Paper No. 10
`Trials@uspto.gov
`Entered: January 11, 2018
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01665
`Patent 8,566,960 B2
`____________
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: January 11, 2018
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01665
`Patent 8,566,960 B2
`____________
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`IPR2017-01665
`Patent 8,566,960 B2
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`I. INTRODUCTION
`
`A. Background
`Google LLC1 (“Petitioner”) filed a Petition (Paper 2, “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 7, “Prelim. Resp.”).
`Petitioner’s challenges to the ’960 patent are nearly identical to those
`raised in a prior proceeding before the Board also involving the ’960 patent,
`IPR2017-00948 (“the ’948 proceeding”). The primary differences between
`the challenges raised in this proceeding and the ’948 proceeding amount to
`Petitioner presenting arguments in response to arguments raised by Patent
`Owner in its Preliminary Response in the ’948 proceeding. Petitioner also
`attempts to overturn our claim construction in yet another proceeding
`involving the ’960 patent, IPR2016–01271 (“the ’1271 proceeding”), but
`does not apply the prior art differently under its proposed construction.
`Upon consideration of the Petition and Preliminary Response in this
`proceeding, we decline, under 35 U.S.C. § 325(d), to institute a review of the
`challenged claims.
`
`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.
`
`
`1 Google Inc. originally was named as Petitioner. Petitioner subsequently
`filed updated Mandatory Notices informing the Board that Google Inc.
`converted from a corporation to a limited liability company and changed its
`name to Google LLC. Paper 6.
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`Pet. 2–3; Paper 5, 2. The ’960 patent also was the subject of Unified Patents
`Inc. v. Uniloc USA, Inc., Case IPR2016-01271 (PTAB) (“the ’1271
`proceeding”). Pet. 3. In the ’1271 proceeding, we denied institution of inter
`partes review. IPR2016-01271, Paper 6 (“’1271 Dec.”). The ’960 patent
`also is the subject of Amazon.com, Inc. v. Uniloc Luxembourg S.A., Case
`IPR2017-00948 (PTAB) (“the ’948 proceeding”). In the ’948 proceeding,
`we instituted an inter partes review on grounds substantially similar to those
`raised in the instant Petition, as we explain in detail below. IPR2016-00948,
`Paper 10 (“’948 Dec.”).
`
`C. Evidence Relied Upon
`Petitioner relies on the following prior art:
`May 16, 2006
`
`Ex. 1004 (“DeMello”) US 7,047,411 B1
`Nov. 27, 2002
`
`Ex. 1005 (“Staruiala,”)
`IE 02/0429
`June 14, 2011
`
`Ex. 1006 (“Colosso”) US 7,962,424 B1
`Petitioner also relies on the Declaration of Anthony J. Wechselberger
`
`(Ex. 1003, “Wechselberger Decl.”).
`
`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):
`References
`Basis
`Claims Challenged
`DeMello and Staruiala
`§ 103(a)
`1–25
`
`DeMello, Staruiala, and Colosso § 103(a)
`
`
`1–25
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`E. The ’960 Patent
`The ’960 patent describes techniques for monitoring and adjusting
`software usage under software licenses. Ex. 1001, 1:16–20. The ’960 patent
`discusses problems with existing software licensing schemes, including that
`“consumers of software have normal patterns of use that include the
`installation and use of digital products on multiple devices” and that
`“computers are also bought, sold and replaced so over time maybe two or
`three times this number of computers may be used by the user over time
`with a legitimate need to install and use the software on every computer.”
`Id. at 1:31–41. The ’960 patent addresses these problems with “an improved
`technique for allowing for a changing number of device installations on a
`per license basis over time.” Id. at 1:67–2:2.
`Figure 2, reproduced below, illustrates an example:
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`Figure 2 is a flowchart for an approach to adjusting a license for a digital
`product. Id. at 3:20–21. In Figure 2, device 50 requests authorization from
`
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`licensing authority 55 (e.g., a publisher or distributor) to use a copy of a
`software license. Id. at 4:50–55.
`Device 50 gathers information about itself, including license related
`information 10 and unique device identifying information 11, and sends a
`request for authorization 12 to licensing authority 55. Id. at 4:56–59.
`Licensing authority 55 checks whether the requesting device’s unique
`identifying information 11 exists in its database of prior authorizations 15
`and, if so, reauthorizes device 50 and allows the software to run on the
`device. Id. at 5:1–12 (steps 13–18).
