Paper No. 10
`Trials@uspto.gov
`Entered: August 14, 2017
`571-272-7822
`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,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00948
`Patent 8,566,960 B2
`____________
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
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`IPR2017-00948
`Patent 8,566,960 B2
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`I. INTRODUCTION
`
`A. Background
`Amazon.com, Inc., Amazon Digital Services, Inc., Amazon
`Fulfillment Services, Inc., Hulu, LLC, And Netflix, Inc. (collectively
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an inter partes
`review of claims 1–25 of U.S. Patent No. 8,566,960 B2 (Ex. 1001, “the ’960
`patent”). Uniloc Luxembourg S.A. (“Patent Owner”) filed a Preliminary
`Response (Paper 9, “Prelim. Resp.”). Upon consideration of the Petition and
`Preliminary Response, we conclude, under 35 U.S.C. § 314(a), that
`Petitioner has established a reasonable likelihood that it would prevail with
`respect to each of the challenged claims. Accordingly, we institute an inter
`partes review of claims 1–25 of the ’960 patent.
`
`B. Related Matters
`The parties indicate that the ’960 patent has been asserted in several
`lawsuits in the United States District Court for the Eastern District of Texas.
`Pet. 2–3; Paper 6, 2. The ’960 patent also was the subject of Unified Patents
`Inc. v. Uniloc USA, Inc., Case IPR2016-01271 (PTAB). Pet. 3.
`
`C. Evidence Relied Upon
`Petitioner relies on the following prior art:
`May 16, 2006
`
`Ex. 1003 (“DeMello”) US 7,047,411 B1
`Nov. 27, 2002
`
`Ex. 1004 (“Staruiala,”)
`IE 02/0429
`Petitioner also relies on the Declaration of Aviel Rubin, Ph.D.
`
`(Ex. 1002, “Rubin Decl.”).
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`Patent 8,566,960 B2
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`Patent Owner relies on the Declaration of Val DiEuliis, Ph.D.
`
`(Ex. 2001, “DiEuliis Decl.”).
`
`
`D. The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability (Pet. 5):
`Reference(s)
`Basis
`Claims Challenged
`1–5, 7–10, 12–14,
`16–18, and 22–25
`
`§ 102(b)
`
`DeMello
`
`DeMello
`
`§ 103(a)
`
`6, 7, 11, 12, 15, and
`16
`
`1–25
`
`§ 103(a)
`
`DeMello and Staruiala
`
`E. The ’960 Patent
`The ’960 patent describes techniques for monitoring and adjusting
`software usage under software licenses. Ex. 1001, 1:16–20. The ’960 patent
`discusses problems with existing software licensing schemes, including that
`“consumers of software have normal patterns of use that include the
`installation and use of digital products on multiple devices” and that
`“computers are also bought, sold and replaced so over time maybe two or
`three times this number of computers may be used by the user over time
`with a legitimate need to install and use the software on every computer.”
`Id. at 1:31–41. The ’960 patent addresses these problems with “an improved
`technique for allowing for a changing number of device installations on a
`per license basis over time.” Id. at 1:67–2:2.
`Figure 2, reproduced below, illustrates an example:
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`Patent 8,566,960 B2
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`Figure 2 is a flowchart for an approach to adjusting a license for a digital
`product. Id. at 3:20–21. In Figure 2, device 50 requests authorization from
`
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`licensing authority 55 (e.g., a publisher or distributor) to use a copy of a
`software license. Id. at 4:50–55.
`Device 50 gathers information about itself, including license related
`information 10 and unique device identifying information 11, and sends a
`request for authorization 12 to licensing authority 55. Id. at 4:56–59.
`Licensing authority 55 checks whether the requesting device’s unique
`identifying information 11 exists in its database of prior authorizations 15
`and, if so, reauthorizes device 50 and allows the software to run on the
`device. Id. at 5:1–12 (steps 13–18).
`If unique identifying information 11 is not in its database of prior
`authorizations 15, and if the request comes within the first five days of the
`licensing period, licensing authority 55 determines a device count of the
`number of successful authorizations for new devices that have been allowed
`and, if the device count is less than a device count limit of five, licensing
`authority 55 sends device 50 a message allowing the software to be used.
`Id. at 5:13–26 (steps 18–19). If the device count is equal to five, licensing
`authority 55 can send a message to device 50 allowing the device to run, but
`also informing the user that the limit on available devices has been reached
`and that subsequent requests may be denied. Id. at 5:26–32 (step 22). If the
`device count is greater than five (step 23), licensing authority 55 sends a
`message to device 50 denying authorization (step 24). Id. at 5:33–40.
