`MAR ‘2 5 "2019
`
`0.8. PATENT & TRADEMARK OFFICE
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMAZONCOM, INC., AMAZON DIGITAL SERVICES, INC.,
`AMAZON FULFILLMENT SERVICES, INC, HULU, LLC,
`
`AND NETFLIX, INC,
`Petitioner
`
`V.
`
`UNILOC 2017 LLC
`Patent Owner.
`
`Case IPR2017-00948
`
`US Patent No. Patent 8,566,960 B2
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`Mail Stop
`Patent Board
`
`Patent Trial and Appeal Board
`US. Patent and Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`
`
`Pursuant to 35 U.S.C. §§ 141 and 142 and 37 CPR. §§ 90.2 and 90.3, Patent -
`
`Owner Uniloc 2017 LLC. (“Patent Owner”) hereby provides notice that it appeals to the
`
`United States Court of Appeals for the Federal Circuit from the Final Written Decision
`
`entered August 1, 2018 (Paper 31); the Decision Denying Patent Owner’s Request for
`
`Rehearing entered September 6, 2018 (Paper 33); and fiom all underlying findings,
`
`orders, decisions, rulings, and opinions, including, without limitation the institution
`decision entered August 14, 2017 (Paper 10).-
`
`In accordance with 37 CPR. § 90.2(a)(3)(ii), Patent Owner states that the issues
`
`for appeal include, but are not limited to: the Patent Trial and Appeals Board (“Board”)’s
`
`determinations to deny Patent Owner’s Motion to Amend US. Patent No 8,566,960 B2
`
`(the “’960 patent”); the Decision Denying Patent Owner’s Request for Rehearing; the
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`Board’s consideration and analysis of the expert testimony, prior art, and other evidence
`
`in the record; and the Board’s factual
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`findings, conclusions of law, or Other
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`determinations supporting or relating to the above issues.
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`Pursuant to 35 U.S.C. § 142 and 37 CPR. § 90.2(a), this Notice is being filed
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`with the Director of the United States Patent and Trademark Office. Simultaneous
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`with this submission, a copy of this Notice is being filed with the Patent Trial and
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`Appeal Board. In addition, a copy of this Notice, along with the required docketing
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`fees, is being filed with the Clerk’s office of the United States Court of Appeals for
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`the Federal Circuit.
`
`
`
`DATED: March 21, 2019
`
`By: /s/ Brett Mangzum
`Brett Manng (Reg. No. 51,970)
`
`Ryan Loveless (Reg. No. 51,970)
`James Etheridge (Reg. No. 37,614)
`Jeffrey Huang (Reg. No. 68,639)
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`
`Southlake, TX 76092
`brett@etheridgelaw.com
`flan@etheridgelaw.com
`j irn§@etheddgelaw. com
`jeff@etheridgelaw.com
`8 1 7-470-7249
`
`Attorneys for Uniloc 2017 LLC
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that, in addition to being filed electronically through
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`the Patent Trial and Appeal Board’s E2E, the foregoing Notice of Appeal was filed
`
`by Express Mail on March 21, 2019, with the Director of the United States Patent
`
`and Trademark Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`
`PO. .Box 1450
`
`Alexandria, VA 22313-1450
`
`The undersigned certifies that a copy ofthe foregoing Notice of Appeal,'along
`
`with the required docket fee, was filed on March 21, 2019, with the Clerk’s Office
`
`for the United States Court of Appeals for the Federal Circuit through the Court’s
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`CM/ECF filing system.
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`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) of a copy of
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`this Notice ofAppeal by electronic mail on March 21, 2019, on the counsel of record
`
`for Petitioner:
`
`Lead Counsel
`
`Daniel Shvodian
`
`re42148
`
`shvodian-ptab@perkinscoie.com
`
`DATED: March 21 , 2019
`
`By: /s/ Brett A. Mangzum
`Brett A. Mangrum
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`I
`
`Paper No. 10
`Entered: August 14, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMAZONCOM, INC, AMAZON DIGITAL SERVICES, INC.,
`AMAZON FULFILLMENT SERVICES, INC., HULU, LLC,
`and NETFLIX, INC,
`
`Petitioner,
`
`V.
