Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 31
`Entered: August 1, 2018
`
`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.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper No. 31
`Entered: August 1, 2018
`
`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.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`
`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.”).
`
`Pursuant to 35 U.S.C. § 314, in our Institution Decision (Paper 10,
`
`“Dec.”), we instituted this proceeding as to claims 1–25. Dec. 34.
`
`Patent Owner filed a Patent Owner’s Response (Paper 15, “PO
`
`Resp.”), and Petitioner filed a Reply to the Patent Owner’s Response
`
`(Paper 18, “Reply”).
`
`Patent Owner also filed a Contingent Motion to Amend, seeking to
`
`replace claims 1, 22, and 25 with substitute claims 26, 27, and 28 if claims 1,
`
`22, and 25 are ruled unpatentable. (Paper 17, “Mot. to Amend,” 1).
`
`Petitioner filed an Opposition to the Motion to Amend (Paper 19, “Opp. to
`
`Mot. to Amend”), and Patent Owner filed a Reply supporting its Motion to
`
`Amend (Paper 24, “Mot. to Amend Reply”).
`
`Petitioner relies on the Declarations of Aviel Rubin, Ph.D. (Ex. 1002,
`
`“Rubin Decl.”; Ex. 1031, “Supp. Rubin Decl.”). Patent Owner relies on the
`
`Declaration of Val DiEuliis, Ph.D. (Ex. 2001, “DiEuliis Decl.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a final
`
`written decision under 35 U.S.C. § 318(a) as to the patentability of claims 1–
`
`25 and substitute claims 26–28. Based on the record before us, Petitioner
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`2
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`IPR2017-00948
`Patent 8,566,960 B2
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`has proved, by a preponderance of the evidence, that claims 1–8, 18–22, and
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`25 are unpatentable, but not claims 9–17, 23, and 24. We deny Patent
`
`Owner’s Motion to Amend as to substitute claims 26–28.
`
`
`
`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:
`
`Ex. 1003 (“DeMello”) US 7,047,411 B1
`
`May 16, 2006
`
`Ex. 1004 (“Staruiala,”)
`
`IE 02/0429
`
`
`
`Nov. 27, 2002
`
`Ex. 1026 (“Hu”)
`
`
`
`US 7,752,139 B2
`
`July 6, 2010
`
`
`
`
`
`D. The Instituted Grounds
`
`We instituted on the following grounds of unpatentability (Dec. 34)
`
`and Petitioner challenges Patent Owner’s proposed substitute claims on the
`
`following grounds of unpatentability (Opp. to Mot. to Amend 11–12):
`
`Reference(s)
`
`Basis
`
`Claims Challenged
`
`DeMello
`
`§ 102(b)
`
`1–5, 7–10, 12–14,
`16–18, and 22–25
`
`3
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`IPR2017-00948
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`DeMello
`
`§ 103(a)
`
`6, 7, 11, 12, 15, and
`161
`
`DeMello and Staruiala
`
`§ 103(a)
`
`DeMello and Hu
`
`§ 103(a)
`
`1–25
`
`26–28
`
`
`
`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:
`
`
`1 After the Supreme Court’s decision in SAS Inst., Inc. v. Iancu, 138 S. Ct.
`1348 (2018), we modified our Institution Decision to include review of
`claims 7, 12, and 16 as obvious over DeMello.
`
`4
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`IPR2017-00948
`Patent 8,566,960 B2
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`Figure 2 is a flowchart for an approach to adjusting a license for a digital
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`product. Id. at 3:20–21. In Figure 2, device 50 requests authorization from
`
`
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`5
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`IPR2017-00948
`Patent 8,566,960 B2
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`licensing authority 55 (e.g., a publisher or distributor) to use a copy of a
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`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
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`number of successful authorizations for new devices that have been allowed
`
`and, if the device count is fewer than a device count limit of five, licensing
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`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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`6
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`Patent 8,566,960 B2
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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
`1.
`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, 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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`7
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`IPR2017-00948
`Patent 8,566,960 B2
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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
`
`A.
`
`Claim Construction
`
`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).
`
`In the Institution Decision, we preliminarily construed “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, as broad
`
`enough to encompass checking whether unique device information is
`
`reflected in a database as authorized for a license. Dec. 11. We also
`
`preliminarily determined that “set[ting] the allowed copy count to a first
`
`upper limit,” as recited in claims 1 and 22, does not require “adjust[ing] the
`
`allowed copy count from at least one value to an upper limit.” Id. at 16.