`If unique identifying information 11 is not in its database of prior
`authorizations 15, and if the request comes within the first five days of the
`licensing period, licensing authority 55 determines a device count of the
`number of successful authorizations for new devices that have been allowed
`and, if the device count is less than a device count limit of five, licensing
`authority 55 sends device 50 a message allowing the software to be used.
`Id. at 5:13–26 (steps 18–19). If the device count is equal to five, licensing
`authority 55 can send a message to device 50 allowing the device to run, but
`also informing the user that the limit on available devices has been reached
`and that subsequent requests may be denied. Id. at 5:26–32 (step 22). If the
`device count is greater than five (step 23), licensing authority 55 sends a
`message to device 50 denying authorization (steps 24–25). Id. at 5:33–40.
`If request 12 comes between six and thirty-one days from the first
`successful authorization, licensing authority 55 performs similar tests, this
`time with a device count limit of seven. Id. at 5:41–60 (steps 19–33).
`Likewise, if request 12 comes after thirty-one days, licensing authority 55
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`performs similar tests with a device count limit of eleven. Id. at 5:61–6:7
`(steps 34–41).
`Claim 1, reproduced below, is illustrative of the claimed subject
`matter:
`
`A system for adjusting a license for a digital product
`1.
`over time, the license comprising at least one allowed copy count
`corresponding to a maximum number of devices authorized for
`use with the digital product, comprising:
`a communication module for receiving a request for
`authorization to use the digital product from a given
`device;
`a processor module in operative communication with the
`communication module;
`a memory module in operative communication with the
`processor module and comprising executable code
`for the processor module to:
`verify that a license data associated with the digital
`product is valid based at least in part on a device
`identity generated by sampling physical parameters
`of the given device;
`in response to the device identity already being on a
`record, allow the digital product to be used on the
`given device;
`in response to the device identity not being on the record,
`set the allowed copy count to a first upper limit for
`a first time period, the allowed copy count
`corresponding to a maximum number of devices
`authorized to use the digital product;
`calculate a device count corresponding to total number of
`devices already authorized for use with the digital
`product; and
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`when the calculated device count is less than the first
`upper limit, allow the digital product to be used on
`the given device.
`
`
`
`II. ANALYSIS
`Claim Construction
`A.
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–45 (2016). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007).
`
`
`1. Previous Claim Constructions
`In the ’1271 proceeding and the ’948 proceeding, we construed terms
`of the ’960 patent as follows:
`Term
`
`Construction
`
`Previous
`Decision
`’1271 Dec. 8–9
`
`’1271 Dec. 9
`
`“a first time period after
`an initial authorization of
`the digital product”
`(claim 25)
`
`“physical parameters”
`(claims 1, 22, 25)
`
`“a time period that begins
`at an initial authorization
`of the digital product and
`extending for a duration
`thereafter”
`not necessary to construe
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`“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)
`“set[ting] the allowed
`copy count to a first upper
`limit for a first time
`period” (claims 1, 22)
`
`
`
`’948 Dec. 7–11
`
`can encompass checking
`whether unique device
`information is reflected in
`a database as authorized
`for a license
`
`’948 Dec. 12–16
`
`need not be read as
`“adjust[ing] the allowed
`copy count from at least
`one value to an upper
`limit”
`
`2. “a first time period after an initial authorization of the
`digital product” (claim 25)
`In our Decision Denying Institution in IPR2016-01271, we construed
`this term to mean “a time period that begins at an initial authorization of the
`digital product and extending for a duration thereafter.” ’1271 Dec. 8–9.
`Petitioner argues that this construction is incorrect. Pet. 9–11. Rather,
`Petitioner argues, it should be construed to mean “a first time period
`subsequent to an initial authorization of the digital product” and should
`include both bounded and unbounded time periods. Id. at 11. Nevertheless,
`Petitioner does not contend that any disputed issue turns on this
`construction, as explained below. Thus, we need not revisit our construction
`for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
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`B. Overview of the Prior Art
`1. Overview of DeMello
`DeMello describes a server architecture for a digital rights
`management system. Ex. 1004, Abstract. Figure 4, reproduced below,
`illustrates an example:
`
`
`
`Figure 4 is a block diagram of a server architecture implementing aspects of
`a digital rights management system. Id. at 4:26–28. Bookstore servers 72
`associated with retail site 71 are network servers that host a commercial
`website that allows users to shop for and purchase eBook titles. Id. at
`10:66–11:8. Download server ISAPI Extension 78 and its sub-component,
`license server module 77, validates each download request, seals copies of
`eBooks, requests licenses for copies of eBooks, and returns eBook titles to
`end users. Id. at 11:26–34, 11:46–51. Activation servers 94 of activation
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`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.
