UNITED STATES PATENT AND TRADEMARK OFFICE
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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.,
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`Petitioners
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
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`Patent Owners
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`IPR2017-00948
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`PATENT 8,566,960
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. § 42.107(a)
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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.,
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`Petitioners
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
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`Patent Owners
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`IPR2017-00948
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`PATENT 8,566,960
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2017-00948
`U.S. Patent 8,566,960
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`Tables of Contents
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`I.
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`INTRODUCTION
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`II.
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`THE '960 PATENT
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`A. Overview of the '960 Patent
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`B.
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`C.
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`D.
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`Distinctions between the Independent Claims 1, 22 and 25
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`Priority Date of the '960 Patent
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`Petitioner Oversimplifies the Patented Technology
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`III. THE PETITION PRESENTS UNJUSTIFIED REDUNDANCIES
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`IV. ORDINARY SKILL IN THE ART
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`V. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF
`THE CHALLENGED CLAIMS IS UNPATENTABLE
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`Claim Construction
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`1. Petitioner incorrectly argues no claim preamble is limiting
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`2. “device identity” (all challenged claims)
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`3. “a first time period after an initial authorization of the digital
`product” (only independent Claim 25)
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`No Prima Facie Anticipation Based on DeMello
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`1. No prima facie anticipation for “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”
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`2. No prima facie anticipation for “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”
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`No Prima Facie Obviousness Based on DeMello in view of
`alleged knowledge of POSITA
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` No Prima Facie Obviousness Based on DeMello in view of
`Staruiala
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`1
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`2
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`2
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`6
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`6
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`7
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`7
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`10
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`12
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`12
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`12
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`16
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`17
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`18
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`18
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`23
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`31
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`34
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`ii
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`IPR2017-00948
`U.S. Patent 8,566,960
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
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`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
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`Partes Review (“the Petition”) of U.S. Patent No. 8,566,960 (“the '960 Patent”) filed
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`by Amazon.com, Inc., Amazon Digital Services, Inc., Amazon Fulfillment Services,
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`Inc., Hulu LLC, and Netflix, Inc. (collectively, “Petitioner”).
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`The Petition should be dismissed for procedural and substantive defects. As a
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`procedural matter, the Board need not and should not consider each of the three
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`facially-redundant grounds because the Petition articulates no bi-directional
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`explanation of their relative strengths and weaknesses. Because the Board has yet to
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`decide the extent to which the Petition is impermissibly redundant and cumulative,
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`Patent Owner identifies herein example instances where each ground fails to satisfy
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`the axiomatic All Elements Rule.1 Petitioner has thus failed to produce an
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`anticipatory reference or present a prima facie case of obviousness for invalidity
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`of any claim of the '960 Patent. Accordingly, Petitioner has not satisfied its burden
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`under 37 CFR § 42.104(b)(5) to identify evidence that supports the invalidity
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`challenge and has failed to meet its burden under 37 CFR § 42.108(c) to
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`demonstrate a reasonable likelihood of invalidity.
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`1 Patent Owner does not concede the legitimacy of any arguments in the Petition
`that are not specifically addressed herein.
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`1
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`U.S. Patent 8,566,960
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`II. THE '960 PATENT
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`A. Overview of the '960 Patent
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`During prosecution, Applicant offered the following overview of the '960
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`Patent:
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`The present application (“Richardson”) discloses an invention for
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`a system that automatically adjusts usage limitations on licensed
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`software. The adjustable license is based on exploitation of an
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`advanced technique for generating a “device fingerprint” or
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`“device identifier” for each of many computers that a single
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`licensee may use to execute the licensed software. The device
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`identifier uniquely identifies each computer so that the licensing
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`system can keep an accurate count of the number of computers
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`authorized to use the software under any particular license.
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`Unlike other software licensing schemes, the Richardson system
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`anticipates that a licensee’s number of computers and computer
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`configurations will change over time, and therefore implements a
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`method for allowing such changes to occur without the user
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`having
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`to relicense
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`the software, and without allowing
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`unauthorized use of the software to run out of control.
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`EX1005, at 29; see also Declaration of Dr. DiEuliis (“EX2001”) at ¶ 22 (citing the
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`same).