`
`The parties continue to dispute the constructions of these terms. PO Resp.
`
`9–19; Reply 3–13. We address each below.
`
`
`
`8
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`IPR2017-00948
`Patent 8,566,960 B2
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`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.
`
`Petitioner argues in favor of our construction, contending 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. Pet. 27–28; Reply 8–9. Patent Owner argues that the “verify”
`
`limitation is “expressly distinguished” from the conditional “in response to”
`
`limitations, and argues that our Institution Decision impermissibly conflates
`
`the two. PO Resp. 14.
`
`Patent Owner argues that the claim language itself defines the validity
`
`verification as being directed to the “license data” and that the “device
`
`identity” is expressly distinguished. PO Resp. 14. As Petitioner points out
`
`(Reply 9), however, claim 1 expressly recites that the license data is verified
`
`as valid “based at least in part on a device identity.” Thus, the claim
`
`language expressly links the verification of validity to a device identity.
`
`Patent Owner further argues that the claim language emphasizes a
`
`distinction between the validity verification (“verify” limitation) and the
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`9
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`Patent 8,566,960 B2
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`record check (“in response to” limitations). PO Resp. 14–15. Petitioner
`
`responds that “the claim language recites only a single inquiry based upon
`
`the device identity” and that “[t]he subsequent two claim limitations recite
`
`what is done ‘in response to’ the outcome of that inquiry – allow access if
`
`the device is on the record and, if not on the record, allow access if the
`
`device count is less than the current device limit.” Reply 10. We agree with
`
`Petitioner. Although the “in response to” limitations address whether “the
`
`device identity” is “on a record,” and do not expressly tie a determination of
`
`validity to the presence or absence of a record, the structure of the claim
`
`strongly suggests such a relationship. As Petitioner observes, claim 1 recites
`
`only one test, verifying that a license data is valid, and that test is based at
`
`least in part on a device identity. The two immediately following “in
`
`response to” limitations specify the results of a test based on “the device
`
`identity.” The most logical reading of the claim language is a test in which a
`
`license is determined to be valid or not based on the presence or absence of a
`
`record of the device identity in a database.
`
`Patent Owner further notes that the “verify” limitation of claim 1 is
`
`based “at least in part” on a device identity and the “in response to”
`
`limitations do not recite “the same ‘at least in part’ qualification,” and argues
`
`that “[t]his explicit distinction confirms the validity verification and the
`
`record check are not one and the same.” PO Resp. 15. We agree with
`
`Petitioner (Reply 11), however, that a test that depends entirely on the
`
`device identity (Patent Owner’s characterization of the “in response to”
`
`limitations) is a test based at least in part on the device identity.
`
`Patent Owner argues that “the specification confirms that ‘license
`
`data’ may be verified as valid regardless whether a corresponding ‘device
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`10
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`identity’ is already on the record.” PO Resp. 14. Patent Owner points to
`
`Figure 2 of the ’960 patent (reproduced above), and argues that step 13 is
`
`shown as a test separate from the test of steps 15 and 16. Id. at 15.
`
`According to Patent Owner, if license data is found to be invalid at step 13,
`
`there would be no need to determine separately whether the device identity
`
`is on record. Id. (citing Ex. 1001, 4:62–64). According to Patent Owner, a
`
`contrary reading “would lead to the unreasonable conclusion that in those
`
`instances where the license data is not valid, ostensibly because the ‘device
`
`identity’ is not ‘on the record,’ the digital product would nevertheless be
`
`allowed to execute on that device.” Id.
`
`Patent Owner argues that step 13 is described as a validity check
`
`while step 15 is not. Id. at 16–17. Petitioner responds that the ’960 patent
`
`does not describe step 13 as having an inquiry based in part on the device
`
`identity. Reply 10. According to Patent Owner, the description of step 13
`
`does not preclude verifying license data validity based at least in part on a
`
`device identity, and, indeed, describes it. PO Resp. 17. Specifically, Patent
`
`Owner argues that the specification describes compiling identifying
`
`information 11 and license related information 10 together in request for
`
`authorization 12 and that the validity check of step 13 checks both types of
`
`information. Id. The ’960 patent explains:
`
`Typically the device 50 requesting authorization collects license
`related information 10 and unique device identifying
`information 11, compiles the collected information into a
`communication and sends it to the authorization authority 55.
`Upon receipt of this communication from the device 50, the
`license authority 55 checks that the license information is valid
`(step 13).
