IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Ric B. Richardson
`In re Patent of:
`8,566,960 Attorney Docket No.: 19473-0378IP1
`U.S. Patent No.:
`October 22, 2013
`
`Issue Date:
`Appl. Serial No.: 12/272,570
`
`Filing Date:
`November 17, 2008
`
`Title:
`SYSTEM AND METHOD FOR ADJUSTABLE
`LICENSING OF DIGITAL PRODUCTS
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 8,566,960 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`

`

`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`TABLE OF CONTENTS
`
`V.
`
`I.
`INTRODUCTION ......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ....................... 2
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .......................... 2
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 2
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................. 3
`D. Service Information ................................................................................ 3
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................ 4
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ....................... 4
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................ 4
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ........... 4
`THE ’960 PATENT ....................................................................................... 5
`A. Overview .................................................................................................. 5
`B. Summary of the Original Prosecution .................................................. 6
`C. Level of Ordinary Skill in the Art ......................................................... 8
`D. Claim Construction under 37 C.F.R. §§ 42.104(b)(3) ......................... 8
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’960 PATENT IS UNPATENTABLE ......................... 12
`A. OVERVIEW OF AND MOTIVATION TO COMBINE DEMELLO
`AND STARUIALA ............................................................................... 14
`B. GROUND 1: CLAIMS 1-25 ARE EACH UNPATENTABLE
`UNDER 35 U.S.C. § 103 AS OBVIOUS OVER DEMELLO IN
`VIEW OF STARUIALA ...................................................................... 18
`C. OVERVIEW OF AND MOTIVATION TO COMBINE COLOSSO
`WITH DEMELLO/STARUIALA ....................................................... 63
`D. GROUND 2: CLAIMS 1-25 ARE EACH UNPATENTABLE
`UNDER 35 U.S.C. § 103 AS OBVIOUS OVER DEMELLO IN
`VIEW OF STARUIALA AND FURTHER IN VIEW OF
`COLOSSO ............................................................................................. 67
`VII. CONCLUSION ............................................................................................ 79 
`
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`
`
`
`EXHIBITS
`
`GOOGLE1001 U.S. Patent No. 8,566,960 to Richardson (“the ’960 Patent”)
`
`GOOGLE1002
`
`Prosecution History of the ’960 Patent (“the Prosecution
`History”)
`
`GOOGLE1003 Declaration of Anthony J. Wechselberger
`
`GOOGLE1004 U.S. Patent No. 7,047,411 (“DeMello”)
`
`GOOGLE1005
`
`Irish Patent Application No. 02/0429 (“Staruiala”)
`
`GOOGLE1006 U.S. Patent No. 7,962,424 (“Colosso”)
`
`GOOGLE1007
`
`IPR2016-01271 Institution Decision
`
`GOOGLE1008
`
`IPR2017-00948 Patent Owner Preliminary Response to Petition
`
`GOOGLE1009 U.S. Patent No. 6,574,612 (“Baratti”)
`
`GOOGLE1010
`
`“The Long March to Interoperable Digital Rights Management”
`(“Koenen”)
`
`GOOGLE1011 U.S. Patent No. 5,671,412 (“Christiano”)
`
`GOOGLE1012 U.S. Patent No. 6,243,468 (“Pearce”)
`
`GOOGLE1013 U.S. Patent No. 7,503,072 (“Hughes”)
`
`GOOGLE1014 U.S. Patent No. 6,041,411 (“Wyatt”)
`
`GOOGLE1015 U.S. Patent No. 4,866,769 (“Karp”)
`
`
`
`ii
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`
`I.
`
`INTRODUCTION
`Google Inc. (“Petitioner” or “Google”) petitions for Inter Partes Review
`
`(“IPR”) under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42 of claims 1-25 of U.S.
`
`Patent 8,566,960 (“the ’960 Patent”). The ’960 Patent discloses a purportedly
`
`novel “system for adjustable digital licensing over time [that] allows a software
`
`user to increase the number of devices they can use with a particular software
`
`license over the period of ownership of that license.” GOOGLE1001-4:14-17.