`
`UNILOC LUXEMBOURG S.A.,
`
`Patent Owner.
`
`Case IPR2017-00948
`
`Patent 8,566,960 B2
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`
`
`IPR2017—00948
`
`Patent 8,566,960 B2
`
`1.
`
`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 interpartes
`
`review of claims 1—25 of US. Patent No. 8,566,960 B2 (Ex. 1001, “the ’960
`
`patent”). Uniloc Luxembourg S.A. (“Patent Owner”) filed a Preliminary
`
`Response (Paper 9, “Prelim. Resp”). Upon consideration of the Petition and
`Preliminary Response, we conclude, under 35 U.S.C. § 314(a), that
`
`Petitioner has established a reasonable likelihood that it would prevail with
`
`respect to each of the challenged claims. Accordingly, we institute an inter
`
`partes review of claims 1—25 of the ’960 patent.
`
`B. “RelatedlMatters
`
`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
`
`Petitioner also relies on the Declaration of Aviel Rubin, Ph.D.
`
`(Ex. 1002, “Rubin Decl.”).
`
`
`
`IPR2017-00948
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`Patent 8,566,960 B2
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`Patent Owner relies on the Declaration of Val DiEuliis, Ph.D.
`
`(Ex. 2001, “DiEuliis Decl.”).
`
`D. The Asserted Grounds
`
`Petitioner asserts the following grounds of unpatentability (Pet. 5):
`
`
`m Claims Challenged
`
`
`
`1—5, 7—10, 12—14,
`16—18 and 22-25
`
`$67, 11, 12, 15, and
`
`
`
`
`
`
`
`- Reference(s)
`
`
`
`DeMeu"
`
`DeMello
`
`
`
`DeMello and Staruiala ‘
`
`§102(b)
`
`§ 103(a)
`
`§ 103(a)
`
`
`
`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
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`“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—222.
`
`Figure 2, reproduced below, illustrates an example:
`
`
`
`IPR2017-00948
`
`Patent 8,566,960 B2
`
`i'Le'ceris'afingdeE 5g"
`
`'
`
`
`Is
`
`
`device identity
`on record?
`
`
`
`User Warned of
`
`License Emit
`
` 25
`
`24
`i
`
`Authorization [
`User notified of
`license
`denied
`exceeded
`
`
`Days
`
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`slnce 15‘
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`
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`authorization
`
`
`
`run
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`
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`license
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`exceeded
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`37
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`User warned of
`
`License limit
`
`\1
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`4, Uselri notified o.
`came
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`exceeded
`-.---_——.-._-—- ----.—-...--—. .'—--.._~.-—___J
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`
`lion
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`dented
`
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`II
`
`Figure 2 is a flowchart for an approach to adjusting a license for a digital
`
`product. Id. at 3:20-21. In Figure 2, device 50 requests authorization from
`
`4
`
`
`
`IPR2017-00948
`
`Patent 8,566,960 B2
`
`licensing authority 55 (e.g., a publisher or distributor) to use a copy of a
`software license. Id. at 4:50—55.
`
`Device 50 gathers information about itself, including license related
`
`information 10 and unique device identifying information 11, and sends a
`
`request for authorization 12 to licensing authority 55. Id. at 4:56—59.
`
`Licensing authority 55 checks whether the requesting device’s unique
`
`identifying information 11 exists in its database of prior authorizations 15
`
`and, if so, reauthorizes device 50 and allows the software to run on the
`
`device. Id. at 5:1—12 (steps 13—18).
`
`If unique identifying information 11 is not in its database of prior
`authorizations 15, and‘if the request comes within the first five days of the
`
`licensing period, licensing authority 55 determines a device count of the
`
`number of successful authorizations for new devices that have been allowed
`
`and, if the device count is less than a device count limit of five, licensing
`
`authority 55 sends device 50 a message allowing the software to be used.
`
`.
