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.,
`Petitioners
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-00948
`PATENT 8,566,960
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`PATENT OWNER’S RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.120
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`AMAZON.COM, INC., AMAZON DIGITAL SERVICES, INC., AMAZON
`FULFILLMENT SERVICES, INC., HULU, LLC, and NETFLIX, INC.,
`Petitioners
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-00948
`PATENT 8,566,960
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`PATENT OWNER’S RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.120
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`I.
`INTRODUCTION ………………………………………………………….1
`II. RELATED MATTERS …………………………………………………….2
`III. THE ’960 PATENT ………………………………………………………...2
`A. Overview of the ’960 Patent ………………………………………….2
`B.
`Priority Date of the ’960 Patent ………………………………………6
`C.
`Petitioner Oversimplifies the Patented Technology …………………..6
`IV. ORDINARY SKILL IN THE ART ……………………………………….6
`V.
`THE PETITION FAILS TO PROVE UNPATENTABILITY …………8
`Claim Construction …………………………………………………..8
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`1. The “adjusting” introduced in the claim preambles is
`reflected in the “set(ting)” limitations recited in the body
`of the claims ………………………………………………………….9
`2. [verify / verifying] 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 ……………………………………………………..14
`3. No Further Construction is Necessary ………………………………19
`The Petition does not prove unpatentability of “verify
`that a license data associated with the digital product is
`valid …” ……………………………………………………………..21
`The Petition does not prove unpatentability of “in
`response to the device identity not being on the record,
`[set / setting] the allowed copy count to a first upper limit
`for a first time period” ……………………………………………….25
`The Petition does not prove obviousness Based on
`DeMello in view of alleged knowledge of POSITA ………………...28
`THE SUPREME COURT IS CURRENTLY REVIEWING
`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`PROCEEDINGS ………………………………………………………….30
`VI. CONCLUSION ……………………………………………………………31
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`V.
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`IPR2017-00948
`U.S. Patent 8,566,960
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`TABLE OF CONTENTS
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`ii
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`IPR2017-00948
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`US. Patent 8,566,960
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`UPDATED LIST OF EXHIBITS
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`Declaration of Dr. Val DiEuliis (filed previously in this matter) 2002
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`2001
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`Petitioner’s Motion before the District Court (previouslyfiled)
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`2003
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`Dr. Rubin’s Deposition Transcript (newlyfiled)
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`U.S. Patent 8,566,960
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`I.
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`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.120, Uniloc Luxembourg S.A.
`(“Patent Owner”) submits this Response to the Petition for Inter Partes Review (“the
`Petition”) of U.S. Patent No. 8,566,960 (“the ’960 Patent”) filed by Amazon.com,
`Inc., Amazon Digital Services, Inc., Amazon Fulfillment Services, Inc., Hulu LLC,
`and Netflix, Inc. (collectively, “Petitioner”).
`The Petition injects several fully-dispositive claim construction disputes. This
`Response identifies multiple substantive deficiencies in the Petition derived from
`Petitioner’s erroneous claim constructions. Petitioner cannot prove unpatentability
`through application of an erroneous construction. See Mentor Graphics Corp., v.
`Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, at *11 (P.T.A.B. June 11,
`2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569
`(Fed. Cir. 2016) (denying Petition as tainted by reliance on an incorrect claim
`construction).
`With the benefit of a more complete record, including the concessions
`Petitioner offered through its expert that undermine the constructions set forth in the
`Petition, the Board is urged to reconsider some of its preliminary findings
`concerning claim construction, as set forth in its Institution Decision. See IPR2017-
`00948, Paper No. 10. If the Board ultimately is disinclined to adopt Patent Owner’s
`claim constructions concerning the original claims challenged in the Petition, Patent
`Owner respectfully submits that entry of the clarifying claim amendments set forth
`in its Contingent Motion to Amend (filed concurrently herewith) would greatly
`simplify resolution of the disputes over claim interpretation.