`
`11
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`Patent 8,566,960 B2
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`Ex. 1001, 4:56–62 (emphasis added). Patent Owner argues that “the license
`
`information” in this passage, because it is not designated with reference
`
`number 10, refers to both “license related information 10” and “identifying
`
`information 11.” PO Resp. 17.
`
`Patent Owner’s argument is not persuasive. We find that “the license
`
`information,” although it is not followed by “10,” nevertheless refers to
`
`“license related information 10.” Indeed, in Figure 2, the ’960 patent refers
`
`to item 10 as “License Information.” Moreover, the ’960 patent explains,
`
`“[i]f 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.” Ex. 1001, 5:1–5. Thus,
`
`the ’960 patent expressly describes step 13 as checking license information
`
`10 and steps 15 and 16 as checking device unique identity information 11.
`
`Patent Owner points to no persuasive evidence that step 13 checks device
`
`identity information.
`
`The “verify” limitation of claim 1 expressly recites a check based “at
`
`least in part on a device identity.” The specification describes such a check
`
`as occurring at steps 15 and 16, not step 13. Steps 15 and 16 check whether
`
`the device identity is on record and, in response to that check, allow a digital
`
`product to be used on a device (steps 17, 18) or start a process to authorize
`
`the device. Id. at 5:1–9, 5:13–18. Although steps 15 and 16 are not
`
`expressly described as a verification of validity, steps 15 and 16, not step 13,
`
`logically track and most closely align with the language of claim 1’s
`
`“verify” and “in response to” limitations. Thus, the specification supports
`
`Petitioner’s view that the “verify” limitation can encompass checking
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`12
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`whether unique device information is reflected in a database as authorized
`
`for a license.
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`Finally, Patent Owner contends that “[t]he specification is replete with
`
`examples of using unique device information to perform validity checks,
`
`independent of whether the device is already on record” and “identifies a
`
`myriad of ways in which ‘device fingerprinting’ may be performed to
`
`generate and transmit unique device identities, which then may be compared
`
`to expected results to confirm validity.” PO Resp. 18 (citing Ex. 1001,
`
`9:20–10:67). We have analyzed the portion of the specification identified by
`
`Patent Owner and agree with Petitioner (Reply 12–13) that it describes
`
`several techniques for generating a device identity, but does not describe
`
`examples of performing validity checks based on device identity. Ex. 1001,
`
`9:20–10:67. Therefore, Patent Owner’s argument is not persuasive.
`
` In sum, upon consideration of the complete record, including the
`
`claim language itself and the description in the specification, 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.
`
`
`
`2. “set[ting] the allowed copy count to a first upper limit for a
`first time period” (claims 1, 22)
`
`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
`
`13
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`with the digital product.” Claim 1 further 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, the allowed copy count corresponding to a
`
`maximum number of devices authorized to use the digital product.”
`
`Claim 22 includes similar recitations.2 The parties’ dispute is whether “set
`
`the allowed copy count to a first upper limit for a first time period” requires
`
`adjusting the allowed copy count from a first value to a first upper limit (as
`
`Patent Owner proposes) or, alternatively, is broad enough to encompass
`
`setting the allowed copy count for the first time (as Petitioner proposes). In
`
`our Institution Decision, we preliminarily agreed with Petitioner. Dec. 16.
`
`At the institution stage, the parties disputed whether the preamble of
`
`claim 1 is limiting, with Patent Owner arguing that it is and Petitioner
`
`arguing that it is not. Id. at 12–13. Patent Owner now argues that “[t]he
`
`preambles [of claims 1 and 22] expressly state that the claimed system and
`
`method are both directed to ‘adjusting’ the license in terms of its allowed
`
`copy count, which the preambles expressly define.” PO Resp. 9. We
`
`explained in the Institution Decision, however, that even if the preamble is
`
`limiting (e.g., by virtue of it providing antecedent basis (“at least one
`
`allowed copy count”) for “set the allowed copy count”), the language “[a]
`
`system for adjusting a license for a digital product over time” constitutes a
`
`
`2 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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`14
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`statement of intended purpose and does not purport to modify any particular
`
`claim language, such as “set the allowed copy count.” Dec. 13–14.
