UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`GOOGLE INC.,
`Petitioners
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-01665
`PATENT 8,566,960
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`GOOGLE INC.,
`Petitioners
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-01665
`PATENT 8,566,960
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`
`Tables of Contents
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`I.
`II.
`
`B.
`
`C.
`
`INTRODUCTION ..................................................................................... 1
`THE PETITION SHOULD BE DENIED UNDER 35 U.S.C.
`§ 325(D) AS REDUNDANT WITH IPR2017-00948 .............................. 2
`III. OVERVIEW OF THE ‘960 PATENT ..................................................... 9
`A. Distinctions between the Independent Claims 1, 22, and 25..................... 13
`B.
`Priority Date of the ‘960 Patent ................................................................. 13
`IV. THE PETITION REDUNDANTLY CHALLENGES THE
`PATENTABILITY OF EACH CLAIM OF THE ‘960
`PATENT ................................................................................................... 14
`PERSON OF ORDINARY SKILL IN THE ART ................................ 17
`V.
`VI. ARGUMENT ............................................................................................ 18
`A.
`Claim Construction .................................................................................... 18
`1.
`The Claim Preamble is Limiting ........................................ 18
`2.
`“a first time period after an initial authorization of
`the digital product” (only independent Claim 25) ............. 21
`The Proposed Combinations of DeMello and Staruiala Do Not
`Disclose “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” ............ 22
`1.
`DeMello Alone Does Not Disclose This
`Limitation ........................................................................... 22
`The Combination of DeMello and Staruiala Does
`Not Disclose This Limitation ............................................. 26
`The Proposed Combinations Do Not Disclose the Required
`“adjusting” the “allowed copy count” from one value to another ............. 26
`
`2.
`
`ii
`
`
`
`2.
`
`3.
`
`1.
`
`IPR2017-01665
`U.S. Patent 8,566,960
`Independent Claims 1 and 22 require “adjusting”
`the “allowed copy count” from one value to
`another ................................................................................ 26
`The Petition Does Not Show “adjusting” the
`“allowed copy count” ......................................................... 30
`The Proposed Combination of DeMello and
`Staruiala and in Further View of Colosso Does
`Not Disclose this Limitation .............................................. 33
`VII. INTER PARTES REVIEW PROCEEDINGS ARE
`UNCONSTITUTIONAL ......................................................................... 36
`VIII. CONCLUSION ........................................................................................ 37
`
`
`
`iii
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`
` LIST OF EXHIBITS
`Exhibit No.
`2001
`
`Description
`Declaration of Dr. Val DiEuliis
`
`
`
`
`iv
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
`
`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
`
`Partes Review (“the Petition”) of U.S. Patent No. 8,566,960 (“the ‘960 Patent”) filed
`
`by Google, Inc. (“Petitioner”).
`
`The Petition should be dismissed for procedural and substantive defects. As a
`
`dispositive procedural matter, the Petition should be denied under 35 U.S.C.
`
`§ 325 (d) as redundant to IPR2017-00948. The Petition presents the same prior art
`
`and virtually the same argument as in IPR2017-00948, without moving to join that
`
`proceeding, and evidently in an attempt to take another bite at the apple with the
`
`benefit now of Patent Owner’s Preliminary Response in IPR2017-00948. The Board
`
`should deny the Petition as duplicative with another pending matter. Denial would
`
`avoid the waste of duplication, promote judicial efficiency, and avoid the possibility
`
`of disparate rulings on piecemeal issues in sister panels. Further, denial is
`
`appropriate here because the Petition articulates no bi-directional explanation its
`
`relative strengths and weaknesses with respect to its redundancies.