`
`Id. at 5:13—26 (steps 18—19). If the device count is equal to five, licensing
`
`authority 55 can send a message to device 50 allowing the device to run, but
`
`also informing the user that the limit on available devices has been reached
`and that subsequent requests may be denied. Id. at 5:26—32 (step 22). Ifthe
`device count is greater than five (step 23), licensing authority 55 sends a
`
`message to device 50 denying authorization (step 24). Id. at 5233—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
`
`
`
`IPR2017—00948
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`Patent 8,566,960 B2
`
`performs similar tests with a device count limit of eleven. Id. at 5:61—6:7
`
`(steps 34—41).
`
`Claim 1, reproduced below, is illustrative of the claimed subject
`
`matter:
`
`A system for adjusting a license for a digital product
`1.
`over time, the license comprising at least one allowed copy count
`corresponding to a maximum number of devices authorized for
`use with the digital product, comprising:
`
`a communication module for receiving a request for
`authorization to use the digital product from a given
`device;
`
`a processor module in operative communication with the
`communication module;
`
`a memory module in operative communication with the
`processor module and comprising executable code
`for the processor module to:
`
`verify that a license data associated with the digital
`product is valid based at least in part on a device
`identity generated by sampling physical parameters
`of the given device;
`in response to the device identity already being on a
`record, allow the digital product to be used on the
`given device;
`
`in response to the device identity not being on the record,
`set the allowed copy count to a first upper limit for
`a first
`time period,
`the allowed copy count
`corresponding to a ' maximum number of devices
`authorized to use the digital product;
`
`calculate a device count corresponding to total number of
`devices already authorized for use with the digital
`product; and
`
`
`
`IPR2017—00948
`
`Patent 8,566,960 B2
`
`when the calculated device count is less than the first
`upper limit, allow the digital product to be used on
`the given device.
`
`11. 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 CPR. § 42.100(b); Cuozzo Speed Techs, LLC v. Lee,
`
`136 S. Ct. 2131, 2144—45 (2016). In applying a broadest reasonable
`
`construction, claim terms generally are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007).
`
`1.
`
`“verifizfingl 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 ofthe [given
`device/computer] ” (claims I, 22, 25)
`‘
`
`Claim 1 recites “verify that a license data associated with the digital
`
`product is valid based at least in part on a device identity generated by
`
`sampling physical parameters of the given device” (“the ‘verify’
`
`‘ limitation”). That recitation is followed by two clauses, “in response to the
`
`device identity already being on a record, allow the digital product to be
`
`used on the given device” and “in response to the device identity not being
`
`on the record, set the allowed copy count to a first upper limit for a first time
`
`period.” Independent claims 22 and 25 include similar recitations.
`
`
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`IPR2017-00948
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`Patent 8,566,960 B2
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`Although neither party proposes an express construction for the “verify”
`
`limitation, the parties’ respective application of this language to the prior art
`
`reveals a dispute.
`
`As explained in more detail below, Petitioner contends that this
`
`limitation is disclosed by DeMello’s description of an activation server
`
`checking whether a machine ID (derived from hardware information) is on
`
`record in an activation database as activated for a Microsoft Passport 1D
`
`associated with a user and the user’s eBook licenses. Pet. 27—28. Thus,
`
`Petitioner contends that verifying license data based in part on a device
`
`identity encompasses determining whether the device identity is on record as
`
`activated for data associated with a license. Petitioner, then, ties claim l’s
`
`“verify” limitation to the following two limitations, “in response to the
`
`device identity already being on a record .
`. .” and “in response to the device
`identity not-being on the record .
`.
`. .” In other words, Petitioner essentially
`
`contends that the “verify” limitation sets forth a test and that the two “in
`
`response to” limitations set forth alternative actions taken depending on the
`
`result of the test.
`
`Patent Owner disagrees that the “verify” limitation should be
`
`associated with the “in response to” limitations, and argues that “Petitioner
`
`erroneously conflates the claimed verification of the validity of ‘license
`data” with. the separately claimed conditional responses based, instead, on
`whether or not the ‘device identity’ is presently ‘on a record.’” Prelim.