`
`According to the ’960 Patent, this system allows “consumers of software [to] load
`
`their software on new or replacement devices as they are purchased over time
`
`without exposing the publisher to copying abuses that is [sic] common amongst
`
`software pirates and casual software copiers.” GOOGLE1001-6:8-12.
`
`But the ’960 Patent issued without full consideration of the wide body of
`
`applicable prior art. U.S. Patent 7,047,411 to DeMello, et al. (“the ’411 patent” or
`
`“DeMello”), which was filed more than seven years before the earliest priority date
`
`of the ’960 Patent, discloses a system designed “to limit the number of activations
`
`that any particular user may have with a single PASSPORTTM ID,” where “the
`
`number of activations […] will be periodically increased, up to a defined
`
`maximum.” GOOGLE1004-24:34-58. DeMello increases the number of
`
`permitted activations over time for precisely the reason given by the ’960 Patent,
`
`namely, to “allow users to activate readers on multiple devices that they own […]
`
`1
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`as well as allow them to activate new devices as they upgrade their hardware,
`
`reformat their hard disks, etc., without permitting unchecked and unlimited
`
`activations of readers to the same PASSPORT credential.” GOOGLE1004-24:44-
`
`51. Additionally, U.S. Patent 7,962,424 to Colosso, et al. (“the ’424 patent” or
`
`“Colosso”) describes a system for adjustable software licensing that “allocate[s]
`
`extra software licenses (e.g., []overdraft licenses) and distribute[s] more software
`
`licenses than are actually purchased by a respective customer.” GOOGLE1006-
`
`Abstract.
`
`In sum, consideration of these and other references should have prevented
`
`issuance of claims 1-25. Petitioner therefore requests the Board institute IPR of
`
`claims 1-25 on the grounds set forth below.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Google Inc. is the real party-in-interest. No other party had access to the
`
`
`
`Petition, and no other party had any control over, or contributed to any funding of,
`
`the preparation or filing of this Petition.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ’960 Patent was held unpatentable under 35 U.S.C. § 101 in a number of
`
`cases, including the case against Google: Uniloc v. Google Inc., 2:16-cv-00571,
`
`Dkt. No. 41, (E.D.TX terminated 3/20/17). That decision is presently on appeal:
`
`Uniloc v. Amazon.com, Inc., Appeal 17-2051 (CAFC). The ’960 Patent was also
`
`2
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`asserted in: Uniloc v. Hulu LLC, 2:16-cv-00573 (E.D.TX terminated 3/20/17);
`
`Uniloc v. Valve Corporation, 2:16-cv-00575 (E.D.TX terminated 01/05/17);
`
`Uniloc v. Amazon.Com, Inc., 2:16-cv-00570 (E.D.TX terminated 3/20/17); Uniloc
`
`v. Home Box Office, Inc., 2:16-cv-00572 (E.D.TX terminated 3/20/17); Uniloc v.
`
`Netflix, Inc., 2:16-cv-00574 (E.D.TX terminated 3/20/17); and Uniloc. v.
`
`Electronic Arts Inc., 6:15-cv-01009 (E.D.TX terminated 01/12/16).
`
`The ’960 Patent is the subject of IPR2016-01271 filed by Unified Patents
`
`(Institution Denied), and IPR2017-00948 filed by Netflix (Institution Decision
`
`expected on/before September 13, 2017). The analysis herein is not redundant to
`
`the analysis provided in earlier petitions.
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioner designates the following counsel:
`
`Lead Counsel
`W. Karl Renner, Reg. No. 41,265
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070/ Fax 877-769-7945
`
`Backup Counsel
`Adam Shartzer, Reg. No. 57,264
`Matthew Mosteller, Reg. No. 71,717
`Vivian Lu, Reg. No. 74,443
`
`
`
`D.
`
`Service Information
`Please address all correspondence and service to the above address.
`
`Petitioner consents to email electronic service at IPR19473-0378IP1@fr.com
`
`(referencing No. 19473-0378IP1 and cc’ing PTABInbound@fr.com).
`
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103
`Petitioner authorizes the Patent and Trademark Office to charge Deposit
`
`Account No. 06-1050 for the petition fee set in 37 C.F.R. § 42.15(a) and for any
`
`other required fees.