`If request 12 comes between six and thirty-one days from the first
`successful authorization, licensing authority 55 performs similar tests, this
`time with a device count limit of seven. Id. at 5:41–60 (steps 19–33).
`Likewise, if request 12 comes after thirty-one days, licensing authority 55
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`performs similar tests with a device count limit of eleven. Id. at 5:61–6:7
`(steps 34–41).
`Claim 1, reproduced below, is illustrative of the claimed subject
`matter:
`
`A system for adjusting a license for a digital product
`1.
`over time, the license comprising at least one allowed copy count
`corresponding to a maximum number of devices authorized for
`use with the digital product, comprising:
`a communication module for receiving a request for
`authorization to use the digital product from a given
`device;
`a processor module in operative communication with the
`communication module;
`a memory module in operative communication with the
`processor module and comprising executable code
`for the processor module to:
`verify that a license data associated with the digital
`product is valid based at least in part on a device
`identity generated by sampling physical parameters
`of the given device;
`in response to the device identity already being on a
`record, allow the digital product to be used on the
`given device;
`in response to the device identity not being on the record,
`set the allowed copy count to a first upper limit for
`a first time period, the allowed copy count
`corresponding to a maximum number of devices
`authorized to use the digital product;
`calculate a device count corresponding to total number of
`devices already authorized for use with the digital
`product; and
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`when the calculated device count is less than the first
`upper limit, allow the digital product to be used on
`the given device.
`
`
`
`II. ANALYSIS
`Claim Construction
`A.
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–45 (2016). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007).
`
`
`1. “verify[ing] that a license data associated with the digital
`product is valid based at least in part on a device identity
`generated by sampling physical parameters of the [given
`device/computer]” (claims 1, 22, 25)
`Claim 1 recites “verify that a license data associated with the digital
`product is valid based at least in part on a device identity generated by
`sampling physical parameters of the given device” (“the ‘verify’
`limitation”). That recitation is followed by two clauses, “in response to the
`device identity already being on a record, allow the digital product to be
`used on the given device” and “in response to the device identity not being
`on the record, set the allowed copy count to a first upper limit for a first time
`period.” Independent claims 22 and 25 include similar recitations.
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`Although neither party proposes an express construction for the “verify”
`limitation, the parties’ respective application of this language to the prior art
`reveals a dispute.
`As explained in more detail below, Petitioner contends that this
`limitation is disclosed by DeMello’s description of an activation server
`checking whether a machine ID (derived from hardware information) is on
`record in an activation database as activated for a Microsoft Passport ID
`associated with a user and the user’s eBook licenses. Pet. 27–28. Thus,
`Petitioner contends that verifying license data based in part on a device
`identity encompasses determining whether the device identity is on record as
`activated for data associated with a license. Petitioner, then, ties claim 1’s
`“verify” limitation to the following two limitations, “in response to the
`device identity already being on a record . . .” and “in response to the device
`identity not being on the record . . . .” In other words, Petitioner essentially
`contends that the “verify” limitation sets forth a test and that the two “in
`response to” limitations set forth alternative actions taken depending on the
`result of the test.
`Patent Owner disagrees that the “verify” limitation should be
`associated with the “in response to” limitations, and argues that “Petitioner
`erroneously conflates the claimed verification of the validity of ‘license
`data’ with the separately claimed conditional responses based, instead, on
`whether or not the ‘device identity’ is presently ‘on a record.’” Prelim.
`Resp. 19. Patent Owner (id. at 20) argues that the ’960 patent’s specification
`supports its position, quoting it at length, which we also reproduce here:
`Typically the device 50 requesting authorization collects license
`related information 10 and unique device identifying information
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`11, compiles the collected information into a communication and
`sends it to the authorization authority 55. Upon receipt of this
`communication from the device 50, the license authority 55
`checks that the license information is valid (step 13). If the
`request fails, an authorization is disallowed (step 14) and the
`device based software is sent a message to this effect. In practice
`this may involve further action by the device based software to
`notify the user of the failure to authorize and then either
`terminate the software or allow the software to continue in some
`form of trial mode or the like.