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`Consistent with that overview, the '960 Patent describes in its background
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`section that consumers who license use of a digital product typically exhibit a
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`pattern of usage which includes use of the digital product on multiple devices.
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`2
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`U.S. Patent 8,566,960
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`EX2001 ¶ 23 (citing EX1001, 1:31-41). Conventionally, publishers and digital
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`owners have limited the license to a predefined number of devices. This scheme
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`fails to consider normal addition and attrition that occur during the life of the
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`licensed product. Such attrition and addition include, for example, the addition of
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`new devices or replacement of older devices with new ones. The conventional
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`method further requires the user to go through several tedious steps to retain its right
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`to use the licensed product or to transfer these rights from one device to another
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`device. Id., (citing EX1001, 1:61-2:2).
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`To address these and other shortcomings, the '960 Patent teaches that
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`certain embodiments are configured to temporarily adjust device limits of a license
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`in automatic response to certain detected conditions. In certain embodiments, the
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`adjustment is designed “to accommodate a reasonable small increase in the number
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`of devices linked to a specific license ….” EX2001 ¶¶ 25-26 (citing EX1001, 3:63-
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`4:2). According to one example, a “license may state that the publisher authorizes
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`the user to use their software on up to, for example, five devices, but that the
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`publisher reserves the right to increase this limit at their own discretion.” Id. (citing
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`EX1001, 3:48-51). Within weeks of the purchase the licensed user reasonably seeks
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`to exceed the five-device limit by one. Id. (citing EX1001, 3:52-63). The '960 Patent
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`discloses that the sixth uniquely-identified device requesting to operate the software
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`“may be allowed to run even though the publisher[’]s stated device limit per license
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`3
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`is five.” Id., (citing 3:63-4:2). In another embodiment, the '960 Patent teaches that
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`certain circumstances may warrant temporarily decreasing the discretionary limit
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`allowed for in the license, such as upon detection of individual instances of copy
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`abuse. EX2001 ¶ 27 (citing EX1001, 6:34-40).
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`Dr. DiEuliis summarized certain “adjusting” aspects of the above
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`embodiments as follows. Under certain conditions, a temporary “grace period” may
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`be applied, during which time a reasonable number of additional copy count(s) may
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`also be allowed to run. See EX2001 ¶¶ 28 and 72. Dr. DiEuliis further observed that
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`under certain other conditions, such as due to detection of suspected illicit copying,
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`a heightened-security period may be applied, during which time the allowed copy
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`count may be decreased temporarily. Id. Either way, the '960 Patent clearly
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`discloses and claims temporarily and automatically adjusting (either upward or
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`downward) the allowed copy count of a license. Id.
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`The '960 Patent teaches that, in certain embodiments, a system and method
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`to adjust a license in terms of an allowed copy count generally involves multiple
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`and distinct determinations which control whether conditional operations are
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`executed. See EX2001 ¶¶ 29-32. Those determinations include, for example,
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`verifying at an authorization authority 55 the validity of information collected at,
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`and received from, the device 50 requesting authorization. EX2001 ¶ 29 (citing
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`EX1001, 4:56-64; 7:1-4; and Figure 2 (steps 10-13)). If the validity check fails, the
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`4
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`U.S. Patent 8,566,960
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`digital product is not allowed to run and the process terminates. Id. (citing EX1001,
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`4:62-64 and Figure 2 (step 14)).
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`If the validity check passes, certain identity information of the requesting
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`device is checked to see if it currently exists in a database of authorizations. EX2001
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`¶ 30 (citing EX1001, 5:1-5 and Figure 2 (step 15)). If the identity information is
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`presently on record, authorization of the digital product is automatically allowed.
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`Id. (citing EX1001, 5:5-9; 7:6-8; and Figure 2 (steps 16-18)). However, if the
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`identity information is not on record (e.g., the disclosed example where a licensed
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`user newly seeks to run a digital product on a sixth device, even though the
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`publisher’s stated device limit per license is five) then the allowed copy count may
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`be adjusted for a limited time to accommodate what is determined to be a reasonable
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`and legitimate request. Id. (citing EX1001, 3:63-4:2 and 7:4-5).