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’960 Patent is available for IPR and Petitioner is
`
`not barred or estopped from requesting IPR.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`Petitioner requests IPR of claims 1-25 on the grounds below. In support,
`
`this Petition includes rationales for each of these grounds and a supporting
`
`evidentiary declaration by Anthony Wechselberger (GOOGLE1003).
`
`Proposed Rejection
`Ground Claims
`Ground 1
`1-25 Obvious over DeMello in view of Staruiala
`Ground 2
`1-25 Obvious over DeMello in view of Staruiala and Colosso
`
`The ’960 Patent issued from U.S. Application No. 12/272,570, filed
`
`November 17, 2008, and claims priority to U.S. Provisional Application No.
`
`60/988,778, filed November 17, 2007. Accordingly, the earliest possible priority
`
`date for the ’960 Patent is November 17, 2007 (hereinafter the “Critical Date”).
`
`DeMello was published May 16, 2006, more than one year before the
`
`Critical Date, and is prior art at least under 35 U.S.C § 102(b).
`
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`Irish Patent Application No. 02/0429 (GOOGLE1005, “the ’429
`
`application” or “Staruiala”) was published November 27, 2002, more than four
`
`years before the Critical Date, and is prior art at least under 35 U.S.C § 102(b).
`
`Colosso was published June 14, 2011, and was filed October 24, 2006, more
`
`than one year before the Critical Date, and qualifies as prior art at least under 35
`
`U.S.C. § 102(e).
`
`V. THE ’960 PATENT
`A. Overview
`The ’960 Patent describes techniques for adjusting the number of devices al-
`
`lowed to use a digital product, e.g., software, under a license. GOOGLE1001-
`
`Abstract. The ’960 Patent admits it was a “common capability of digital product
`
`license systems […] to control how many devices are allowed to be used with each
`
`product license.” GOOGLE1001-1:22-24; GOOGLE1003-¶¶24-30. The ’960
`
`Patent contends, however, that existing methods did not “take into consideration
`
`the normal attrition that occurs with the purchase and upgrade of personal
`
`computing devices,” and that there was “a need for an improved technique for
`
`allowing a changing number of device installations on a per license basis over
`
`time.” GOOGLE1001-1:60-2:2. The ’960 Patent suggests “adjusting a license for
`
`a digital product over time” to account for “normal patterns of use that include the
`
`installation and use of digital products on multiple devices” by consumers, and the
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`natural accrual and/or replacement of personal computing devices on which a
`
`consumer would have a “legitimate need to install and use the software.”
`
`GOOGLE1001-1:31-41, 2:15-19; GOOGLE1003-¶¶24-29, 30-31.
`
`Claims 1, 22 and 25 of the ’960 Patent are independent. Claim 1 is directed
`
`to “a system,” comprising generic components of a “communication module,” a
`
`“processor module,” and a “memory module,” that perform well-known digital
`
`rights management (DRM) operations including verifying license data. Based on
`
`the number of devices already authorized to use a digital product, the ’960 Patent
`
`either allows use of the digital product associated with the license, or sets an upper
`
`limit on the number of copies of the digital product that can be used for a period of
`
`time. Claim 22 is a method claim that recites steps corresponding to those
`
`performed by the generic processor of claim 1. Claim 25 recites a computer-
`
`readable medium that comprises code for a generic computer to perform steps
`
`corresponding to those performed by the generic processor of claim 1, with the
`
`added caveat that the specified period of time occurs after an initial authorization
`
`to use the digital product.
`
`B.
`
`Summary of the Original Prosecution
`The ’960 Patent’s application was filed on November 17, 2008.
`
`GOOGLE1002-48.
`
`On May 5, 2011 independent claims 1, 22 and 25 were rejected in a first
`
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`Office Action as obvious as being unpatentable over U.S. Patent No. 5,925,127
`
`(“Ahmad”) in view of U.S. Publication No. 2006/0282511 (“Takano”).
`
`GOOGLE1002-208, 213-216. In response, on August 5, 2011, the independent
`
`claims were amended to specify that the device identity is “generated by sampling
`
`physical parameters of the given device,” and Ahmad was distinguished for failing
`
`to disclose this and other features of the independent claims. GOOGLE1002-238-
`
`248. On November 8, 2011 the Examiner issued a final Office Action rejecting all
`
`of the claims. GOOGLE1002-263-279. In summary, the Examiner disagreed with
`
`the Applicant’s alleged distinctions over the prior art, and in support cited U.S.