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`1
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`U.S. Patent 8,566,960
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`II. RELATED MATTERS
`This is not the first post-issuance proceeding the Board has considered. The
`’960 patent was also the subject of an inter partes review petition filed on June 29,
`2016 by Unified Patents: Unified Patents Inc. v. Uniloc Luxemburg S.A., IPR2016-
`01271. On January 9, 2017, the Board entered a Decision Denying Institution of
`Inter Partes Review, terminating that proceeding. See EX1006.
`Patent Owner notes that since the filing of the present Petition, Google Inc.
`(now Google LLC) filed another largely duplicative petition against the ’960 patent.
`See Google LLC v. Uniloc Luxemburg S.A., IPR2017-01655. Google’s petition
`copied the same arguments as the present Petition and introduced a vertically-
`redundant obviousness challenge, which added a third reference, U.S. Patent No.
`7,962,424, to the same combination presented in the instant Petition.
`The Petition appears to provide an accurate summary of related litigation
`concerning the ’960 patent. See Pet. 2‒3.
` III. THE ’960 PATENT
`A. Overview of the ’960 Patent
`During prosecution, Applicant offered the following overview of the ’960
`patent:
`
`The present application (“Richardson”) discloses an invention
`for a system that automatically adjusts usage limitations on
`licensed software. The adjustable license is based on exploitation
`of an advanced technique for generating a “device fingerprint”
`or “device identifier” for each of many computers that a single
`licensee may use to execute the licensed software. The device
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`identifier uniquely identifies each computer so that the licensing
`system can keep an accurate count of the number of computers
`authorized to use the software under any particular license.
`Unlike other software licensing schemes, the Richardson system
`anticipates that a licensee’s number of computers and computer
`configurations will change over time, and therefore implements
`a method for allowing such changes to occur without the user
`having
`to relicense
`the software, and without allowing
`unauthorized use of the software to run out of control.
`EX1005, at 29; see also Declaration of Dr. DiEuliis (“EX2001”) at ¶ 22 (citing the
`same).
`Consistent with that overview, the ’960 patent describes in its background
`section that consumers who license use of a digital product typically exhibit a
`pattern of usage which includes use of the digital product on multiple devices.
`EX2001 ¶ 23 (citing EX1001, 1:31‒41). Conventionally, publishers and digital
`owners have limited the license to a predefined number of devices. This scheme
`fails to consider normal addition and attrition that occur during the life of the
`licensed product. Such attrition and addition include, for example, the addition of
`new devices or replacement of older devices with new ones. The conventional
`method further requires the user to go through several tedious steps to retain its right
`to use the licensed product or to transfer these rights from one device to another
`device. Id., (citing EX1001, 1:61‒2:2).
`
`To address these and other shortcomings, the ’960 patent teaches that
`certain embodiments are configured to temporarily adjust device limits of a license
`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
`of devices linked to a specific license ….” EX2001 ¶¶ 25‒26 (citing EX1001, 3:63‒
`4:2). According to one example, a “license may state that the publisher authorizes
`the user to use their software on up to, for example, five devices, but that the
`publisher reserves the right to increase this limit at their own discretion.” Id. (citing
`EX1001, 3:48‒51). Within weeks of the purchase the licensed user reasonably
`seeks to exceed the five-device limit by one. Id. (citing EX1001, 3:52‒63). The
`’960 patent discloses that the sixth uniquely-identified device requesting to operate
`the software “may be allowed to run even though the publisher[’]s stated device
`limit per license is five.” Id., (citing 3:63‒4:2). In another embodiment, the ’960
`patent teaches that certain circumstances may warrant temporarily decreasing the
`discretionary limit allowed for in the license, such as upon detection of individual
`instances of copy abuse. EX2001 ¶ 27 (citing EX1001, 6:34‒40).