`license
`includes
`If
`the
`request
`for authorization 12
`information/data that is valid, the license information checking
`process (at step 13) will pass and the requesting device[’]s unique
`identity information 11 is checked to see if it exists in the
`database of prior authorizations 15. If the device identity exists
`(step 16), meaning that the software has been successfully
`registered on the same device in the past, then according to the
`license
`terms 60 for
`the software a reauthorization
`is
`automatically allowed (step 17).
`Ex. 1001, 4:56–5:13. Patent Owner argues that this description, and the
`corresponding depiction in Figure 2 (reproduced above), “expressly
`distinguishes the validity check (e.g., step 13) from the separate
`determination of whether the device identity is presently on record (e.g.,
`step 16).” Prelim. Resp. 21.
`We agree with Patent Owner that the specification is informative,
`although we do not reach Patent Owner’s conclusion. Patent Owner is
`correct that Figure 2 shows step 13 (“License Info checked”) and steps 15
`and 16 (“Authorization Database consulted,” “Is device identity on record?”)
`as separate tests. Nevertheless, it is only the second test, corresponding to
`steps 15 and 16, that is based at least in part on a device identity. According
`to the quoted passage, a device seeking authorization to play content
`associated with a license sends both license information and unique device
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`information to an authorization authority. At step 13, “the license authority
`55 checks that the license information is valid,” but there is no description of
`including device information in this check. Ex. 1001, 4:60–62. Device
`information is checked only after step 13: “If the request for authorization 12
`includes license information/data that is valid, the license information
`checking process (at step 13) will pass and the requesting device[’]s unique
`identity information 11 is checked to see if it exists in the database of prior
`authorizations 15.” Id. at 5:1–5. Determining whether the unique device
`information is on record for a license, at steps 15 and 16, is a determination
`whether the license is valid for the corresponding device and is the only test
`that the specification describes as based at least in part on the unique device
`information. Thus, the test of steps 15 and 16 most closely aligns with the
`“verify” limitation. Step 13, on the other hand, is described as a separate
`validity check that does not involve the unique device information and, thus,
`does not correspond to the “verify” limitation. In short, the specification
`supports Petitioner’s view that the “verify” limitation can encompass
`checking whether unique device information is reflected in a database as
`authorized for a license.
`We note that we have considered the parties’ respective expert
`declaration testimony but that both experts largely repeat the arguments of
`the respective briefs without adding to those arguments meaningfully.
`Ex. 1002 ¶¶ 110–117; Ex. 2001 ¶¶ 56–61.
`Patent Owner makes a separate argument for the “verify” limitation as
`it pertains to claim 25. Specifically, Patent Owner argues that Petitioner’s
`application of the term, as applied to the “verify” limitation of claim 25,
`“would make it impossible for an initial authorization attempt to succeed.”
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`Prelim. Resp. 22. Claim 25 differs from claim 1, inter alia, in that, where
`claim 1 recites “in response to the device identity not being on the record, set
`the allowed copy count to a first upper limit for a first time period,” claim 25
`recites “in response to the device identity not being on the record, set the
`allowed copy count to a first upper limit for a first time period after an
`initial authorization of the digital product.” According to Patent Owner,
`“[i]f ‘license data’ is deemed valid only upon confirmation that a ‘machine
`ID’ is included within a list of previously activated devices, then no initial
`authorization could pass as valid because there would be no previously
`activated device and, consequently, the list would remain empty.” Prelim
`Resp. 22. We, however, do not read “verify that a license data associated
`with the digital product is valid” to mean that the license is being “deemed
`valid.” Rather, it recites a test for verifying validity based in part on a
`device identity, the result of which is evaluated in the following two
`“response to” limitations of claim 25. According to claim 25, the allowed
`copy count is set if the device identity is not on the record, e.g., the test of
`the “verify” limitation is not met. Thus, we are not persuaded that
`Petitioner’s application of the “verify” limitation conflicts with other
`limitations of claim 25.
`In sum, we agree with Petitioner that “verify[ing] that a license data
`associated with the digital product is valid based at least in part on a device
`identity generated by sampling physical parameters of the [given
`device/computer],” as recited in claims 1, 22, and 25, can encompass
`checking whether unique device information is reflected in a database as
`authorized for a license.
`
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`2. “set[ting] the allowed copy count to a first upper limit for a
`first time period” (claims 1, 22)
`Petitioner does not propose an express construction for “set[ting] the
`allowed copy count to a first upper limit for a first time period” (“the
`‘setting’ limitation”), as recited in claims 1 and 22. Petitioner, however,
`does contend that the preambles of claim 1 and 22 are not limitations.