`
`Publication No. 2006/0272031 (“Ache”) to replace Takano. GOOGLE1002-266-
`
`277. On February 7, 2012, a Notice of Appeal was filed. GOOGLE1002-294.
`
`However, no appeal brief, or any other acceptable form of reply was filed within
`
`two months of the Notice of Appeal. GOOGLE1002-294-299. The application
`
`was eventually declared abandoned on September 18, 2012, but was later revived
`
`on December 13, 2012 based on a Petition filed by the Applicant on November 16,
`
`2012. GOOGLE1002-299-300, 304-306, 335.
`
`Also, the Applicant entered a Request for Continued Examination and
`
`remarks, without making claim amendments. GOOGLE1002-301-303, 312-326.
`
`The Applicant argued that the combination of Ahmad in view of Ache and U.S.
`
`Publication No. 2006/0048236 did not disclose an independent claim element
`
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`reciting, generally, “in response to the device identity not being on the record,
`
`set[ting] 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.” GOOGLE1002-319-322.
`
`The Examiner issued a Notice of Allowance on September 11, 2013 without
`
`explanatory reasons. GOOGLE1002-344-351. As detailed below, other prior art
`
`publications—which the Examiner never reviewed—teach all elements of claims
`
`1-25.
`
`C. Level of Ordinary Skill in the Art
`In the field of DRM at the time of the alleged invention, a person of ordinary
`
`skill in the art (POSITA) generally had a bachelor’s degree in computer science
`
`and/or electrical engineering or comparable experience, at least two years of
`
`experience in software development. GOOGLE1003-¶¶16-18.
`
`D. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). In re
`
`Cuozzo Speech Techs., 793 F.3d 1268, 1275 (Fed. Cir. 2015). All claim terms,
`
`including those discussed below, should be given their broadest reasonable
`
`meaning. The broadest reasonable constructions below do not waive any
`
`indefiniteness or claim scope arguments raised in any litigation requiring different
`
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`
`construction standards. GOOGLE1003-¶19.
`
`“A first time period after an initial authorization of the digital product”
`
`(Claim 25) – In its Decision in IPR2016-01271, the Board construed this
`
`claim language to mean “a time period that begins at an initial authorization of the
`
`digital product and extending for a duration thereafter.” GOOGLE1007-7-9.
`
`While each of independent claims 1, 22, and 25 of the ’960 Patent recite setting
`
`“the allowed copy count to a first upper limit for a first time period,” only
`
`independent claim 25 recites this additional language. GOOGLE1001-14:35-39.
`
`Petitioner does not agree with the Board’s construction. As demonstrated
`
`below, however, the cited references satisfy the language of claim 25 as it was
`
`construed by the Board. GOOGLE1003-¶19-23. Petitioner respectfully suggests
`
`that a less restrictive interpretation is more consistent with both the teachings of the
`
`’960 Patent and prior precedent. GOOGLE1003-¶¶20-23.
`
`Specifically, construing a time period “after” an initial authorization to mean
`
`one “begin[ning] at” an initial authorization is inconsistent with the teachings of
`
`the ’960 Patent. GOOGLE1003-¶¶20-23. Indeed, the ’960 Patent did not describe
`
`a period “after” an initial authorization as being limited to only periods
`
`“begin[ning] at” the initiation authorization. Rather, the ’960 Patent uses “after”
`
`more broadly, to reference any period following an initial authorization. See, e.g.,
`
`GOOGLE1001-4:27-31 (“For the next twenty-five days until the thirtieth day after
`
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`first authorization, the user is allowed to authorize a total of seven new devices.”).
`
`Moreover, the ’960 Patent uses explicit language to describe a time period that
`
`“begins at” an initial authorization, by referring to a period “since” an initial
`
`authorization. GOOGLE1001-8:6-10 (“[T]he first time period may comprises [sic]
`
`a defined number of days since the initial authorization. For example, the defined
`
`number of days may comprise six days since the initial authorization.”);
`
`GOOGLE1003-¶23. The ’960 Patent therefore requires an interpretation of “after”
`
`that encompasses not only periods “begin[ning] at an initial authorization,” but
`
`other periods following the initial authorization as well. Cuozzo, 793 F.3d 1268,
`
`1275; see also Teleflex, Inc. v. Ficosa N.A. Corp., 299 F.3d 1313, 1325 (Fed. Cir.