`The process of activating a reader in Figure 4 is illustrated in Figure 8,
`
`reproduced below:
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`Figure 8 is a flow diagram of a client reader activation process. Id. at 4:39–
`41. To start the process, a client reader (alternately referred to as a reader
`
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`client) connects to activation servers 94, and the user of the client reader is
`prompted to log in using Microsoft Passport credentials. Id. at 22:33–37
`(steps 150, 152). After the Passport credentials are authenticated, activation
`servers 94 upload from the client a unique hardware ID (e.g., derived from
`hardware components on the user’s computing device that uniquely identify
`the device) and determine if the client reader has been activated previously
`or if, instead, the user is requesting a new activation. Id. at 22:44–53 (steps
`156–164).
`DeMello describes having a limit to the number of devices activated
`for the most secure licenses associated with a Passport ID. In Figure 8, users
`are limited to five activations within 90 days of the first activation of a
`reader. Id. at 22:59–66. “The limit on activations may also allow for
`additional activations as time passes—e.g., one additional activation for each
`90 day period after the first 90 days, up to a limit of 10 total activations.”
`Id. at 23:4–8.
`In the case of a new activation, if the user already has activated the
`maximum number of readers, an error message is rendered. Id. at 22:54–58
`(steps 168, 172). Otherwise, the user fills out and returns an activation form,
`a new record is created for the user and reader, the number of readers
`activated for the Passport account is incremented, a secure repository key
`pair is retrieved from a database, activation certificates are generated, and
`the activation keys, user ID, and machine ID are persisted in a database.
`Id. at 23:11–25 (steps 170, 174–186). Activation servers 94 then generate,
`digitally sign, and download to the client reader an individualized secure
`repository executable tied to the uploaded machine ID and an activation
`certificate tied to the user’s Passport ID. Id. at 23:49–56 (steps 188, 190).
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`The user then is informed that activation of the client reader is complete.
`Id. at 23:66–24:2 (step 196).
`
`
`2. Overview of Staruiala
`Staruiala describes a system for obtaining unique fingerprints from
`computer equipment. Ex. 1005, Abstract. According to Staruiala, “in the
`manufacturing process of any device, there are tolerable imperfections
`introduced. These are differences that do not compromise the functionality
`of the device so long as component performance lies within certain bounds.”
`Id. at 4. Staruiala explains that “[i]t is possible, in principle, to differentiate
`between systems through the analysis of their individual responses to
`identical stimuli.” Id. at 5. Staruiala describes various techniques for
`creating fingerprints based on the unique responses individual components
`and systems of computer hardware give to known stimuli. Id. at 8–11.
`Staruiala also describes a “challenge-response system” in which a
`system sends a log-on request to another system, which responds with a
`token. The first system hashes a user’s password with the challenge and
`includes it in a response to the second system. Id. at 11–12. “To
`individualize a specific user, explicit and intrinsic private uniqueness can be
`combined with a user’s password or passphrase for a hash-based challenge-
`response or zero knowledge system. The combination of the user’s
`passphrase and the computer’s identification will suffice to track and
`identify a particular user.” Id. at 12. According to Staruiala, “[t]he concept
`can be applied to scaled down (or minimal) devices and be used in copyright
`protection schemes,” and “can be extended up to identify and authenticate
`
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`networks (Figure 4) of computers or to device copyright protection schemes
`for software.” Id. at 13.
`
`
`3. Overview of Colosso
`Colosso describes a technique for assigning temporary “overdraft”
`software licenses to a customer who wishes to exceed the number of licenses
`that it has purchased. Ex. 1006, Abstract. “In response to receiving an order
`(e.g., including payment for one or more software licenses), a license
`distribution manager allocates a specified number of software licenses for
`distribution to a corresponding customer’s clients that utilize the licenses to
`operate software associated with a corresponding vendor software
`application.” Id. This permits the license distribution manager to “allocate
`extra software licenses (e.g., the overdraft licenses) and distribute more
`software licenses than are actually purchased by a respective customer.” Id.
`“According to one configuration, the clients 165 communicate over
`network 190 with license distribution manager 140 of computer system 110
`to obtain a respective license (e.g., e-license) to use a respective vendor
`software application.” Id. at 8:59–62, Fig. 1.