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`Another automated determination involves calculating a device count
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`corresponding to total number of devices presently authorized for use with the
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`digital product. See, e.g., 7:13-18; Figure 3A (step 350); see also EX2001 ¶¶ 31-
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`32. It should be noted that device count is different from the allowed copy count.
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`The allowed copy count represents the number of available authorizations at any
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`given time, while the device count denotes the number of devices using the
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`licensed digital product. If the calculated device count does not exceed the adjusted
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`copy-count limit and the time period for that adjustment has not expired, the digital
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`5
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`U.S. Patent 8,566,960
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`product may be allowed to run on the requesting device. See, e.g., 7:13-18; Figure
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`3A (step 360); see also EX2001 ¶¶ 31-32.
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`B. Distinctions between the Independent Claims 1, 22 and 25
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`The '960 patent issued with 25 claims. Of those, Claims 1, 22 and 25
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`are independent claims. As explained further below, independent Claims 1 and 22
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`both have limiting preambles that explicitly state each claim is directed to
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`“adjusting the license” in terms of its “allowed copy count”. EX2001 ¶¶ 43-46. By
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`way of contrast, the preamble of independent Claim 25 only recites “[a] computer
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`program product, comprising” and is therefore not limiting in the same way.
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`Claim 25 also differs from the other independent claims in that it expressly
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`defines the “first time period” as commencing “after an initial authorization of the
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`digital product,” which is a distinction the Board previously noted in dismissing an
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`earlier petition filed against the '960 Patent. See EX1006, Decision Denying
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`Institution in IPR2016-01271, at 7-9.
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`As will be shown, the distinctions between the independent claims give rise
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`to unique points of novelty over the art cited in the Petition.
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`C.
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`Priority Date of the '960 Patent
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`The '960 Patent issued from U.S. Application Serial No. 12/272,570 (“the
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`'570 Application”) which was filed November 17, 2008. The '570 Application
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`6
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`U.S. Patent 8,566,960
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`claims priority to U.S. Provisional Application No. 60/988,778, which was
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`filed Nov. 17, 2007. EX1001, 1:7-11.
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`D.
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`Petitioner Oversimplifies the Patented Technology
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`The Petitioner oversimplifies the claimed invention of the '960 Patent, for
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`example, by characterizing it as “teaching only abstract rules” and not disclosing
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`or claiming “any software or hardware implementation of its concepts.” Even a
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`cursory review of the multiple figures confirms that the '960 Patent teaches
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`sophisticated algorithmic structure for practicing the claimed invention according to
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`certain disclosed embodiments. See EX2001 ¶¶ 20-32. Petitioner’s myopic view of
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`the '960 Patent is further reflected in its deficient validity challenges, which overlook
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`several claim limitations. See id., ¶¶ 33-36. These deficiencies are detailed below.
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`III. THE PETITION PRESENTS UNJUSTIFIED REDUNDANCIES
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`As shown in the table below, the Petition redundantly challenges the
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`patentability of each claim of the '960 Patent at least twice, and in several instances
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`three times, without providing any alleged justification for such inefficient
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`redundancies:
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`Ground
`1
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`2
`3
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`Statute
`102
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`Claims
`1-5, 7-10, 12-14,
`16-18, 22-25
`6-7, 11-12, 15-16 103
`1-25
`103
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`Reference(s)
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`DeMello2
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`DeMello and alleged knowledge of POSITA
`DeMello and Staruiala3
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`2 EX1002, U.S. Patent No. 7,047,411 (“DeMello”).
`3 EX1004, Irish Patent Application No. 2002/0429 (“Staruiala”).
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`U.S. Patent 8,566,960
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`As the Board has previously explained, “multiple grounds, which are
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`presented in a redundant manner by a petitioner who makes no meaningful
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`distinction between them, are contrary to the regulatory and statutory mandates, and
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`therefore are not all entitled to consideration.” See Liberty Mut. Ins. Co. v.
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`Progressive Cas. Ins. Co., No. CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012).
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`Such redundancies place a significant burden on both the Board and the patent
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`owner, causing unnecessary delay, compounding costs to all parties involved, and
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`compromising the ability to complete review within the statutory deadline. Id.; 37
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`C.F.R. § 42.1(b); see also 37 C.F.R. § 42.108. As such, analyzing the petition and
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`eliminating redundant grounds streamlines the proceeding. Idle Free Sys., Inc. v.