`
`Dr. DiEuliis summarized certain “adjusting” aspects of the above
`embodiments as follows. Under certain conditions, a temporary “grace period” may
`be applied, during which time a reasonable number of additional copy count(s) may
`also be allowed to run. See EX2001 ¶¶ 28 and 72. Dr. DiEuliis further observed that
`under certain other conditions, such as due to detection of suspected illicit copying,
`a heightened-security period may be applied, during which time the allowed copy
`count may be decreased temporarily. Id. Either way, the ’960 patent clearly
`discloses and claims temporarily and automatically adjusting (either upward or
`downward) the allowed copy count of a license. Id.
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`4
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`The ’960 patent teaches that, in certain embodiments, a system and method
`to adjust a license in terms of an allowed copy count generally involves multiple
`and distinct determinations which control whether conditional operations are
`executed. See EX2001 ¶¶ 29‒32. Those determinations include, for example,
`verifying at an authorization authority 55 the validity of information collected at,
`and received from, the device 50 requesting authorization. EX2001 ¶ 29 (citing
`EX1001, 4:56‒64; 7:1‒4; and Figure 2 (steps 10‒13)). If the validity check fails,
`the digital product is not allowed to run and the process terminates. Id. (citing
`EX1001, 4:62‒64 and Figure 2 (step 14)).
`If the validity check passes, certain identity information of the requesting
`device is checked to see if it currently exists in a database of authorizations. EX2001
`¶ 30 (citing EX1001, 5:1‒5 and Figure 2 (step 15)). If the identity information is
`presently on record, authorization of the digital product is automatically allowed.
`Id. (citing EX1001, 5:5‒9; 7:6‒8; and Figure 2 (steps 16‒18)). However, if the
`identity information is not on record (e.g., the disclosed example where a licensed
`user newly seeks to run a digital product on a sixth device, even though the
`publisher’s stated device limit per license is five) then the allowed copy count may
`be adjusted for a limited time to accommodate what is determined to be a reasonable
`and legitimate request. Id. (citing EX1001, 3:63‒4:2 and 7:4‒5).
`Another automated determination involves calculating a device count
`corresponding to total number of devices presently authorized for use with the
`digital product. See, e.g., 7:13‒18; Figure 3A (step 350); see also EX2001 ¶¶ 31‒
`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
`given time, while the device count denotes the number of devices using the
`licensed digital product. If the calculated device count does not exceed the adjusted
`copy-count limit and the time period for that adjustment has not expired, the digital
`product may be allowed to run on the requesting device. See, e.g., 7:13‒18; Figure
`3A (step 360); see also EX2001 ¶¶ 31‒32.
`B.
`Priority Date of the ’960 Patent
`The ’960 patent issued from U.S. Application Serial No. 12/272,570,
`which was filed November 17, 2008. The ’570 Application claims priority to
`U.S. Provisional Application No. 60/988,778, which was filed Nov. 17, 2007.
`EX1001, 1:7‒11.
`C.
`Petitioner Oversimplifies the Patented Technology
`The Petitioner oversimplifies the claimed invention of the ’960 p atent, for
`example, by characterizing it as “teaching only abstract rules” and not disclosing
`or claiming “any software or hardware implementation of its concepts.” Even a
`cursory review of the multiple figures confirms that the ’960 patent teaches
`sophisticated algorithmic structure for practicing the claimed invention according to
`certain disclosed embodiments. See EX2001 ¶¶ 20‒32. Petitioner’s myopic view of
`the ’960 Patent is further reflected in its deficient validity challenges, which
`overlook several claim limitations. See id., ¶¶ 33‒36.
`IV. ORDINARY SKILL IN THE ART
`The attached Declaration of Dr. Val DiEuliis (EX1002) defines a person of
`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
`engineering, or a closely related field, and one to two years of experience in software
`development; or the equivalent work experience.” EX2001 ¶ 37.