`After distributing all of the software licenses as specified by
`license pool A to a corresponding group of clients 165, the
`license distribution manager 140 can receive a request from
`another client for a software license to enable operation of a
`corresponding vendor software application. In response to
`receiving this additional request (e.g., the one hundred and first
`request), the license distribution manager 140 distributes an
`overdraft license to the requesting client.
`Id. at 8:31–39. Thus, “[t]he license distribution manager can allocate one or
`more overdraft licenses for distribution to the customer in addition to the
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`specified number of software licenses associated with the order.” Id. at
`Abstract. The customer can use an overdraft license until the customer
`replaces it with a corresponding purchased license. Id. An overdraft license
`can be activated for a limited time. According to Colosso:
`the time duration of the respective overdraft licenses can be
`controlled to limit a length of time that a respective overdraft
`license is valid for using the vendor’s software. For example,
`one or more of the overdraft licenses in license pool A' can be
`configured to expire one hundred and twenty days after a
`pertinent event such as first use of the overdraft license,
`distribution of the overdraft license, date of the purchase order,
`etc.
`Id. at 10:28–35.
`
`C. The ’948 Proceeding
`The petitioners in the ’948 proceeding (for convenience, we refer to
`them collectively as “Amazon”) raised three challenges to the claims of the
`’960 patent. Specifically, Amazon challenged claims 1–5, 7–10, 12–14, 16–
`18, and 22–25 as anticipated by DeMello, claims 6, 7, 11, 12, 15, and 16 as
`obvious over DeMello and, in the alternative, claims 1–25 as obvious over
`DeMello and Staruiala. ’948 Dec. 3. We instituted a trial on each of these
`grounds, except that we did not institute as to claims 7, 12, and 16 as
`obvious over DeMello. Id. at 34.
`Focusing specifically on Amazon’s third ground, obviousness over
`DeMello and Staruiala, Amazon cited DeMello for the majority of the claim
`limitations and cited Staruiala as an alternative, should we find that
`DeMello, by itself, does not teach “verify that a license data associated with
`the digital product is valid based at least in part on a device identity
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`generated by sampling physical parameters of the given device,” as recited
`in claim 1 (and similarly recited in claims 22 and 25). Id. at 31. Amazon
`also cited Staruiala for the limitations of dependent claims 19, 20, and 21,
`which it did not contend are taught in DeMello. Id. at 32–33. We
`preliminarily determined that Amazon had shown reasons, with rational
`underpinning, to combine the teachings of DeMello and Staruiala. Id. at 32.
`As to the disclosure of DeMello, Patent Owner argued that DeMello
`did not disclose executable code for a 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,” as recited in claim 1 (and similarly recited in claims 22 and 25).
`Id. at 24–25. Patent Owner contended that Amazon’s application of
`DeMello improperly read claim 1’s “verify” and two “in response to”
`limitations as part of the same test. Id. We rejected this argument based, in
`part, on our preliminary construction of this claim term. Id. at 7–11, 24–25.
`Patent Owner also argued that DeMello does not disclose executable
`code for a processor module to, “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,” as recited in claim 1 (and similarly recited in claim 22). Id. at 25.
`Patent Owner contended that this claim language requires adjusting an
`allowed copy count from at least one value to an upper limit and that this is
`not shown in DeMello. Id. We rejected this argument based on our
`preliminary construction of this term. Id. at 12–16, 25–26.
`
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`D. 35 U.S.C. § 325(d)
`Institution of an inter partes review is discretionary. See Harmonic
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining
`that under § 314(a), “the PTO is permitted, but never compelled, to institute
`an IPR proceeding”); 37 C.F.R. § 42.108(a), (b) (“the Board may authorize
`the review to proceed” or “deny some or all grounds for unpatentability for
`some or all of the challenged claims”). Guiding our exercise of discretion in
`this case is 35 U.S.C. § 325(d), which provides that, “[i]n determining
`whether to institute or order a proceeding under this chapter, chapter 30, or
`chapter 31, the Director may take into account whether, and reject the
`petition or request because, the same or substantially the same prior art or
`arguments previously were presented to the Office.”
`A panel of the Board has summarized the considerations we undertake
`in deciding how to exercise our discretion under § 325(d):
`Our discretion under § 325(d) involves a balance between
`several competing interests. See Neil Ziegman, N.P.Z., Inc. v.
`Stephens, Case IPR2015-01860, slip op. at 12–13 (PTAB Feb.