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`Bergstrom, Inc., IPR2012-00027, Paper 26 at 4-5 (P.T.A.B. June 11, 2013); Liberty
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`Mut., CBM2012-00003, Paper 7 at 2.
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`The Petition presents three grounds that are vertically redundant with respect
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`to each other. Vertical redundancy “involves a plurality of prior art applied both in
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`partial combination and in full combination. In the former case, fewer references
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`than the entire combination are sufficient to render a claim obvious, and in the latter
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`case the entire combination is relied on to render the same claim obvious.” Liberty
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`Mut., CBM2012-00003, Paper 7 at 3. In such instances where reliance on a
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`combination and separate reliance on a portion thereof are both alleged to
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`sufficiently present a prima facie case of invalidity, “[t]here must be an explanation
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`U.S. Patent 8,566,960
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`of why the reliance in part may be the stronger assertion as applied in certain
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`instances and why the reliance in whole may also be the stronger assertion in other
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`instances.” Id. (emphasis in original).
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`If one of the alternative grounds is better from all perspectives, then the Board
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`should only consider the stronger ground and not burden the Patent Owner and the
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`Board with the weaker ground. Further, if there is no difference in the grounds, the
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`Petitioner should only assert one of the grounds. Id. at 12. “Only if the Petitioner
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`reasonably articulates why each ground has strength and weakness relative to the
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`other should both grounds be asserted for consideration.” Id. (emphasis added).
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`Petitioner makes no effort to justify its vertically redundant theories by
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`explaining why “the reliance in part [e.g., on the primary reference alone] may be
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`the stronger assertion as applied in certain instances and why the reliance in whole
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`[e.g., the full combination of identified references] may also be the stronger
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`assertion in other instances.” Id. Rather, in each instance of vertical redundancy,
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`Petitioner simply suggests that “to the extent” the Board does not adopt an
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`anticipation theory based on DeMello alone, then a combination with either alleged
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`“knowledge of POSITA” or Staruiala is argued under theories of obviousness.
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`The Board in Eizo Corp. v. Barco N.V.4 flatly rejected a similar attempt to
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`hedge bets and unnecessarily multiply the work of both the Board and the Patent
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`4 IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014).
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`Owner. The Board there found insufficient the petitioner’s “conclusory assertion”
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`that “[t]o the extent [the first prior art reference] may not explicitly teach” the
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`limitation, the second prior art reference “explicitly teaches this limitation.” The
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`Board explained that “such an assertion fails to resolve the exact differences sought
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`to be derived from” the second prior art reference. Id.
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`The Board’s precedential authority on these procedural issues is clear. Here,
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`Petitioner impermissibly seeks the benefit of up to three different bites at the apple,
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`without providing the necessary quid pro quo—i.e., a bi-directional explanation of
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`the relative strengths and weaknesses of each redundantly offered ground. If
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`Petitioner believes the obviousness challenges are necessary to addresses certain
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`weaknesses of the anticipation challenge based on DeMello alone, Petitioner is
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`obligated to articulate those weaknesses in the Petition itself. Because Petitioner
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`chose to not offer such concessions, presumably for strategic reasons, the Board need
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`not and should not consider the merits of the redundant challenges based on
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`obviousness (i.e., Grounds 2 and 3).
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`IV. ORDINARY SKILL IN THE ART
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`The attached Declaration of Dr. Val DiEuliis (EX1002) defines a person of
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`ordinary skill in the art (“POSITA”) as of November 17, 2007 to be some who has
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`“a bachelor’s degree, or equivalent, in electrical engineering or software
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`engineering, or a closely related field, and one to two years of experience in software
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`development; or the equivalent work experience.” EX2001 ¶ 37.
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`Dr. DiEuliis disagrees with the definition POSITA offered in the Petition in
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`certain respects.5 First, the Petition specifies “at least two years” of work experience,
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`while Dr. DiEuliis specifies “one to two years.” Dr. DiEuliis recognizes, however,
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`that the difference is inconsequential to the dispute before the Board. Id. ¶¶ 38-39.