`
`Resp. 19. Patent Owner (id. at 20) argues that the ’960 patent’s specification
`
`supports its position, quoting it at length, which we also reproduce here:
`
`Typically the device 50 requesting authorization collects license
`related information 10 and unique device identifying information
`
`
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`IPR2017-00948
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`Patent 8,566,960 B2
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`11, compiles the collected information into a communication and
`sends it to the authorization authority 55. Upon receipt of this
`communication from the device 50, the license authority 55
`checks that the license information is valid (step 13).
`If the
`request fails, an authorization is disallowed (step 14) and the
`device based software is senta message to this effect. In practice
`this may involve further action by the device based software to
`notify the user of the failure to authorize and then either
`terminate the software or allow the software to continue in some
`
`form of trial mode or the like.
`
`license
`includes
`12
`authorization
`for
`the request
`If
`information/data that is valid, the license information checking
`process (at step 13) will pass and the requesting device[’]s unique
`identity information 11 is checked to see if it exists in the
`database of prior authorizations 15. If the device identity exists
`(step 16), meaning that
`the software has been successfully
`registered on the same device in the past, then accordingto the
`license terms 60 for
`the
`software
`a
`reauthorization is
`
`automatically allowed (step 17).
`
`Ex. 1001, 4:56—5:13. Patent Owner argues that this description, and the
`
`corresponding depiction in Figure 2 (reproduced above), “expressly
`
`distinguishes the validity check (e.g., step 13) from the separate
`
`determination of whether the device identity is presently on record (e.g.,
`
`step 16).” Prelim. Resp. 21.
`
`We agree with Patent Owner that the specification is informative,
`
`although we do not reach Patent Owner’s conclusion. Patent Owner is
`
`correct that Figure 2 shows step 13 (“License Info checked”) and steps 15
`
`and 16 (“Authorization Database consulted,” “Is device identity on record?”)
`
`as separate tests. Nevertheless, it is only the second test, corresponding to
`
`steps 15 and 16, that is based at least in part on a device identity. According
`
`to the quoted passage, a device seeking authorization to play content
`
`associated with a license sends both license information and unique device
`
`9
`
`
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`IPR2017-00948
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`Patent 8,566,960 B2
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`information to an authorization authority. At step 13, “the license authority
`
`55 checks that the license information is valid,” but there is no description of
`
`including device information in this check. Ex. 1001, 4:60—62. Device
`
`information is checked only after step 13: “If the request for authorization 12
`
`includes license information/data that is valid, the license information
`
`checking process (at step 13) will pass and the requesting device[’]s unique
`
`identity information 11 is checked to see if it exists in the database of prior
`
`authorizations 15.” Id. at 521—5. Determining whether the unique device
`
`information is on record for a license, at steps 15 and 16, is a determination
`
`whether the license is valid for the corresponding device and is the only test
`
`that the specification describes as based at least in part on the unique device
`
`information. Thus, the test of steps 15 and 16 most closely aligns with the
`
`“verify” limitation. Step 13, on the other hand, is described as a separate
`
`validity check that does not involve the unique device information and, thus,
`
`does not correspond to the “verify” limitation. In short, the specification
`
`supports Petitioner’s view that the “verify” limitation can encompass
`
`checking whether unique device information is reflected in a database as
`
`authorized for a license.
`
`We note that we have considered the parties’ respective expert
`
`declaration testimony but that both experts largely repeat the arguments of
`
`the respective briefs without adding to those arguments meaningfully.
`
`Ex. 10021111110—117;Ex.20011fil 56—61.
`
`Patent Owner makes a separate argument for the “verify” limitation as
`
`it pertains to claim 25. Specifically, Patent Owner argues that Petitioner’s
`
`application of the term, as applied to the “verify” limitation of claim 25,
`
`“would make it impossible for an initial authorization attempt to succeed.”