`Dr. DiEuliis disagrees with the definition POSITA offered in the Petition in
`certain respects.1 First, the Petition specifies “at least two years” of work experience,
`while Dr. DiEuliis specifies “one to two years.” Dr. DiEuliis recognizes, however,
`that the difference is inconsequential to the dispute before the Board. Id. ¶¶ 38‒39.
`More significantly, Dr. DiEuliis observes that Petitioner’s definition of a
`POSITA is unnecessarily restrictive at least in its specific qualification of relevant
`work experience as “using DRM, cryptography, and content distribution.” Id. 40. In
`addressing the definition of a POSITA offered by Petitioner’s declarant, Dr. Rubin,
`Dr. DiEuliis submitted the following observations:
`
`The Petitioners’ expert, Dr. Rubin presents a conflicting and
`contradictory analysis of a POSITA. EX1002 at ¶¶ 33‒38. First,
`Dr. Rubin states “[none] of the claims of the ’960 Patent require
`extensive technical knowledge to implement.” Id. at ¶ 36.
`Second, Dr. Rubin states “[no] specific techniques of digital
`rights management or encryption are disclosed or claimed.” Id.
`Thus, Dr. Rubin’s statements support my opinions concerning
`the amount of required experience and no need for DRM,
`encryption, or content distribution.
`
`1 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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`US. Patent 8,566,960
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`EX2001 1] 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. 1] 41.
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`V.
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`THE PETITION FAILS T0 PROVE UNPATENTABILITY
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`The Board instituted trial on the following grounds presented in the Petition:
`
`——m
`1
`1—5, 7—10, 12—14,
`102
`DeMello2
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`16—18,22—25
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`6—7, 11—12, 15—16
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`DeMeIIo and alleged knowledge of
`POSITA
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`DeMeIIo and Staruialas
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`A.
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`Claim Construction
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`The Petition injects several fully—dispositive claim construction disputes. This
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`Response identifies multiple deficiencies in the Petition derived from Petitioner’s
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`erroneous claim constructions. With the benefit of a more complete record, including
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`the concessions Petitioner offered through its expert
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`that undermine the
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`constructions set forth in the Petition, the Board is urged to reconsider some of its
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`preliminary findings concerning claim construction, as set forth in its Institution
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`Decision. See IPR2017—00948, Paper No. 10. If the Board ultimately is disinclined
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`to adopt Patent Owner’s claim constructions concerning the originally-challenged
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`claims, Patent Owner submits that entry of the clarifying claim amendments set forth
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`in its Contingent Motion to Amend (filed concurrently herewith) would greatly
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`simplify resolution of the dispute over claim interpretation-
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`2 EX1002, US. Patent No. 7,047,411 (“DeMeIIo”).
`3 EX1004, Irish Patent Application No. 2002/0429 (“Stamiala”).
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`1.
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`IPR2017-00948
`U.S. Patent 8,566,960
`The “adjusting” introduced in the claim preambles is reflected in
`the “set(ting)” limitations recited in the body of the claims
`The Petition erroneously construes the claimed “[system / method] for
`adjusting” (as recited in the preambles of independent claims 1 and 22) as somehow
`not requiring any form of adjusting whatsoever. Petitioner essentially argues the
`claims do not mean what they say and are somehow directed to a purpose other than
`what is recited.
`The preambles 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. The Board stated in its Institution Decision that “the
`language ‘[system/method] for adjusting a license for a digital product over time’
`constitutes a statement of intended purpose.” IPR2017-00948, Paper No. 10 at 14.
`That “purpose” would be vitiated if the independent claims had no limitations
`directed to adjusting. Under the broadest reasonable interpretation, the claim
`limitations must be understood in light of the “adjusting” context introduced in the
`preamble.
`As one would expect, the bodies of independent claims 1 and 22 each recite
`limitations reflecting the “adjusting” introduced in the preamble. Relying on
`respective preambles for antecedent basis, claims 1 and 22 recite “in response to the
`device identity not being on the record, [set/setting] the allowed copy count to a first
`upper limit for a first time period”. EX1001, 12:8‒13 and 13:44‒46 (emphasis and
`underlining added). That limitation provides the condition upon which the “allowed
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`copy count” introduced in the preamble must be temporarily “set” from its current
`value to, instead, an adjusted value expressly distinguished as “a first upper limit.”