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`More significantly, Dr. DiEuliis observes that Petitioner’s definition of a
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`POSITA is unnecessarily restrictive at least in its specific qualification of relevant
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`work experience as “using DRM, cryptography, and content distribution.” Id. 40. In
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`addressing the definition of a POSITA offered by Petitioner’s declarant, Dr. Rubin,
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`Dr. DiEuliis submitted the following observations:
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`The Petitioners’ expert, Dr. Rubin presents a conflicting and
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`contradictory analysis of a POSITA. EX1002 at ¶¶ 33-38. First,
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`Dr. Rubin states “[none] of the claims of the ’960 Patent require
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`extensive technical knowledge to implement.” Id. at ¶ 36.
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`Second, Dr. Rubin states “[no] specific techniques of digital
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`rights management or encryption are disclosed or claimed.” Id.
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`Thus, Dr. Rubin’s statements support my opinions concerning
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`5 Relying on testimony of Dr. Rubin (EX1002), Petitioner defines POSITA as
`someone “in the field of DRM” who had a “bachelor’s degree in computer science
`and/or electrical engineering or comparable experience, plus at least two years of
`experience of using DRM, cryptography, and content distribution or related software
`technology.” Pet. 14.
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`11
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`the amount of required experience and no need for DRM,
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`encryption, or content distribution.
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`EX2001 ¶ 40.
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`Regardless which definition of a POSITA the Board adopts, Dr. DiEuliis
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`testifies that he clearly is sufficiently qualified in the pertinent art. See Id. ¶ 41.
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`V. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE
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`The Board should reject any non-redundant, non-cumulative grounds that
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`remain (if any) because the Petition fails to satisfy the axiomatic All Elements Rule.
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`Petitioner has thus failed to produce an anticipatory reference or present a prima
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`facie case of obviousness for invalidity of any claim of the '960 Patent.
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`Accordingly, Petitioner has not
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`satisfied
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`its burden under 37 CFR
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`§ 42.104(b)(5) to identify evidence that supports the invalidity challenge and has
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`failed to meet its burden under 37 CFR § 42.108(c) to demonstrate a reasonable
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`likelihood of invalidity.
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` Claim Construction
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`1.
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`Petitioner incorrectly argues no claim preamble is limiting
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`The Petition injects a fully-dispositive claim construction dispute that
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`warrants—if not necessitates—resolution at this preliminary stage. Specifically,
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`Petitioner provides no factual or legal basis and cites to no supportive testimony for
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`its erroneous conclusion that “[t]he preamble [of Claim 1] is not a limitation.”
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`12
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`U.S. Patent 8,566,960
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`Pet. 21. Petitioner’s refusal to recognize that the preambles of independent Claims
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`1 and 22 are limiting is fatal to the Petition. This is because Petitioner’s erroneous
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`construction results in Petitioner overlooking the core “adjusting” concept
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`introduced in the claim preambles and reflected in the bodies of those independent
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`claims. See EX2001 ¶¶ 64-75.
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`Among other considerations, the Board construes a preamble as limiting if it
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`states a necessary and defining aspect of the invention. Lg Elecs., Inc. et al. v.
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`Toshiba Samsung Storage Tech. Korea Corp., No. IPR2015-01642 (P.T.A.B.
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`January 25, 2017), Paper No. 37 at 20-21. A significant and often determinative
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`consideration is whether “the limitations in the body of the claim rely upon and
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`derive antecedent basis from the preamble.” See id. (quoting Eaton Corp. v.
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`Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (brackets omitted).
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`Petitioner’s conclusory dismissal of the preambles of Claims 1 and 22 as
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`nonlimiting overlooks at least the demonstrable fact that those preambles provide
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`antecedent basis for the terms “digital product” and “allowed copy count” repeatedly
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`recited throughout the body of the claims. See EX2001 ¶ 46. The preambles further
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`recite the important and informative context that independent Claims 1 and 22 are
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`both directed to “adjusting” a license in terms of a numerical limit represented by
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`the “allowed copy count”. More specifically, the preambles define the “allowed copy
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`count” as “corresponding to a maximum number for devices authorized for use with
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`13
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`U.S. Patent 8,566,960
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`the digital product” and the preambles both introduce that adjustable limit as having
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`a positive value of “at least one”. See EX2001 ¶ 44. Petitioner’s declarant, Dr. Rubin,
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`acknowledged that “[t]he preamble contains the definition of ‘allowed copy count’
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`quoted in the steps ….” EX1002 ¶ 70; see also EX2001 ¶ 43 (citing the same).