`
`10
`
`
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`IPR2017-00948
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`Patent 8,566,960 B2
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`Prelim. Resp. 22. Claim 25 differs from claim 1, inter alia, in that, where
`
`claim 1 reCites “in response to the device identity not being on the record, set
`
`the allowed copy count to a first upper limit for a first time period,” claim 25
`
`recites “in response to the device identity not being on the record, set the
`
`allowed copy count to a first upper limit for a first time period after an
`
`initial authorization. ofthe digitalproduct.” According to Patent Owner,
`
`“[i]f ‘license data’ is deemed valid only upon confirmation that a ‘machine
`
`ID’ is included within a list of previously activated devices, then no initial
`authorization could pass as valid because there would be no previously
`
`activated device and, consequently, the list would remain empty.” Prelim
`
`Resp. 22. We, however, do not read “verify that a license data associated
`
`with the digital product is valid” to mean that the license is being “deemed
`
`valid.” Rather, it recites a test for verifying validity based in part on a
`
`device identity, the result of which is evaluated in the following two
`
`“response to” limitations of claim 25. According to claim 25, the allowed
`
`copy count is set if the device identity is not on the record, e.g., the test of
`the “verify” limitation is not met. Thus, we are not persuaded that
`
`Petitioner’s application of the “verify” limitation conflicts with other
`
`limitations of claim 25.
`
`In sum, we agree with Petitioner that “verify[ing] that a license data
`
`associated with the digital product is valid based at least in part on a device
`identity generated by sampling physical parameters ofthe [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.
`
`11
`
`
`
`IPR2017-00948
`
`Patent 8,566,960 B2
`
`2. ”set[ting] the allowed copy count to a first upper limitfor a
`first time period ” (claims 1, 22)
`
`Petitioner does not propose an express construction for “set[ting] the
`
`allowed copy count to a first upper limit for a first time period” (“the
`
`‘setting’ limitation”), as recited in claims 1 and 22. Petitioner, however,
`does contend that the preambles of claim 1 and 22 are not limitations.
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`Pet. 21, 43. The preamble of claim 1 recites “[a] system for adjusting a
`
`license for a digital product over time, the license comprising at least one
`
`allowed copy count corresponding to a maximum number of devices
`
`authorized for use with the digital product.” The preamble of claim 22
`
`similarly recites “[a] method for adjusting a license for a digital product over
`
`time, the license comprising at least one allowed copy count corresponding
`
`to a maximum number of devices authorized for use with the digital
`
`product.”
`
`Patent Owner, in essence, contends that the “setting” limitation should
`be read as “adjusting the allowed copy count from at least one value to an‘
`
`upper limit.” Patent Owner argues that, in light of the preambles of claims 1
`
`and 22, “the ‘allowed copy count’ variable must be temporarily ‘set’ from
`
`the ‘at least one’ value introduced in the preamble to, instead, an adjusted
`
`value expressly-distinguished as ‘a first upper limit,” and that it “would be
`
`incorrect to interpret the expressly-distinguished values ‘at least one’ and
`
`‘first upper limit’ to be one and the same.”1 Prelim. Resp. 24—25. This
`
`1 The preamble of claim 25 is not similar to that of claims 1 and 22 and
`Patent Owner does not propose an “adjusting” limitation for the language “in
`response to the device identity not being on the record, set the allowed COpy
`count to a first upper limit for a first time period after an initial authorization
`of the digital product,” as recited in claim 25.
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`argument depends on Patent Owner’s contention that the preambles of
`claims 1 and 22 are both limiting and introduce a “core ‘adjusting’ concept”
`
`that is reflected in the bodies of claims 1 and 22, specifically, the “setting”
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`limitation. Id. at 12—13. According to Patent Owner, “‘adjusting’ the
`
`‘allowed copy count’ from one value to another, as claimed, must be
`
`understood in light of the limiting preamble language.” Id. at 14.
`
`“In general, a preamble is construed as a limitation if it recites
`
`essential structure or steps, or if it is necessary to give life, meaning, and
`
`vitality to the claim,” but “is not limiting, however, where a patentee defines
`
`a structurally complete invention in the claim body and uses the preamble
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`only to state a purpose or intended use for the invention.” Symantec Corp. v.