`This “adjusting” interpretation is further confirmed by the fact that the
`preambles of claims 1 and 22 introduce the “allowed copy count” as having a non-
`zero value (i.e., “at least one copy count”). Relying on its respective preamble for
`antecedent basis, the bodies of claims 1 and 22 do not recite “the allowed copy
`count” is merely initialized to be the same “at least one” value introduced in the
`preamble. Rather, the bodies of the claims use the expressly-distinguished phrase
`“first upper limit” to redefine the value of “the allowed copy count”—thereby
`confirming the “set(ting)” limitations invoke the “adjusting” recited in the preamble.
`Notably, the definitive phrase “at least one allowed copy count” does not even
`appear in the Petition, let alone as an informative basis for interpreting the claims.
`The testifying experts appear to agree the independent claims require
`adjusting the allowed copy count. For example, Dr. DiEuliis and Dr. Rubin both
`observed that the preamble of independent claim 22 confirms to a person of ordinary
`skill in the art that the claimed method is used for adjusting a license in terms of its
`allowed copy count. Compare EX2001 (Dr. DiEuliis Dec.) ¶¶ 43−46 with EX1002
`(Dr. Rubin Dec.) at ¶ 70. Moreover, Dr. Rubin testified at his deposition that claim
`1 requires “adjusting” by conditionally setting the allowed copy count to a first upper
`limit:
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`Q: Can you tell me if there is any adjusting occurring in claim 1?
`MR. SHVODIAN: Same objections. Vague.4
`THE WITNESS: … the second in response to limitation shows
`an adjustment.
`Q: And what is being adjusted in that limitation?
`MR. SHVODIAN: Same objections.
`THE WITNESS: The allowed copy count.
`Q: And can you tell me how the allowed copy count is being
`adjusted?
`A: It’s being set to a first upper limit.
`EX2003, 19:12‒20:9.
`The dependent claims further confirm that the “set(ting)” limitations, as
`recited in claims 1 and 22, refer to an adjustment of “the allowed copy count” from
`one value to another. For example, claim 9 (which depends from claim 1) also uses
`the word “set” in reciting its conditional adjustment of the “allowed copy count”
`from the “first upper limit” to the “second upper limit.” EX1001, 12:44‒47 (“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 second time
`
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`4 As the transcript shows, throughout the deposition of Dr. Rubin, counsel for
`Petitioner, Mr. Shvoidian, repeatedly lodged improper coaching objections, such as
`the “vague” signal to the witness here. See Office Patent Trial Practice Guide,
`Federal Register, Vol. 77, Issue No. 157 (Aug. 14, 2012), Appendix D (“Examples
`of objections that would not be proper are: ‘‘Objection, I don’t understand the
`question’’; ‘‘Objection, vague’’; ‘‘Objection, take your time answering the
`question’’; and ‘‘Objection, look at the document before you answer.’’).
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`period”). The word “set” is also used in other dependent claims to define an
`adjustment of the allowed copy count from the “second upper limit” to a “third upper
`limit” and that further define the “second upper limit” as comprising “seven
`authorized devices” and the “third upper limit” as comprising “eleven authorized
`devices” (i.e., two different numbers). Id., 12:43−13:9.5 Viewing claims 1 and 22
`and their respective dependent claims as a whole, the words “set” and “setting”
`consistently refer to an adjustment of the “allowed copy count” from its current
`number to a different number. See Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d
`1314, 1334 (Fed. Cir. 2003) (confirming there is a presumption that “the same claim
`term in the same patent or related patents carries the same construed meaning.”)
`(citation omitted).