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`The claimed “adjusting” cannot properly be understood outside the context of
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`the limiting language recited in the preambles of Claims 1 and 22. See EX2001 ¶ 46;
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`see also id. ¶¶ 64-75. Relying on respective preambles for antecedent basis, the
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`bodies of Claims 1 and 22 recite “in response to the device identity not being on the
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`record, [set/setting] the allowed copy count to a first upper limit for a first time
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`period”. EX1001, 12:8-13 and 13:44-46 (emphasis added). That limitation provides
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`the condition upon which the adjustable variable “allowed copy count” must be
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`temporarily “set” from the positive “at least one” value introduced in the preamble
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`to, instead, an adjusted value expressly-distinguished as “a first upper limit”.
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`EX2001 ¶ 66.
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`Thus, “adjusting” the “allowed copy count” from one value to another, as
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`claimed, must be understood in light of the limiting preamble language. Among
`
`other meaningful requirements, the preambles of Claims 1 and 22 both introduce the
`
`“allowed copy count”—before it is conditionally adjusted (if ever)—as having a
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`positive value of “at least one”. Notably, that limiting language (“at least one”) is
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`found nowhere in the Petition.
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`14
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`U.S. Patent 8,566,960
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`For at least the forgoing reasons, there can be no question that the preambles
`
`of Claims 1 and 22 state necessary and defining aspects of the invention and are
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`therefore limiting. See Eaton Corp., 323 F.3d at 1339; see also EX2001 ¶¶ 43-46.6
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`Petitioner had a full and fair opportunity to explain the basis of its contrary claim
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`construction positions. But the Petition offers no controverting reasoning or
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`testimony in support of its conclusory statement “[t]he preamble [of Claim 1] is not
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`a limitation.” Pet. 21. On the contrary, as Dr. DiEuliis observed, “Dr. Rubin’s
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`testimony appears to contradict” Petitioner’s conclusion that the preamble is not
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`limiting. EX2001 ¶¶ 43-44.
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`Given Petitioner’s erroneous and unsupported claim construction, it is not
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`surprising that in challenging independent Claims 1 and 22 the Petition consciously
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`ignores the “adjusting” introduced in the claim preambles and reflected in limitations
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`recited in the bodies of those claims. As explained further below, that deficiency
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`provides an independent basis to deny institution, at least with respect to the
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`challenges against Claims 1 and 22 and their respective dependent claims.
`
`Petitioner further seeks construction of the term “device identity” (as recited
`
`in each challenged claim) and the phrase “a first time period after an initial
`
`
`6 Additional rationale and support for Patent Owner’s construction is identified,
`infra, in Section V.B.2.a, which is identified by the header “Independent Claims 1
`and 22 require ‘adjusting’ the ‘allowed copy count’ from one value to another.” To
`avoid redundancy, those additional points are not repeated here.
`
`15
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`U.S. Patent 8,566,960
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`authorization of the digital product” (as recited in independent Claim 25 only).
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`Patent Owner submits the Board need not construe these terms in order to resolve
`
`the present controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
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`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`
`controversy, and only to the extent necessary to resolve the controversy.”). Patent
`
`Owner offers the following observations concerning Petitioner’s proposed
`
`constructions of those additional terms merely to clarify the record.
`
`2.
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`“device identity” (all challenged claims)
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`The words “device” and “identity” are known terms of art and need no
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`construction here. Petitioner suggests that construction is necessary to clarify that
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`the “device identity” need not uniquely identify a device. See Pet. 14-15. But that
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`interpretation is not clearly expressed in Petitioner’s proposed construction:
`
`“information that identifies a particular device” (in the singular). An argument can
`
`be made that Petitioner’s construction connotes just the opposite of what Petitioner
`
`allegedly intended. Moreover, Petitioner alleges (in a footnote) that the references
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`cited in the Petition “both teach generating a unique device identity and, therefore,
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`invalidate the claims regardless of resolution of this issue.” Pet. 15 n.4 (emphasis
`
`altered). Without conceding that Petitioner’s characterization of the art is correct,
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`Patent Owner notes that Petitioner has expressly admitted that the Board need not
`
`construe “device identity” to resolve the present controversy.