`
`2002) (“The words used in the claims are interpreted in light of the intrinsic
`
`evidence of record, including the written description.”).
`
`Additionally, to the extent the Board’s construction of “a first time period”
`
`requires a time period that extends for a finite “duration,” Petitioner submits that
`
`such a construction would be inconsistent with the teachings of the ’960 Patent that
`
`allow for both finite and unlimited periods of time. GOOGLE1001-6:21-24
`
`(“[T]he example embodiment […] can include any number of evaluation periods,
`
`not just the five, thirty, and unlimited day periods described in this example.”).
`
`Petitioner submits that the Board need not formally construe “a first time
`
`period after an initial authorization,” and should instead give these terms their plain
`
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`and ordinary meaning. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
`
`2005) (instructing that the words of a claim are generally given their ordinary and
`
`customary meaning). Construction is especially unnecessary here, since the words
`
`of claim 25, including “after” and “time period,” are readily understood, and
`
`application of “the ordinary meaning […] involves little more than the application
`
`of the widely accepted meaning of commonly understood words.” Id. at 1314;
`
`GOOGLE1003-¶¶19-23.
`
`While Petitioner submits that construction of claim 25 is unnecessary, if the
`
`Board construes it, Petitioner recommends that the language reciting “a first time
`
`period after an initial authorization of the digital product” be construed to mean “a
`
`first time period subsequent to an initial authorization of the digital product.” Eon
`
`Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314 (Fed. Cir. 2016)
`
`(acknowledging that a plain and ordinary meaning construction may be inadequate
`
`when a term has more than one ordinary meaning). This interpretation is
`
`consistent with the ’960 Patent, because it encompasses periods beginning at an
`
`initial authorization as well as those beginning later, and captures the full range of
`
`periods contemplated by the ’960 Patent, including both bounded and unbounded
`
`periods. GOOGLE1001-6:21-24 (“[T]he example embodiment [….] is simple for
`
`the purposes of understanding but can include any number of evaluation periods,
`
`not just the five, thirty and unlimited day periods described in the example.”),
`
`11
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`
`4:27-31, 8:6-10; GOOGLE1003-¶¶21-23.
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’960 PATENT IS UNPATENTABLE
`At least one of claims 1-25 of the ’960 Patent is rendered obvious under 35
`
`U.S.C. § 103 by each independent combination of references in Grounds 1 and 2.
`
`GOOGLE1003-¶15.
`
`The Grounds are not cumulative or redundant. Instead, they rely upon
`
`different combinations that individually assert unique benefits and address the
`
`claims in different ways. For example, the claims require “set[ting] an 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” “in response to [a] device identity not being on the record.” For
`
`disclosure of this feature, DeMello is referenced in the first ground and Colosso in
`
`the second. Specifically, Ground 1 relies on DeMello’s disclosure of an initial
`
`activation limit that can be adjusted to allow an additional device activation upon
`
`or after the expiration of a waiting period. In contrast, Ground 2 relies on
`
`Colosso’s disclosure of an existing pool of purchased licenses that can be
`
`supplemented with a pool of overdraft licenses. GOOGLE1004-22:51-56, 25:1-8,
`
`31:41-60; GOOGLE1006-8:31-39, 10:3-35.
`
`Notwithstanding these distinctions, evaluation of both grounds does not
`
`impose a substantial burden on the Board or the Patent Owner. Indeed, the
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`grounds rely on the same combination of references for all but one feature in each
`
`of independent claims 1, 22 and 25. Moreover, a useful purpose is served by
`
`instituting both grounds. In particular, DeMello is especially relevant if the Board
`
`determines that the ’960 Patent claims are directed to implementations in which an
`
`allowed copy count is periodically increased to allow for the natural addition of
`
`user devices over time. Colosso applies more directly if the Board determines that
`
`’960 Patent claims are directed to implementations in which an allowed copy count
`
`is supplemented with additional temporary licenses under certain circumstances.