`The conclusion that independent claims 1 and 22 mean what they say and
`expressly require a form of “adjusting” is consistent with the specification. The ’960
`patent teaches that certain embodiments temporarily and automatically adjust device
`limits of a license “to accommodate a reasonable small increase in the number of
`devices linked to a specific license ….” EX1001, 3:63−4:2. According to one
`example, a “license may state that the publisher authorizes the user to use their
`software on up to, for example, five devices, but that the publisher reserves the right
`to increase this limit at their own discretion.” Id., 3:48−51. In that example scenario,
`within weeks of the purchase the licensed user may reasonably seek to exceed the
`
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`5 Notably, the dependent claims unambiguously confirm on their face that “the
`allowed copy count” introduced in the independent claims must be adjustable. This
`plain reading of the claim language does not appear to be disputed.
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`five-device limit by one. Id., 3:52−63. The ’960 patent discloses that the sixth device
`requesting to operate the software “may be allowed to run even though the
`publisher[’]s stated device limit per license is five.” Id., 3:63−4:2. In another
`embodiment, the ’960 Patent teaches that certain circumstances may warrant
`temporarily decreasing the discretionary limit allowed for in the license, such as
`upon detection of individual instances of copy abuse. Id., 6:34−35.
`Hence, Dr. DiEuliis observed that the claimed “first time period” may be
`considered a temporary “grace period” during which time a reasonable number of
`additional copy count(s) may also be allowed to run. EX2001 ¶ 104. Dr. DiEuliis
`further observed that the “first time period” may, alternatively, be a considered
`heightened-security period, during which time the allowed copy count is decreased
`temporarily (e.g., due to detection of suspected illicit copying). Id. Either way, the
`’960 patent teaches conditionally and temporarily adjusting (either upward or
`downward) the allowed copy count of a license. Id.
`The Petition ignores altogether the “adjusting” limitations of the independent
`claims. Petitioner’s omission was intentional. Petitioner argued before the district
`court that “‘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 12:42‒51 (claim
`9)).” Uniloc USA, Inc. et al. v. Amazon.com, Inc. et al., No. 2:16-cv-00570-RWS,
`Dkt. 119 at 12 (E.D.T.X May 5, 2017) (previously filed in this matter as Exhibit
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`2002) (emphasis added).6 As explained further below, the Petition relies on the same
`erroneous construction. See, e.g., Pet. 21‒23, 30‒31.
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`2.
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`[verify / verifying] 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 Petition impermissibly conflates the recitation “[verify/verifying] that a
`license data associated with the digital product is valid based at least in part on a
`device identity …” with the expressly distinguished conditional responses based,
`instead, on whether the “device identity” is “already … on a record.” See IPR2017-
`00948, Institution Decision, Paper No. 10 at 8 (“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.”).
`The claim language itself expressly proscribes Petitioner’s interpretation for
`several reasons. First, the claim language defines the validity verification as being
`directed to the “license data” itself, not to the expressly distinguished “device
`identity”: “[verify/verifying] that a license data … is valid based at least in part on
`a device identity ….” As explained further below, the specification confirms that
`“license data” may be verified as valid regardless whether a corresponding “device
`identity” is already on the record.
`Second, the claim language further emphasizes a distinction between the
`validity verification and the record check by reciting two distinct inquiries. The first
`inquiry is whether the “license data … is valid”. The second inquiry, instead, is
`
`6 The quoted statement made by Petitioner in its briefing before the district court is
`offered here as a binding party admission under Federal Rule of Evidence 801(d)(2).
`
`14
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`IPR2017-00948
`U.S. Patent 8,566,960
`
`whether the “device identity” is on the record. Consistent with that claim language,
`the specification describes those inquiries as separate steps. See, e.g., EX1001,
`Figure 2, steps 13 and 15 (and accompanying descriptions). The Board confirmed
`this understanding by observing 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.” Paper 10 (Institution Decision) at 9
`(emphasis added). If the license data is found to be invalid, there is no need to
`separately determine whether the device identity is on record. Id., Figure 2, step 14
`(and accompany description at 4:62−64).