`
`Patent Owner argues that our preliminary construction would vitiate
`
`the purpose of the preamble language and that, instead, “the claim
`
`limitations must be understood in light of the ‘adjusting’ context introduced
`
`in the preamble.” PO Resp. 9. However, “the mere fact that a structural
`
`term in the preamble is part of the claim does not mean that the preamble’s
`
`statement of purpose or other description is also part of the claim.” Marrin
`
`v. Griffin, 599 F.3d 1290, 1295 (Fed. Cir. 2010). Rather, the Federal Circuit
`
`has held that “a preamble is not limiting ‘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.’” Catalina Mktg. Int’l,
`
`Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting
`
`Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Thus, an intended
`
`purpose set forth in a claim preamble and the context that purpose might
`
`provide, without more, are not limiting. Moreover, as Petitioner points out,
`
`“the claimed invention could be used to adjust an allowed device limit, at
`
`least to a higher limit, thereby satisfying the intended purpose of the
`
`invention.” Reply 4.
`
`Patent Owner next argues that “at least one allowed copy count” in the
`
`preamble of claim 1 provides antecedent basis for “set the allowed copy
`
`count” and is recited as having “a non-zero value.” PO Resp. 10. Because
`
`the “at least one allowed copy count” has a non-zero value, Patent Owner
`
`argues, “the allowed copy count,” recited later in claim 1, is not merely
`
`initialized, but adjusted from the non-zero value to a new first upper limit.
`
`Id. We agree with Petitioner (Reply 5), however, that the “at least one
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`15
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`allowed copy count” in the preamble refers to the existence of a variable for
`
`the allowed copy count, rather than a recitation that the allowed copy count
`
`is set to an initial value of “one.” Thus, claim 1 is consistent with a situation
`
`in which the first time a device identity is not found on record, the allowed
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`copy count variable would be initialized, or set, to a first upper limit, but not
`
`adjusted from an existing value to the first upper limit.
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`Patent Owner contends that both experts testified that claims 1 and 22
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`require adjusting the allowed copy count. PO Resp. 10. Petitioner’s expert,
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`Dr. Rubin, testifies that “Claim 22 is a method claim that consists of the
`
`same steps along with a preamble, which states that the method is used for
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`adjusting a license for a digital product over time.” Ex. 1002 ¶ 70. Patent
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`Owner’s expert, Dr. DiEuliis, purports to “agree with Dr. Rubin’s
`
`assessment that the preamble teaches that the system ‘is used for adjusting a
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`license for a digital product over time.’” Ex. 2001 ¶ 45. Nevertheless, we
`
`read Dr. Rubin’s testimony as quoting the preamble of claim 22 rather than
`
`opining on the scope of claim 22. Patent Owner further argues that
`
`Dr. Rubin admitted on cross-examination that claim 1 requires “adjusting.”
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`PO Resp. 10–11 (reproducing Ex. 2003, 19:12–20:9). This testimony,
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`however, is consistent with Petitioner’s view that claim 1 encompasses
`
`adjusting the allowed copy count, but does not require it.
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`Patent Owner argues that dependent claims, e.g., claim 9, confirm that
`
`claim 1 requires an adjustment of the allowed copy count from one value to
`
`another. PO Resp. 11. Claim 9 depends from claim 1 and recites, inter alia,
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`“in response to the device identity not being on the record, after the first time
`
`period has expired, set the allowed copy count to a second upper limit for a
`
`16
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`IPR2017-00948
`Patent 8,566,960 B2
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`second time period.” Patent Owner argues that, because “set” in claim 9 is
`
`used to mean “adjust,” it must carry that meaning in claim 1. Id. at 10–11.
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`Patent Owner further argues that the specification supports its
`
`construction by describing embodiments in which device limits of a license
`
`are temporarily and automatically adjusted. Id. at 12–13 (citing Ex. 1001,
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`3:48–4:2, 6:34–35). The passage cited by Patent Owner does not provide
`
`any meaningful discussion of setting or adjusting an allowed copy count
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`and, thus, is not persuasive. In contrast, Petitioner cites to an example in
`
`which a “device limit is initially set to five.” Reply 4 (quoting Ex. 1001,
`
`4:5–9). Thus, the specification supports Petitioner’s argument rather than
`
`Patent Owner’s. In any case, the specification does not support limiting
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`“set” to “adjust” as Patent Owner proposes.
