 (Fed. Cir. 2017);
`
`FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016).
`
`Substitute claims 26 and 28 recite the same steps in system or “computer
`
`program product” format with nominal references to generic computer technology.
`
`20
`
`For example, where claim 27 recites “receiving a request for authorization,” claim
`
`-7-
`
`
`
`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
`
`26 recites “a communication module for receiving a request,” and claim 28 recites
`
`“code for causing a computer to receive a request.” The computer technology re-
`
`cited in those and other limitations (e.g., “processor,” “memory”) “merely provide
`
`a generic environment in which to carry out the abstract idea” of adjusting a li-
`
`5
`
`cense over time. In re TLI Commc’ns LLC, 823 F.3d 607, 611 (Fed. Cir. 2016).
`
`The substitute claims thus do not improve specific functions of an existing device
`
`or provide a unique configuration of known components to achieve an improved
`
`result. They merely recite “generalized steps to be performed on a computer using
`
`conventional computer activity.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
`
`10
`
`1338 (Fed. Cir. 2016).
`
`Finally, the claims are no less abstract simply because they focus on adjust-
`
`ing licenses “for a digital product.” A license for any type of proprietary content
`
`could be adjusted over time by following the same basic steps recited in the substi-
`
`tute claims. Limiting the claims to licenses for digital products merely restricts the
`
`15
`
`field of use for that abstract concept, and “[s]uch limitations do not render an oth-
`
`erwise abstract concept any less abstract.” Intellectual Ventures I LLC v. Capital
`
`One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); see TLI, 823 F.3d at 613
`
`(“[A]lthough the claims limit the abstract idea to a particular environment … that
`
`does not make the claims any less abstract for the step 1 analysis.”).
`
`-8-
`
`
`
`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
`
`In short, the substitute claims fall squarely within what is now a long line of
`
`cases invalidating claims similarly directed to basic techniques for regulating eco-
`
`nomic activity. Under Alice step one, the substitute claims are directed to an ab-
`
`stract idea.
`
`5
`
`2.
`
`The Substitute Claims Lack an Inventive Concept Capable
`of Imparting Patent Eligibility.
`Under Alice step two, the use of generic, conventional computer technology
`
`“cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”
`
`134 S. Ct. at 2358. Upon considering the original claims, the district found noth-
`
`10
`
`ing more than generic and conventional computer functionality and concluded that
`
`those features did not support patent eligibility. Uniloc, 243 F. Supp. 3d at 806-08.
`
`The substitute claims likewise recite high-level, generalized steps directed to the
`
`abstract idea of a time-adjustable license using, at most, generic and conventional
`
`computer technology that falls well short of supplying an inventive concept.
`
`15
`
`The computer components recited in substitute claim 26 include a “commu-
`
`nication module,” a “processor module,” and a “memory module.” But such basic,
`
`universal technology signifies only generic computer implementation and cannot
`
`provide an inventive concept. (Ex. 1002 at ¶¶ 36, 75; Ex. 1031 at ¶ 15); See, e.g.,
`
`Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1374-75
`
`20
`
`(Fed. Cir. 2017); TLI, 823 F.3d at 614-15; Intellectual Ventures, 792 F.3d at 1368.
`
`Adding the word “module” does not make those components any less generic, es-
`
`-9-
`
`
`
`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
`
`pecially when the specification describes the “modules” in purely functional terms
`
`that do not connote specific structures (see, e.g., Ex. 2004 at 3:5-4:9, 11:14-13:6;
`
`Ex. 1002 at ¶ 36; Ex. 1031 at ¶ 15), and deprives the term of any specific meaning
`
`by stating that a “module” may “refer to a computer-related entity, either hardware,
`
`5
`
`firmware, a combination of hardware and software, software, or software in execu-
`
`tion” (Ex. 2004 at 16:29-31, 17:19-29). Substitute claims 27 and 28 fare no better.
`
`Claim 27 recites no hardware beyond a generic “device” seeking authorization, and
`
`claim 28 recites only computer-readable media and a generic computer. Put simp-
`
`ly, no substitute claim involves any inventive computer hardware or components.
`
`10
`
`(Ex. 1031 at ¶¶ 14, 19.)