`Pet. 21, 43. The preamble of claim 1 recites “[a] system for adjusting a
`license for a digital product over time, the license comprising at least one
`allowed copy count corresponding to a maximum number of devices
`authorized for use with the digital product.” The preamble of claim 22
`similarly recites “[a] method for adjusting a license for a digital product over
`time, the license comprising at least one allowed copy count corresponding
`to a maximum number of devices authorized for use with the digital
`product.”
`Patent Owner, in essence, contends that the “setting” limitation should
`be read as “adjusting the allowed copy count from at least one value to an
`upper limit.” Patent Owner argues that, in light of the preambles of claims 1
`and 22, “the ‘allowed copy count’ variable must be temporarily ‘set’ from
`the ‘at least one’ value introduced in the preamble to, instead, an adjusted
`value expressly-distinguished as ‘a first upper limit,’” and that it “would be
`incorrect to interpret the expressly-distinguished values ‘at least one’ and
`‘first upper limit’ to be one and the same.”1 Prelim. Resp. 24–25. This
`
`1 The preamble of claim 25 is not similar to that of claims 1 and 22 and
`Patent Owner does not propose an “adjusting” limitation for the language “in
`response to the device identity not being on the record, set the allowed copy
`count to a first upper limit for a first time period after an initial authorization
`of the digital product,” as recited in claim 25.
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`argument depends on Patent Owner’s contention that the preambles of
`claims 1 and 22 are both limiting and introduce a “core ‘adjusting’ concept”
`that is reflected in the bodies of claims 1 and 22, specifically, the “setting”
`limitation. Id. at 12–13. According to Patent Owner, “‘adjusting’ the
`‘allowed copy count’ from one value to another, as claimed, must be
`understood in light of the limiting preamble language.” Id. at 14.
`“In general, a preamble is construed as a limitation if it recites
`essential structure or steps, or if it is necessary to give life, meaning, and
`vitality to the claim,” but “is not limiting, however, where a patentee defines
`a structurally complete invention in the claim body and uses the preamble
`only to state a purpose or intended use for the invention.” Symantec Corp. v.
`Computer Associates Int’l, Inc., 522 F.3d 1279. 1288 (Fed. Cir. 2008)
`(internal quotation marks and citations omitted). We are not persuaded by
`Patent Owner’s arguments. Regardless of whether the preambles of claims 1
`and 22 are limiting, Patent Owner has not explained persuasively why
`“adjusting,” from the preambles, must be read into the body of the claims to
`change “set the allowed copy count to an upper limit” to “adjust the allowed
`copy count from at least one value to an upper limit.”
`Patent Owner argues that the preambles provide antecedent basis for
`the terms “digital product” and “allowed copy count” recited in the bodies of
`claims 1 and 22 and “define the ‘allowed copy count’ as ‘corresponding to a
`maximum number [of] devices authorized for use with the digital product’”
`and “introduce that adjustable limit as having a positive value of ‘at least
`one.’” Prelim. Resp. 13–14. We agree with Patent Owner that “the allowed
`copy count,” recited in the body of claim 1, derives antecedent basis from
`“at least one allowed copy count,” recited in the preamble. Nevertheless, the
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`preamble does not recite that the allowed copy count is “adjustable.”
`Rather, the language “[system/method] for adjusting a license for a digital
`product over time” constitutes a statement of intended purpose, and does not
`purport to modify any particular claim language.
`Patent Owner argues that “allowed copy count” is a variable in the
`code executed by claim 1’s processor module that is initially set to “at least
`one” value, in the preamble, and adjusted to another value, “a first upper
`limit,” in the body of the claim. Prelim. Resp. 25. According to Patent
`Owner, the “setting” limitation “provides the condition upon which the
`adjustable variable ‘allowed copy count’ must be temporarily ‘set’ from the
`positive ‘at least one’ value introduced in the preamble to, instead, an
`adjusted value expressly-distinguished as ‘a first upper limit’.” Id. at 14.
`Patent Owner acknowledges that “the bodies of Claims 1 and 22 do not
`recite the ‘allowed copy count’ is conditionally ‘set’ to be the same ‘at least
`one’ value introduced in the preamble,” but argues that “while the name of
`the variable ‘allowed copy count’ relies on antecedent basis from the
`preamble, the temporarily-adjusted value for that variable (expressed as ‘a
`first upper limit’) does not.” Id. at 25. Dr. DiEulliis largely repeats these
`arguments in his testimony. Ex. 2001 ¶¶ 66–67. Patent Owner’s argument
`is not persuasive as it, without sufficient textual support in the claim,
`attempts to transform the preamble’s introduction of an allowed copy count
`into an additional, unrecited step directed by the executable code.