`To conflate those two distinct inquiries together, one would have to assume
`that the validity of the “license data” depends on whether the “device identity” is
`already “on the record.” This 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. Such an interpretation is inconsistent with the intrinsic evidence. See,
`e.g., EX1001, Figure 2, steps 13 and 14 (and accompanying descriptions).
`Third, the claim language defines the validity verification as being “based at
`least in part on a device identity ….” However, the condition corresponding to the
`distinct record check refers only to the “device identity” and does not include the
`same “at least in part” qualification: “in response to the device identity already being
`on a record” and “in response to the device identity not being on the record ….” This
`explicit distinction confirms the validity verification and the record check are not
`one and the same. Indeed, Petitioner’s construction would risk eviscerating the “at
`
`15
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`IPR2017-00948
`U.S. Patent 8,566,960
`
`least in part” qualification by rewriting the verifying limitation to recite, instead,
`“[verify/verifying] that a license data associated with the digital product is valid
`based [exclusively] on a device identity ….”
`In its Institution Decision, the Board preliminarily found that the claim
`limitations directed to verifying the validity of license data do not reflect the
`description of step 13 of Figure 2 in the specification. IPR2017-00948, Paper No. 10
`at 9. The Board explained its preliminary finding as premised on an understanding
`that the specification does not expressly state step 13 may be executed based at least
`in part on a device identity. However, the determinative issue is not whether the
`particular embodiment described with reference to Figure 2 explicitly states step 13
`may be based on a device identity. It is the claim language, not a particular
`embodiment in the specification, that defines claim scope. The claim language itself
`expressly recites that the validity verification of the license data must be based at
`least in part on the device identity.
`To the extent the claim language reflects any of the steps described with
`reference to Figure 2, the claim language more closely aligns with, and indeed recites
`nearly verbatim, the same language as step 13. As between steps 13 and 15 of Figure
`2, the only description of verifying the validity of license data is in step 13. EX1001,
`4:60−62 (“Upon receipt of this communication from the device 50, the license
`authority 55 checks that the license information is valid (step 13).”); id. 5:1−5 (“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
`devices unique identity information 11 is checked to see if it exists in the database
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`16
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`IPR2017-00948
`U.S. Patent 8,566,960
`
`of prior authorizations 15.”). By way of contrast, step 15 is not described as a validity
`check at all. Id. Indeed, step 15 of Figure 2 is executed only if the license data is first
`verified as being valid. Id., 4:62−64.
`Further scrutiny of the description of step 13, to the extent necessary, confirms
`it does not preclude the possibility of verifying the validity of license data based at
`least in part on a device identity. That description teaches that at least two pieces of
`information are compiled together into a communication sent to the authorization
`authority 55: (1) “license related information 10” and (2) “identifying information
`11.” EX1001, 4:56−59. Notably, the description of the validity check performed in
`step 13 does not refer exclusively to either piece (identified by reference numbers
`10 and 11) of this compiled information. Rather, the description states “[u]pon
`receipt of this [compiled] communication from the device 50, the license authority
`55 checks that the [compiled] license information is valid (step 13).” EX1001,
`4:60−62.
`If use of the phrase “license information” in this particular context referred
`exclusively to reference no. 10 of Figure 2, to the exclusion of reference no. 11, then
`reference number 10 would have been utilized in connection with “license
`information” to confirm that distinction. The specification confirms this practice by
`later referring exclusively to “the requesting devices unique identity information 11”
`when describing the database check of step 15. EX1001, 5:3−5. Accordingly, the
`specification does not preclude performing the validity of check of step 13 based at
`least in part on device identity information.
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`IPR2017-00948
`U.S. Patent 8,566,960
`
`Patent Owner also respectfully disagrees with the Board’s preliminary finding
`that “[d]etermining whether the unique device information is on record … is the only
`test that the specific
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