`
`Likewise, a device identity generated at least in part by sampling physical
`
`parameters of the device is not an inventive concept. (Ex. 1031 at ¶ 20.) Nothing
`
`in the specification suggests that the idea of identifying a device using physical pa-
`
`rameters was original to the ’960 Patent. For example, the specification expressly
`
`15
`
`incorporates a prior art patent that discloses a DRM system that generated a unique
`
`ID for user devices based upon “system information,” such as CPU number, firm-
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`ware parameters, the amount of system memory, or processor type. (Ex. 2004 at
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`6:26-30 (incorporating U.S. Patent 5,490,216 (Ex. 1010)); Ex. 1010 at 12:12-19;
`
`Ex. 1031 at ¶¶ 21-22.)) Furthermore, the specification lists numerous other well-
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`20
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`known, conventional means for device identification that could be used inter-
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`-10-
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`
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`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
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`changeably in the substitute claims. (Ex. 2004 at 14:1-16:21; Ex. 1031 at ¶ 23.)
`
`Using well-known physical parameters of a computer for the conventional purpose
`
`of device identification is not inventive. (Ex. 1002 at ¶ 76; Ex. 1031 at ¶¶ 23-24.)
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`Nor is it inventive to communicate license data and device ID together rather than
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`5
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`sequentially (Ex. 1031 at ¶¶ 25-26), particularly where the specification expressly
`
`disclaims any specific order or hierarchy of steps as anything more than insignifi-
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`cant “design preferences.” (Ex. 2004 at 17:13-18.)
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`The substitute claims recite no specific or innovative use of computer tech-
`
`nology to carry out the otherwise abstract business practice of adjusting the terms
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`10
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`of a license over time. As such, they contain no inventive concept that can trans-
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`form the underlying abstract idea into a patent-eligible invention. The substitute
`
`claims are not patent eligible and should be rejected under § 101.
`
`II.
`
`THE SUBSTITUTE CLAIMS ARE UNPATENTABLE UNDER § 103.
`
`Uniloc’s motion should be denied for another independent reason—the sub-
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`15
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`stitute claims are unpatentable over the prior art. The motion purports to “clarify
`
`the meaning of the claims” by introducing several amendments. (Paper 17 at 1-3.)
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`As amended, the substitute claims nevertheless would have been obvious over the
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`-11-
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`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
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`prior art already of record, including U.S. Patent 7,047,411 (“DeMello”) (Ex. 1003)
`
`and U.S. Patent 7,752,139 (“Hu”) (Ex. 1026).2
`
`According to Uniloc, the substitute claims alter original claims 1, 22, and 25
`
`by: (1) requiring a request for authorization that includes license data and device
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`5
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`identity information, (2) requiring that the “device identity” is generated at the de-
`
`vice, (3) reciting the validity verification and record check as distinct requirements,
`
`and (4) specifying that setting the allowed copy count involves adjusting from a
`
`current number to a different number. (Paper 17 at 3.) Uniloc’s motion is contin-
`
`gent on the Board holding original claims 1, 22, and 25 anticipated by DeMello
`
`10
`
`and/or obvious over DeMello and published Irish Patent Application No. 020429
`
`(“Staruiala,” Ex. 1004)3 (Paper 17 at 1), as set forth under instituted Grounds 1 and
`
`3 (Paper 10 at 3). Because the motion assumes that all features of the original
`
`claims were known in and/or not patentably distinct over the prior art, this opposi-
`
`tion focuses primarily on the differences between the original and substitute claims.
`
`2 DeMello issued on May 16, 2006, from a U.S. patent application filed on June
`
`27, 2000, and qualifies as prior art under at least pre-AIA 35 U.S.C. §§ 102(a), (b),
`
`and (e). Hu issued on July 6, 2010, from a U.S. patent application filed on Decem-
`
`ber 27, 2005, and qualifies as prior art under at least pre-AIA § 102(e).
`
`3 Staruiala published on November 27, 2002 (Ex. 1004, 1011), and qualifies as
`
`prior art under pre-AIA § 102(b).
`
`-12-
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`
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`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
`
`A.
`
`Claim 26 Would Have Been Obvious Over DeMello and Hu.
`
`DeMello discloses a system for adjusting a license for a digital product over
`
`time, with at least one allowed copy count corresponding to a maximum number of
`
`authorized devices. (Ex. 1003 at Abstract, 1:66-2:3, 2:60-67; Ex. 1002 at ¶¶ 94-
`
`5
`
`101.) DeMello’s DRM system protects digital products, such as software. (Ex.