`
`16
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`
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`3.
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`“a first time period after an initial authorization of the digital
`product” (only independent Claim 25)
`
`The Petition correctly states that, in an earlier final decision by the Board
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`IPR2017-00948
`U.S. Patent 8,566,960
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`upholding the validity of the '960 Patent, the Board construed “a first time period
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`after an initial authorization of the digital product” to mean “a time period that begins
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`at an initial authorization of the digital product and extending for a duration
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`thereafter.” See EX1006, Decision Denying Institution in IPR2016-01271, at 7-9.
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`However, the Petition does not address the informative context for that construction.
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`The Board offered the following observations in explaining why construction was
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`appropriate in that earlier matter:
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`Neither party proposes an express construction for “a first time
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`period after an initial authorization of the digital product.” In its
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`application of the prior art to this limitation, however, Petitioner
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`appears to argue that this term refers to any arbitrary amount of
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`time after an initial authorization of a digital product. See Pet.
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`33.”
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`EX1006 at 7. The Board concluded that the express language in Claim 25 proscribes
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`the interpretation applied in that petition; and the Board ordered a construction to
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`conclusively resolve the claim construction issue implicitly injected by the petition.
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`Id. at 7-8. Notably, the other independent claims differ from Claim 25 at least in that
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`they do not recite the qualification “… after an initial authorization of the digital
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`product”.
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`17
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` No Prima Facie Anticipation Based on DeMello
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`Petitioner challenges Claims 1-5, 7-10, 12-14, 16-18, and 22-25 as allegedly
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`anticipated by DeMello. For each one of the independent reasons set forth below,
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`the present Petition should be denied as failing to present prima facie anticipation.
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`As the Federal Circuit recently reaffirmed, “[a]nticipation requires that a
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`single reference describe the claimed invention with sufficient precision and detail
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`to establish that the subject matter existed in the prior art.” Wasica Fin. GmbH v.
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`Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (citation and internal
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`quotation omitted). “For this reason, it has long been understood that ambiguous
`
`references do not, as a matter of law, anticipate a claim.” Id.
`
`1.
`
`No prima facie anticipation for “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”
`
`Contrary to the express claim language, Petitioner alleges DeMello
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`anticipates the limitation “verify that a license data associated with the digital
`
`product is valid based at least in part on a device identity generated by sampling
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`physical parameters of the given device” ostensibly because DeMello teaches “the
`
`user must authenticate him/herself with a credential known as a PASSPORT ID,
`
`which is that user’s online persona.” Pet. 27 (citations omitted).
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`As Petitioner appears to recognize in its characterization of DeMello, the
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`PASSPORT ID is not “a device identity generated by sampling physical parameters
`
`18
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`IPR2017-00948
`U.S. Patent 8,566,960
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`of the given device” as recited in a Claim 1. EX2001 ¶ 57. DeMello makes that
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`distinction explicit in stating “[i]n accordance with aspects of the present invention,
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`this [PASSPORT] object advantageously associates the activation certificate with a
`
`persona, instead of a single PC ….” EX1003, 13:35-39 (emphasis added); see also
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`EX2001 ¶ 57. At least because it is undisputed that the PASSPORT ID represents a
`
`user’s online persona, as opposed to a device identity, the PASSPORT ID
`
`authentication in DeMello does not anticipate the limitation “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,” as recited
`
`in Claim 1. EX2001 ¶ 57.
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`Petitioner also argues, in the alternative, that DeMello anticipates the disputed
`
`claim language allegedly by “storing a list of all activations that a particular user ID
`
`has requested 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 the reader) is the same.’” Pet. 28 (citations omitted). Petitioner erroneously
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`conflates the claimed verification of the validity of “license data” with the separately
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`claimed conditional responses based, instead, on whether or not the “device
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`identity” is presently “on a record.” EX2001 ¶ 58. Those distinct determinations
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`cannot reasonably be construed as one and the same, as Petitioner at least implicitly
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`argues in its application of DeMello. Id.
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`19
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`The intrinsic evidence confirms there is an intentional and express distinction
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`between verifying the validity of “license data” and the entirely separate
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`de
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