`24, 2016) (Paper 11) (“While petitioners may have sound reasons
`for raising art or arguments similar to those previously
`considered by the Office, the Board weighs petitioners’ desires
`to be heard against the interests of patent owners, who seek to
`avoid harassment and enjoy quiet title to their rights.”) (citing H.
`Rep. No. 112-98, pt. 1, at 48 (2011)). “On the one hand, there
`are the interests in conserving the resources of the Office and
`granting patent owners repose on issues and prior art that have
`been considered previously.” Fox Factory, Inc. v. SRAM, LLC,
`Case IPR2016-01876, slip op. 7 (PTAB Apr. 3, 2017) (Paper 8).
`“On the other hand, there are the interests of giving petitioners
`the opportunity to be heard and correcting any errors by the
`Office in allowing a patent—in the case of an inter partes
`review—over prior art patents and printed publications.” Id.
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`Hospira, Inc. v. Genentech, Inc., Case IPR2017-00739 (PTAB July 27,
`2017) (Paper 16), slip op. 18 (informative).
`
`
`1. Petitioner’s Challenge Based on DeMello and Staruiala
`Petitioner contends that claims 1–25 of the ’960 patent would have
`been obvious over DeMello and Staruiala. Pet. 18–63. This is the same
`combination of prior art raised by Amazon in the ’948 proceeding. See
`IPR2017-00948, Paper 1 (“’948 Pet.”), 33–61, 63–73.2
`Patent Owner contends that “Petitioner’s arguments here regarding
`DeMello and Staruiala (Ground 1) are identical to those presented in
`IPR2017-00948 and should therefore be denied as duplicative under 35
`U.S.C. § 325(d).” Prelim. Resp. 3. According to Patent Owner,
`both [the ’948 and instant] petitions rely on DeMello as the
`primary reference. Both petitions also only rely on Staruiala only
`for (1) the requirement in independent claims 1, 22, and 25 that
`the “device identity” must be “generated by sampling physical
`parameters of the given device”; and (2) the related limitations
`regarding “sampling physical parameters of the given device” in
`dependent claims 19–21.
`Prelim. Resp. 3–4. Patent Owner argues that “while reliance on either the
`same prior art or the same [] arguments is sufficient to invoke § 325(d),
`Ground 1 (the combination of DeMello and Staruiala) here relies on both the
`same prior art and virtually the same arguments.” Id. at 4.
`We have compared Petitioner’s arguments and evidence to those of
`Amazon and agree with Patent Owner that they are materially the same with
`
`
`2 These citations include Amazon’s anticipation analysis, which Amazon
`incorporates into its obviousness analysis. ’948 Pet. 57.
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`the following exceptions. First, for the limitation “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,” as
`recited in claim 1, Petitioner argues that:
`In related IPR2017-00948, Patent Owner asserts that the
`preamble’s use of “adjusting” requires “set[ting] the allowed
`copy count” from a preexisting nonzero value to a “first upper
`limit” that is different from the non-zero value. GOOGLE1008
`[’948 proceeding, Paper 9 (Prelim. Resp.)]-12. While Petitioner
`disagrees with this position, as explained at element 1.0 supra,
`DeMello teaches such an adjustment. Specifically, DeMello’s
`setting of the activation limit to a higher value to permit the user
`to “add one more” device constitutes an adjustment of its
`activation limit, e.g., from a maximum of five activations to six.
`GOOGLE1003 [Wechselberger Decl.]-¶ 98.
`Pet. 35. Petitioner then makes additional arguments that, to the extent that
`we do not find that DeMello expressly discloses setting its activation limit in
`response to the device hardware ID not being of record, it would have been
`obvious to try, or rearrange steps, to achieve such a system. Id. at 35–36.
`Second, for the limitation,
`code for causing a computer to, 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, the allowed copy count corresponding to a
`maximum number of devices authorized to use the digital
`product,
`as recited in claim 25, Petitioner argues:
`
`20
`
`
`
`IPR2017-01665
`Patent 8,566,960 B2
`
`
`Additionally, in IPR2017-00948, Patent Owner asserts that this
`claim element, despite its similarities to element 1.5,[3] is distinct
`in that it is directed to an initial setting of an allowed copy count,
`rather than an adjustment of an allowed copy count that occurs
`after being previously set to an initial non-zero value.
`GOOGLE1008 [’948 proceeding, Paper 9 (Prelim. Resp.)]-6.
`DeMello discloses this feature under the Board’s prior claim
`construction and Patent Owner’s alleged
`interpretation.