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`Finally, Patent Owner argues that Petitioner argued in District Court
`
`that the claims require adjusting a device limit from one level to another and
`
`that this argument constitutes a binding party admission. PO Resp. 13–14
`
`(citing Ex. 2002, 12). Exhibit 2002 is Petitioner’s Motion for Attorneys’
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`Fees, filed in District Court, following successfully obtaining dismissal on
`
`grounds that the asserted claims did not recite statutory subject matter under
`
`35 U.S.C. § 101. In attempting to characterize Patent Owner’s defense to
`
`the Motion to Dismiss as unreasonable, Petitioner argued, inter alia:
`
`Uniloc’s primary argument in support of the patentability of its
`claims was baseless and intended solely to obfuscate the Alice
`analysis. Uniloc repeatedly mischaracterized its claimed
`invention as one that “adjusted” a device limit by “newly
`setting” that device limit for a “first time period.” See, e.g.,
`Dkt. No. 21 at 5-6; Dkt. No. 35 at 5. No reasonable litigant
`would argue that a limit is “adjusted” when it is “newly set” for
`the first time. Instead, as disclosed in the ’960 patent,
`
`17
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`IPR2017-00948
`Patent 8,566,960 B2
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`“adjusting” in the context of the alleged invention refers to
`changing the device limit from one level (for example five
`devices for the first five days) to another level (seven devices
`for the next 25 days) (’960 patent at 4:27–31), which was only
`recited in some of the dependent claims (see, e.g., id. at
`12:12:42—51 (claim 9)).
`
`Ex. 2002, 12.
`
`We disagree with Patent Owner’s characterization of Petitioner’s
`
`arguments. Instead, Petitioner argued that Patent Owner unreasonably
`
`contended that its claims (other than dependent claims such as claim 9),
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`required adjusting a device limit from one level to another. In any case,
`
`Petitioner’s District Court arguments do not change our view of the language
`
`of claims 1 and 22 and the description in the specification.
`
`In sum, upon consideration of the complete record, including the
`
`claim language itself, the description in the specification, and the expert
`
`testimony, we agree with Petitioner that “set[ting] the allowed copy count to
`
`a first upper limit” may encompass, but does not require, “adjust[ing] the
`
`allowed copy count from at least one value to an upper limit.”
`
`
`
`B. Anticipation by DeMello
`
`Petitioner contends that claims 1–5, 7–10, 12–14, 16–18, and 22–25
`
`are anticipated by DeMello. Pet. 21. 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 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). As explained below, we agree that claims 1–5, 7, 8, 18, 22, and 25
`
`are anticipated, but not claims 9, 10, 12–14, 16, 17, 23, and 24.
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`18
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`IPR2017-00948
`Patent 8,566,960 B2
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`1. Overview of DeMello
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`DeMello describes a server architecture for a digital rights
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`management system. Ex. 1003, Abstract. Figure 4, reproduced below,
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`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
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`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,
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`license server module 77, validates each download request, seals copies of
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`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
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`site 75 provide each client reader (eBook device 92 and PC Reader 90) with
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`19
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`IPR2017-00948
`Patent 8,566,960 B2
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`a secure repository and an activation certificate that associate the activated
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`readers with an online persona, e.g., a Microsoft Passport ID. Id. at 13:14–
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`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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`20
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`IPR2017-00948
`Patent 8,566,960 B2
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`Figure 8 is a flow diagram of a client reader activation process. Id. at 4:39–
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`41. To start the process, a client reader (alternately referred to as a reader
`
`
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`21
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`IPR2017-00948
`Patent 8,566,960 B2
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`client) connects to activation servers 94, and the user of the client reader is
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`prompted to log in using Microsoft Passport credentials. Id. at 22:33–39
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`(steps 150, 152). After the Passport credentials are authenticated, activation
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`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), create a unique machine ID based on the hardware ID, and
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`determine if the client reader has been activated previously or if, instead, the
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`user is requesting a new activation. Id. at 13:62–66, 22:44–53 (steps 156–
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`164).
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`DeMello describes having a limit to the number of devices activated
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`for the most secure licenses associated with a Passport ID. In Figure 8, users
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`are limited to five activations within 90 days of the first activation of a
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`reader. Id. at 22:59–66. “The limit on activations may also allow for
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`additional activations as time passes—e.g., one additional activation for each
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`90 day period after the first 90 days, up to a limit of 10 total activations.”
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`Id. at 23:4–8.
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`In the case of a new activation, if the user already has activated the
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`maximum number of readers, an error message is rendered. Id. at 22:54–58
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`(steps 168, 172). Otherwise, the user fills out and returns an activation form,
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`a new record is created for the user and reader, the number of readers
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`activated for the Passport account is incremented, a secure repository key
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`pair is retrieved from a database, activation certificates are generated, and
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`the activation keys, user ID, and machine ID are persisted in a database.
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`Id. at 23:11–25 (steps 170, 174–186). Activation servers 94 then generate,
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`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 activatio
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