`Patent Owner further argues that dependent claims confirm its
`position. Prelim. Resp. 25–26. For example, Patent Owner argues,
`“Claim 9, which depends from Claim 1, also uses the word ‘set’ in
`expressing the adjustment of the ‘allowed copy count’ from one value to
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`another (i.e., from a ‘first upper limit’ to a ‘second upper limit’).” Id. at 25.
`Thus, Patent Owner argues, the claims use “set” synonymously with
`“adjust.” Id. at 26. Dr. DiEulliis largely repeats this argument in his
`testimony. Ex. 2001 ¶¶ 68–69. We are not persuaded. Although setting the
`allowed copy count to a second upper limit, as recited in claim 9, may result
`in changing the value from the first upper limit, that, by itself, does not
`redefine “set” to mean “adjust.”
`Patent Owner also argues that the language in the body of claim 1,
`“for a first time period,” is a “temporal qualification” and that once this time
`period expires, the allowed copy count must revert back to something.
`Prelim. Resp. 26. According to Patent Owner:
`Because the “first upper limit” has only a finite duration, it
`follows that upon expiration of the “first time period” the “first
`upper limit” no longer controls and, consequently, the “allowed
`copy count” readjusts (e.g., back to the “at least one” value
`referenced in the preamble or to some other value instead, such
`as the “second upper limit” recited in certain dependent claims).
`Id. Nevertheless, we do not see sufficient support in the claim language or
`the specification for inferring that setting the allowed copy count to a first
`upper limit requires adjusting the allowed copy count from an initial value
`merely because the first time period could expire. Claim 1 itself does not
`recite what must happen when the first time period expires.
`Patent Owner argues that the specification of the ’960 patent supports
`its position. Prelim. Resp. 26–27 (citing Ex. 1001, 3:48–4:2, 6:34–35).
`None of the cited passages, however, describes setting an allowed copy
`count to an initial “at least one” value and later setting the allowed copy
`count by “adjusting” it to a new value. Thus, Patent Owner’s arguments are
`inapposite.
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`Finally, Patent Owner argues that the prosecution history of the ’960
`patent supports its position. Specifically, Patent Owner argues that
`“[a]pplicant successfully distinguished the claimed ‘cause-and-effect
`relationship’ from art that teaches, instead, that its ‘limit is established prior
`to [i.e., not in response to] determining whether a terminal identifier is
`recognized as being present on the terminal identifier list.’” Prelim.
`Resp. 28 (quoting Ex. 1005, 32) (underlining in original, brackets and italics
`Patent Owner’s). Patent Owner’s argument is not persuasive, because the
`cited prosecution history was not addressing the impact of the preambles of
`the claims on the “setting” limitation. Rather, the applicant focused on the
`additional claim language “in response to the device identity not being on
`the record,” preceding the “setting” limitation in the body of the claim that
`became claim 1, and argued that this limitation must be read along with the
`“setting” limitation. Ex. 1005, 32. The applicant did not argue that the
`“setting” limitation must be read in conjunction with the preamble or that the
`preamble otherwise imposed a limitation on what became claim 1. Thus, the
`prosecution history does not support Patent Owner’s argument.
`In sum, we are not persuaded that the preamble of claim 1, the
`intrinsic evidence, or expert testimony establishes that “set[ting] the allowed
`copy count to an upper limit” must be read as “adjust[ing] the allowed copy
`count from at least one value to an upper limit.”
`
`B. Asserted Grounds of Unpatentability
`To anticipate, a reference must “show all of the limitations of the
`claims arranged or combined in the same way as recited in the claims.” Net
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`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008);
`accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are “such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`matter pertains.” We resolve the question of obviousness on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations. See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`
`
`1. Alleged Anticipation of Claims 1–5, 7–10, 12–14, 16–18,
`22–25 by DeMello
`Petitioner contends that claims 1–5, 7–10, 12–14, 16–18, and 22–25
`are anticipated by DeMello. Pet. 21. For the reasons given below, Petitioner
`has demonstrated a reasonable likelihood that it would prevail on this
`ground.