`GOOGLE1003 [Wechselberger Decl.]- ¶ 176.
`Pet. 59–60. Petitioner then presents its reasons supporting this contention,
`id. at 60–61, and an alternative contention that this limitation would have
`been obvious over DeMello, id. at 61–62.
`Patent Owner argues that the burden of defending against a
`subsequent case based on the same art “would be substantial in having to
`twice overcome, in two separate trials involving separate discovery and
`potentially even a separate panel, what Petitioner admits is the same
`arguments concerning the same combination of references.” Prelim. Resp.
`6. We agree. In our precedential decision General Plastic Industrial Co.,
`Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6,
`2017) (Paper 19), the Board outlined factors to be considered in exercising
`our discretion to institute under 35 U.S.C. § 314(a). One such factor is
`“whether at the time of filing of the second petition the petitioner already
`received the patent owner’s preliminary response to the first petition or
`received the Board’s decision on whether to institute review in the first
`petition.” General Plastic, slip op. at 9.
`
`
`3 Petitioner refers to “in response to the device identity already being on a
`record, allow the digital product to be used on the given device,” as recited
`in claim 1, as element 1.5. Pet. 32.
`
`21
`
`
`
`IPR2017-01665
`Patent 8,566,960 B2
`
`
`Although General Plastic discussed § 314(a) rather than § 325(d),
`General Plastic’s reasoning on this factor in particular guides how we view
`“shifts in the prior art asserted and the related arguments in follow-on
`petitions” as it relates to the burden on a Patent Owner. Id. at 17. In
`particular,
`Multiple, staggered petitions challenging the same patent and
`same claims raise the potential for abuse. The absence of any
`restrictions on follow-on petitions would allow petitioners the
`opportunity to strategically stage their prior art and arguments in
`multiple petitions, using our decisions as a roadmap, until a
`ground is found that results in the grant of review. All other
`factors aside, this is unfair to patent owners and is an inefficient
`use of the inter partes review process and other post-grant review
`processes.
`Id. at 17–18 (footnote omitted).
`The reasoning in General Plastic is pertinent here. Petitioner waited
`until after Patent Owner filed its Preliminary Response in the ’948
`proceeding to file its Petition challenging the ’960 patent based on the same
`prior art and substantially the same arguments. In the process, Petitioner
`took the opportunity to attempt to correct deficiencies alleged by Patent
`Owner in Amazon’s petition. This is precisely the type of roadmapping
`General Plastic counsels against. If we were to institute on this ground,
`Patent Owner would be forced to defend its patent in an iterative fashion
`against challenges based on the same prior art and substantially the same
`arguments, with the aforementioned roadmapping. As General Plastic
`explains, this has the potential to be unfair and inefficient.
`Petitioner argues that this ground is not redundant to Amazon’s
`ground because, as noted above, Petitioner challenges our construction of “a
`first time period after an initial authorization of the digital product,” as
`
`22
`
`
`
`IPR2017-01665
`Patent 8,566,960 B2
`
`recited in claim 25. Pet. 13. Petitioner contends that the alleged narrowness
`of our construction “is addressed by Petitioner here with additional
`arguments regarding the disclosures of DeMello.” Id. at 14. In comparing
`DeMello to this claim limitation, however, Petitioner performs its analysis
`almost entirely under our preliminary construction from the ’1271
`proceeding. Pet. 59–60 (“DeMello discloses this feature under the Board’s
`prior claim construction and Patent Owner’s alleged interpretation.”).
`Petitioner’s only discussion of its proposed broader construction is its
`argument that “because DeMello teaches or renders obvious this feature of
`claim 25 under the narrower construction of ‘a first period after an initial
`authorization’ promulgated by the Board in IPR2016-01271, DeMello also
`meets this limitation under a broader construction, or under its plain and
`ordinary meaning.” Id. at 62. This does not amount to prior art or argument
`that is substantially different from that presented in the ’948 proceeding such
`that Patent Owner should be subjected to serial challenges to its patent.
`Rather, it appears that Petitioner’s primary reason for filing its Petition is to
`address arguments raised by Patent Owner in its earlier ’948 proceeding
`Preliminary Response, which, we explain above, weighs against institution.
`On this record, we conclude that the Petition presents “the same or
`substantially the same prior art or arguments [that] previously were
`presented to the Office” by Amazon in the ’948 proceeding. 35 U.S.C.
`§ 325(d). We have considered Petitioner’s reasons for doin
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