`
`Compare GOOGLE1001-4:21-23 (“The number of devices allowed to run the
`
`software in an authorized or enabled state may increase over time […] .”), with
`
`GOOGLE1001-6:41-44 (“The described system could also be used with
`
`authorizations for software that is rented or otherwise allowed to be used for a
`
`specific period of time or number of uses rather than indefinitely […] .”). Because
`
`it is unclear whether the Board will interpret the ’960 Patent claims to address one
`
`or both implementations, institution of both grounds provides the best opportunity
`
`to properly evaluate patentability of the ’960 Patent.
`
`Moreover, this petition is not redundant of the petition filed in IPR2017-
`
`00948. Petitioner here has not adopted the same claim construction position
`
`promulgated by the Board in IPR2016-01271 and applied by the Petitioner in
`
`IPR2017-00948 regarding claim 25. This difference is significant for several
`
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`reasons. Petitioner here challenges the narrowness of the Board’s prior
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`construction in IPR2016-01271 for claim 25. That narrowness, however, is
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`addressed by Petitioner here with additional arguments regarding the disclosures of
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`DeMello and additional disclosure from Colosso in a different Ground, neither of
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`which were advanced by the Petitioner in IPR2017-00948. See supra. Moreover,
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`Patent Owner is not believed to be prejudiced by these additional arguments, as
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`they advance the same base reference and add only modest additional disclosures
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`from a single new reference over those advanced in IPR2017-00948. To the extent
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`the Board determines to institute on both pending petitions and believes
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`efficiencies would be served by harmonizing the schedules of the respective
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`proceedings, Petitioner here is willing to work with the Patent Owner and Board to
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`achieve those efficiencies.
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`Thus, the presented grounds are complementary, rather than cumulative or
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`redundant.
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`A. OVERVIEW OF AND MOTIVATION TO COMBINE
`DEMELLO AND STARUIALA
`DeMello in view of Staruiala renders obvious each of claims 1-25.
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`GOOGLE1003-¶¶48-52. DeMello teaches a DRM system that activates devices to
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`authorize their access to purchased digital content. GOOGLE1004-31:35-50.
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`DeMello’s “flexible and easy to use” system enforces a limit on device activations,
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`while permitting users to activate an additional device over the limit under certain
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`circumstances. GOOGLE1004-Abstract, 1:50-55, 23:4-10, 31:41-60;
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`GOOGLE1003-¶38-42, 53.
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`DeMello’s activation process includes using a “unique hardware ID”
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`“derived from hardware components on the user’s computing device which
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`substantially uniquely identify the user’s computing device.” GOOGLE1004-
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`22:48-51. Using a unique identifier derived from hardware components reduces
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`tampering and binds a license to authorized devices, thereby achieving the security
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`purposes of DeMello’s invention to “limit[] the number of devices” that can access
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`digital content using a particular account. GOOGLE1004-Abstract. Ultimately,
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`DeMello’s methods “protect the intellectual property rights of content owners and
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`allow for authors or other content owners to be compensated for their creative
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`efforts.” GOOGLE1004-1:50-64; GOOGLE1003-¶¶32, 38-42, 54-56.
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`A POSITA reviewing DeMello who was interested in strengthening the
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`protection of intellectual property owners by disseminating digital content in a
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`secure manner would have been motivated to review and implement Staruiala’s
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`teachings through ordinary and predictable modifications of DeMello.
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`GOOGLE1003-¶56. For example, Staruiala discusses the prior art background and
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`notes that the problem of copyright infringement by devices consuming digital
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`products can be prevented by using a “unique identifier based on the physical
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`characteristics of the system.” GOOGLE1005-1; GOOGLE1003-¶43. Staruiala
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`indicates that the prior art fails to provide for unique identifiers that are immune
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`from tampering, and thus proposes a device identity generated by sampling
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`physical device parameters to prevent intellectual property violations, such as the
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`“loss of copy protection for the remaining lifecycle of [digital content such as]
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`DVD movies and multi-billion dollar losses to the movie industry.”
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`GOOGLE1005-Abstract, 1, 2, 4, 6, 8, 11-12; GOOGLE1003-¶¶43, 56.