`
`Computer Associates Int’l, Inc, 522 F.3d 1279. 1288 (Fed. Cir. 2008)
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`(internal quotation marks and citations omitted). We are not persuaded by
`
`Patent Owner’s arguments. Regardless of whether the preambles of claims 1
`
`and 22 are limiting, Patent Owner has not explained persuasively why
`
`“adjusting,” from the preambles, must be read into the body of the claims to
`
`change “set the allowed copy count to an upper limit” to “adjust the allowed
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`copy count from at least one value to an upper limit.”
`
`Patent Owner argues that the preambles provide antecedent basis for
`
`the terms “digital product” and “allowed copy count” recited in the bodies of
`claims 1 and 22 and “define the ‘allowed copy count’ as ‘corresponding to a
`
`maximum number [of] devices authorized for use with the digital product’”
`
`and “introduce that adjustable limit as having a positive value of ‘at least
`
`one.” Prelim. Resp. 13—14. We agree with Patent Owner that “the allowed
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`copy count,” recited in the body of claim 1, derives antecedent basis from
`
`“at least one allowed copy count,” recited in the preamble. Nevertheless, the
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`preamble does not recite that the allowed copy count is “adjustable.”
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`Rather, the language “[system/method] for adjusting a license for a digital
`
`product over time” constitutes a statement of intended purpose, and does not
`
`purport to modify any particular claim language.
`
`Patent Owner argues that “allowed copy count” is a variable in the
`
`code executed by claim 1’s processor module that is initially set to “at least
`
`one” value, in the preamble, and adjusted to another value, “a first upper
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`limit,” in the body of the claim. Prelim. Resp. 25. According to Patent
`
`Owner, the “setting” limitation “provides the condition upon which the
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`adjustable variable ‘allowed copy count’ must be temporarily ‘set’ from the
`
`positive ‘at least one’ value introduced in the preamble to, instead, an
`
`adjusted value expressly-distinguished as ‘a first upper limit’.” Id. at 14.
`
`Patent Owner acknowledges that “the bodies of Claims 1 and 22 do not
`
`recite the ‘allowed copy count’ is conditionally ‘set’ to be the same ‘at least
`
`one’ value introduced in the preamble,” but argues that “while the name of
`
`the variable ‘allowed copy count’ relies on antecedent basis from the
`
`preamble, the temporarily-adjusted value for that variable (expressed as ‘a
`
`first upper limit’) does not.” Id. at 25. Dr. DiEulliis largely repeats these
`
`arguments in his testimony. Ex. 2001 W 66—67. Patent Owner’s argument
`
`is not persuasive as it, without sufficient textual support in the claim,
`
`attempts to transform the preamble’s introduction of an allowed copy count
`
`into an additional, unrecited step directed by the executable code.
`
`Patent Owner further argues that dependent claims confirm its
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`position. Prelim. Resp. 25—26. For example, Patent Owner argues,
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`“Claim 9, which depends from Claim 1, also uses the word ‘set’ in
`
`expressing the adjustment of the ‘allowed copy count’ from one value to
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`another (i.e., from a ‘first upper limit’ to a ‘second upper limit’).” Id. at 25.
`Thus, Patent Owner argues, the claims use “set” synonymously with
`
`“adjust.” Id. at 26. Dr. DiEulliis largely repeats this argument in his
`testimony. Ex. 2001 111] 68—69. We are not persuaded. Although setting the
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`allowed copy count to a second upper limit, as recited in claim 9, may result
`
`in changing the value from the first upper limit, that, by itself, does not
`
`redefine “set” to mean “adjust.”
`Patent Owner also argues that the language in the body of claim 1,
`
`“for a first time period,” is a “temporal qualification” and that once this time
`
`period expires, the allowed copy count must revert back to something.
`
`Prelim. Resp. 26. According to Patent Owner:
`
`it
`Because the “first upper limit” has only a finite duration,
`follows that upon expiration of the “first time period” the “first
`upper limit” no longer controls and, consequently, the “allowed
`copy count” readjusts (e.g., back to the “at least one” value
`. referenced in the preamble or to some other value instead, such
`as the “second upper limit” recited in certain dependent claims).