`
`1003 at 4:52-56.) The disclosed system includes a communication module for re-
`
`ceiving a request for authorization to use a digital product from a device. (Id. at
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`13:13-35, 13:62-65, 22:33-39, Fig. 4.) The system receives (1) user PASSPORT
`
`credentials, which are associated with the user’s rightfully acquired, licensed digi-
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`10
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`tal products (id. at 13:21-29, 22:33-46, 23:49-63), and (2) a unique hardware ID
`
`generated at the device and derived from physical parameters (hardware compo-
`
`nents) that uniquely identify the device (id. at 22:44-51; Ex. 1002 at ¶¶ 112-117;
`
`Ex. 1031 at ¶ 29). In some embodiments, DeMello discloses creating a unique ma-
`
`chine ID based on the hardware ID (Ex. 1003 at 13:62-66), but in other embodi-
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`15
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`ments DeMello uses the two ID terms interchangeably (Ex. 1003 at 30:9-11), and a
`
`POSITA would have understood that the unique machine ID stored on the server
`
`can be generated on and transmitted from the user device. (Ex. 1031 at ¶¶ 30-31,
`
`46.)
`
`Hu discloses another DRM system for managing digital product (software)
`
`20
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`licenses (Ex. 1026 at Abstract), in which license information is sent together with
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`-13-
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`
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`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
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`device identifying information in a single request during device authentication. In
`
`Hu’s system, the user creates a user account on a server, and the user account is as-
`
`sociated with a software license. (Id. at 6:6-31.) The user account is also associat-
`
`ed with user account authentication information to authenticate the user. (Id. at
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`5
`
`6:18-31.) The account authentication information conveys to the server whether
`
`the requesting user is licensed to use the software, so the account authentication
`
`information constitutes license data associated with the software. (Id. at 6:55-7:11;
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`Ex. 1031 at ¶ 34.) When the user requests authorization to run licensed software
`
`on a device—such as a computer—the device sends account authentication infor-
`
`10
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`mation to the server together with a “computer_id.” (Ex. 1026 at 6:31-39; Ex.
`
`1031 at ¶ 35.) The computer_id is generated at the computer at least in part by
`
`sampling physical parameters of the device, i.e., using “information that uniquely
`
`identifies the computer,” including physical parameters like a MAC address or “a
`
`basket of hardware identifiers such as motherboard and hard drive serial numbers.”
`
`15
`
`(Ex. 1026 at 6:31-39; Ex. 1031 ¶¶ 35, 47.) The system then determines whether to
`
`authorize the computer to use the licensed software based on the license and device
`
`information in the request. (Ex. 1026 at 6:55-7:10; Ex. 1031 at ¶ 36.)
`
`A POSITA would have been motivated to use Hu’s combined request that
`
`includes license and device identity information in the DeMello system to simplify
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`20
`
`the authentication process by eliminating an extra communication step. (Ex. 1031
`
`-14-
`
`
`
`Petitioners’ Opposition to Patent Owner’s Contingent Motion to Amend
`U.S. Patent No. 8,566,960
`
`at ¶¶ 43-44.) Like Hu, DeMello discloses that the device sends a license-
`
`associated user credential (PASSPORT) and a device identifier (hardware ID) gen-
`
`erated by sampling physical parameters of the device when requesting authoriza-
`
`tion to use a digital product. (Ex. 1031 at ¶ 40.) A POSITA would have recog-
`
`5
`
`nized that combining that information into a consolidated request for authorization,
`
`as disclosed by Hu, rather than sending the license and device identifying infor-
`
`mation separately would have streamlined and simplified the authentication proce-
`
`dure. (Ex. 1031 at ¶¶ 43-44.)
`
`Uniloc argues that DeMello’s machine ID “is not ‘generated at the given de-
`
`10
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`vice’ and included within ‘a request for authorization to use the digital product.’”
`
`(Paper 17 at 18.) If the Board concludes that DeMello does not disclose or suggest
`
`a request including a device identity generated at the device, the computer_id in
`
`Hu’s combined request would meet those requirements, as discussed above, and a
`
`POSITA would have been motivated to use the computer_id to identify and
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