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`Specifically, Staruiala proposes a system that generates tamper-resistant
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`“fingerprints.” These uniquely identify a device by measuring, i.e., “sampling,”
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`physical parameters of the device, such as analog artifacts exposed during
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`processing by a particular computing device. GOOGLE1005-2, Abstract, 1, 6, 8.
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`For example, “[g]iven a minimal appliance consisting of CPU + MEM + CLK, the
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`latency and the tolerable imperfections in the components” and system assembly
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`“together determine a particular probability distribution for each of the random
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`variables governing the response times for a set of measurements” that is usable
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`“to characterize or identify a particular physical computer system.”
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`GOOGLE1005-6, 8. Staruiala’s “fingerprints” therefore represent a “device
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`identity generated by sampling physical parameters of the given device,” as
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`claimed. GOOGLE1003-¶¶34, 43, 57.
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`As DeMello’s “unique hardware ID” is “derived from hardware components
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`on the user’s computing device,” a POSITA would have understood that
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`Staruiala’s sampling techniques could generate a “fingerprint” of the device that
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`the system could then “upload” during the verification process. GOOGLE1004-
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`22:48-51; GOOGLE1005-2; GOOGLE1003-¶58. From this description, a
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`POSITA in the fields of DRM, cryptography, content distribution, or related
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`software technology would be motivated to combine Staruiala’s teachings with
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`those of DeMello to improve the ability of DeMello’s “unique hardware ID” to
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`“uniquely identify the user’s computing device” and reduce the likelihood of
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`tampering resulting in unauthorized access to digital content—a central focus of
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`DeMello’s teachings. GOOGLE1004-22:46-51; GOOGLE1005-1;
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`GOOGLE1003-¶58-62.
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`Staruiala also describes that hashing the information before verification
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`generates a more secure and trustworthy version of the unique device identifying
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`information for better authentication. GOOGLE1005-11-12. Similarly, DeMello
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`uses a “cryptographic hash” to provide “some measure of tamper resistance to” a
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`digital product. GOOGLE1004-6:40-7:6. A POSITA would have been motivated
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`to further improve the security of DeMello’s DRM system by implementing
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`Staruiala’s hashing technique. GOOGLE1003-¶60.
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`A POSITA would have readily understood how to modify DeMello’s
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`teachings with Staruiala’s improvements with a reasonable expectation of success
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`stemming from significant overlap across the references in their teachings and
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`suggested approaches for preventing unauthorized access to digital content. A
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`POSITA would accomplish such modifications to DeMello’s system by editing
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`and adding software variables and functions to perform the sampling required to
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`generate a “unique hardware ID” representing a “fingerprint” of a device. The
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`writing and implementation of such computer code functionality required mere
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`routine programming knowledge and was within the skill of a POSITA at the time
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`of invention. GOOGLE1003-¶61.
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`Accordingly, a POSITA would have been motivated to combine Staruiala’s
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`teachings with DeMello, where the purpose of the combined invention would be
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`achieved with a reasonable expectation of success. GOOGLE1003-¶¶53-62.
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`B. GROUND 1: CLAIMS 1-25 ARE EACH
`UNPATENTABLE UNDER 35 U.S.C. § 103 AS OBVIOUS
`OVER DEMELLO IN VIEW OF STARUIALA
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`Claim 1
`[1.0][Preamble]: “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,
`comprising:
`Claim 1’s preamble merely sets forth a purpose and intended use of the
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`system described in the body of the claim, and therefore is not limiting.
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`GOOGLE1003-¶63, MPEP § 2111.02 (citing Pitney Bowes, Inc. v. Hewlett-
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`Attorney Docket No. 19473-0378IP1
`IPR of U.S. Patent No. 8,566,960
`Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)).1 If the Board determines the
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`preamble is limiting, the combination of DeMello and Stariuala discloses this
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`limitation.
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`DeMello teaches a “server architecture for DRM that distributes and protects
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`rights in content.” GOOGLE1004-Abstract. Included in this server architecture is
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`an “activation site” that governs how devices may use a license, i.e., a
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`“PASSPORT” license associated with a user’s “persona,” to access a digital
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`1 T