`
`Id. Nevertheless, we do not see sufficient support in the claim language or
`
`the specification for inferring that setting the allowed copy count to a first
`upper limit requires adjusting the allowed copy count from an initial value
`merely because the first time period could expire. Claim 1 itself does not
`
`recite what must happen when the first time period expires.
`
`Patent Owner argues that the specification of the ’960 patent supports
`
`its position. Prelim. Resp. 26—27 (citing Ex. 1001, 3148—422, 6:34—35).
`
`None of the cited passages, however, describes setting an allowed copy
`
`count to an initial “at least one” value and later setting the allowed copy
`
`count by “adjusting” it to a new value. Thus, Patent Owner’s arguments are
`
`inapposite.
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`Finally, Patent Owner argues that the prosecution history of the ’960
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`patent supports its position. Specifically, Patent Owner argues that-
`
`“[a]pplicant successfully distinguished the claimed ‘cause—and—effect
`
`relationship’ from art that teaches, instead, that its ‘limit is established m
`to [i.e., not in response to] determining whether a terminal identifier is
`recognized as being present on the terminal identifier list. ”’ Prelim.
`
`Resp. 28 (quoting Ex. 1005, 32) (underlining in original, brackets and italics
`
`Patent Owner’s). Patent Owner’s argument is not persuasive, because the
`
`cited prosecution history was not addressing the impact of the preambles of
`the claims on the “setting” limitation. Rather, the applicant focused on the
`
`additional claim language “in response to the device identity not being on
`
`the record,” preceding the “setting” limitation in the body of the claim that
`
`became claim 1, and argued that this limitation must be read along with the
`
`“setting” limitation. Ex. 1005, 32. The applicant did not argue that the
`' “setting” limitation must be read in conjunction with the preamble or that the
`
`preamble otherwise imposed a limitation on what became claim 1. Thus, the
`
`prosecution history does not support Patent Owner’s argument.
`
`In sum, we are not persuaded that the preamble of claim 1, the
`
`intrinsic evidence, or expert testimony establishes that “set[ting] the allowed
`
`copy count to an upper limit” must be read as “adjust[ing] the allowed copy
`
`count from at least one value to an upper limit.”
`
`B.
`
`Asserted Grounds of Unpatentability
`
`To anticipate, a reference must “show all of the limitations of the
`
`claims arranged or combined in the same way as recited in the claims.” Net
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`MoneyIN, Inc. v. VeriSign, Inc, 545 F.3d 1359, 1370 (Fed. Cir. 2008);
`
`accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are “such that the
`
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`
`matter pertains.” We resolve the question of obviousness on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations. See Graham ‘v. John Deere
`
`C0., 383 US. 1, 17—18 (1966).
`
`I. Alleged Anticipation of Claims 1—5, 7—10, 12—14, 1 6—48,
`22—25 by DeMello
`
`Petitioner contends that claims 1—5, 7—10, 12—14, 16—18, and 22—25
`
`are anticipated by DeMello. Pet. 21. For the reasons given below, Petitioner
`
`has demonstrated a reasonable likelihood that it would prevail on this
`
`ground.
`
`a. Overview ofDeMello
`
`DeMello describes a server architecture for a digital rights
`
`management system. Ex. 1003, Abstract. Figure 4, reproduced below,
`
`illustrates an example:
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`IPR2017-00948
`Patent 8,566,960 B2
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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
`
`10266—1 1 :8. Download server ISAPI Extension 78 and its sub-component,
`
`license server module 77, validates each download request, seals copies of
`eBooks, requests licenses for copies of eBooks, and returns eBook titles to
`
`end users. Id. at 11:26—34, 11:46—51. Activation servers 94 of activation
`
`site 75 provide each client reader (eBook device 92 and PC Reader 90) with
`a secure repository and an activation certificate that associate the activated
`readers with an online persona, e.g., a Microsoft Passport ID. Id. at 13:14—
`
`29.
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