`
`
`a. Overview of DeMello
`DeMello describes a server architecture for a digital rights
`management system. Ex. 1003, Abstract. Figure 4, reproduced below,
`illustrates an example:
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`Figure 4 is a block diagram of a server architecture implementing aspects of
`a digital rights management system. Id. at 4:26–28. Bookstore servers 72
`associated with retail site 71 are network servers that host a commercial
`website that allows users to shop for and purchase eBook titles. Id. at
`10:66–11:8. Download server ISAPI Extension 78 and its sub-component,
`license server module 77, validates each download request, seals copies of
`eBooks, requests licenses for copies of eBooks, and returns eBook titles to
`end users. Id. at 11:26–34, 11:46–51. Activation servers 94 of activation
`site 75 provide each client reader (eBook device 92 and PC Reader 90) with
`a secure repository and an activation certificate that associate the activated
`readers with an online persona, e.g., a Microsoft Passport ID. Id. at 13:14–
`29.
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`The process of activating a reader in Figure 4 is illustrated in Figure 8,
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`reproduced below:
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`Figure 8 is a flow diagram of a client reader activation process. Id. at 4:39–
`41. To start the process, a client reader (alternately referred to as a reader
`client) connects to activation servers 94, and the user of the client reader is
`prompted to log in using Microsoft Passport credentials. Id. at 22:33–39
`(steps 150, 152). After the Passport credentials are authenticated, activation
`servers 94 upload from the client a unique hardware ID (e.g., derived from
`hardware components on the user’s computing device that uniquely identify
`the device) and determine if the client reader has been activated previously
`or if, instead, the user is requesting a new activation. Id. at 22:44–53 (steps
`156–164).
`DeMello describes having a limit to the number of devices activated
`for the most secure licenses associated with a Passport ID. In Figure 8, users
`are limited to five activations within 90 days of the first activation of a
`reader. Id. at 22:59–66. “The limit on activations may also allow for
`additional activations as time passes-e.g., one additional activation for each
`90 day period after the first 90 days, up to a limit of 10 total activations.”
`Id. at 23:4–8.
`In the case of a new activation, if the user already has activated the
`maximum number of readers, an error message is rendered. Id. at 22:54–58
`(steps 168, 172). Otherwise, the user fills out and returns an activation form,
`a new record is created for the user and reader, the number of readers
`activated for the Passport account is incremented, a secure repository key
`pair is retrieved from a database, activation certificates are generated, and
`the activation keys, user ID, and machine ID are persisted in a database.
`Id. at 23:11–25 (steps 170, 174–186). Activation servers 94 then generate,
`digitally sign, and download to the client reader an individualized secure
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`repository executable tied to the uploaded machine ID and an activation
`certificate tied to the user’s Passport ID. Id. at 23:49–56 (steps 188, 190).
`The user then is informed that activation of the client reader is complete.
`Id. at 23:66–24:2 (step 196).
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`b. Claims 1, 22, and 25
`Claim 1 recites “[a] system for adjusting a license for a digital product
`over time” that includes a processor and executable code for performing
`various functions of activating a digital license for a device; claim 22 recites
`“[a] method for adjusting a license for a digital product over time,” and
`includes steps substantially similar to the functions of claim 1’s executable
`code; claim 25 recites “[a] computer program product” with “a non-
`transitory computer readable medium” with code for causing a computer to
`perform functions similar to those of claim 1. Petitioner’s and Patent
`Owner’s arguments regarding these three claims are largely the same. We
`treat claim 1 as representative except where noted below.
`Claim 1 recites “a communication module for receiving a request for
`authorization to use the digital product from a given device.” Petitioner
`contends that DeMello’s client reader 90 or 92 is “a given device” and that
`activation servers 94 receive a request for authorization to use an eBook, a
`digital product, from the client reader. Pet. 23–24. Petitioner argues that,
`because the client reader communicates a request to activation servers 94, as
`indicated by the captioned arrow connecting client reader 90/92 with
`activation servers 94, activation servers 94 include “a communication
`module” for receiving the requests. Id. at 24–25. As to “a processor module
`in operative communication with the communication module,” as recited in
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`claim 1, Petitioner points to DeMello’s processing unit 21 (shown in
`Figure 2 as part of a “general purpose computing device in the form of a
`conventional personal computer or network server”) and activation servers
`94, which Petitioner contends necessarily include a processor in
`communication with a communication module. Id. at 25. Regarding “a
`memory module in operative communication with the processor module and
`comprising executable code for the processor module,” as recited in claim 1,
`Petitioner argues that proc