`
`Nevertheless, because the Board has yet to decide the extent to which the
`
`Petition is impermissibly redundant and cumulative, Patent Owner identifies herein
`
`example instances where each ground fails to satisfy the axiomatic All Elements
`
`1
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`Rule.1 Petitioner has failed to prove that there is a reasonable likelihood that at least
`
`one of the claims challenged in the Petition is unpatentable. See 37 C.F.R. §
`
`42.108(c). In view of the reasons presented herein, the Board should reject the
`
`Petition in its entirety.
`
`The Board should also deny institution because this proceeding would violate
`
`Patent Owner’s constitutional rights. Patent Owner presents a constitutional
`
`challenge now to preserve the issue pending the Supreme Court’s decision in Oil
`
`States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017).
`
`II. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(D)
`AS REDUNDANT WITH IPR2017-00948
`The Board has discretion to deny grounds as redundant when “the same or
`
`substantially the same prior art or arguments” have been presented to the Board
`
`previously. 35 U.S.C. § 325(d); R.J. Reynolds Vapor Company v. Fontem Holdings
`
`1 B.V., IPR2017-01118, Paper 8 at 4-5 (P.T.A.B. October 4, 2017); US Endodontics,
`
`LLC v. Gold Standard Instruments, LLC, IPR2015-01476, Paper 13 at 8 (P.T.A.B.
`
`October 26, 2015); Toyota Motor Corp. v. Cellport Systems, Inc., IPR2015-01423,
`
`Paper 7 at 5-9 (P.T.A.B. October 28, 2015).
`
`
`1 Patent Owner does not concede the legitimacy of any arguments in the Petition
`that are not specifically addressed herein.
`
`2
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`The ‘960 patent is currently instituted for trial in IPR2017-00948. The
`
`petitioner in that proceeding alleges the following grounds of unpatentability:
`
`References
`DeMello2
`DeMello and alleged
`knowledge of POSITA
`DeMello and Staruiala3
`
`Basis Claims Challenged
`102
`1-5, 7-10, 12-14, 16-18, 22-25
`103
`6-7, 11-12, 15-16
`
`103
`
`1-25
`
`Here, the Petitioner alleges the following grounds of unpatentability:
`
`References
`DeMello and Staruiala
`(Ground 1)
`DeMello and Staruiala and
`Colosso4
`(Ground 2)
`
`Basis Claims Challenged
`103
`1-25
`
`103
`
`1-25
`
`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). Specifically, both 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
`
`
`2 U.S. Patent No. 7,047,411 (“DeMello”).
`3 Irish Patent Application No. 2002/0429 (“Staruiala”).
`4 U.S. Patent No. 7,962,424 (“Colosso”).
`
`3
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`dependent claims 19-21. Pet. at 27-31, 51-53, 54 and 58. Thus, while reliance on
`
`either the same prior art or the same argument 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. See R.J. Reynolds, IPR2017-
`
`01118, Paper 8 at 4-5 (Under 35 U.S.C. § 325(d), “the use of the word ‘or’ in ‘prior
`
`art or arguments’ indicates that the presence of previously presented prior art or
`
`arguments is sufficient to invoke Section 325(d)”) (emphasis in original) (citing Neil
`
`Ziegmann, N.P.Z. v. Carlis G. Stephens, IPR2015-01860, Paper 13 at 19 (P.T.A.B.
`
`September 6, 2017)).
`
`Ground 2 also invokes § 325(d) because the Petition impermissibly relies on
`
`a vertically redundant challenge, which presents the same arguments again while
`
`citing an additional third reference (Colosso) only for a handful of limitations.
`
`Vertical redundancy “involves a plurality of prior art applied both in partial
`
`combination and in full combination. In the former case, fewer references than the
`
`entire combination are sufficient to render a claim obvious, and in the latter case the
`
`entire combination is relied on to render the same claim obvious.” See Liberty Mut.
`
`Ins. Co. v. Progressive Cas. Ins. Co., No. CBM2012-00003, Paper 7 at 3. In
`
`instances of vertical redundancy, “[t]here must be an explanation of why the reliance
`
`in part may be the stronger assertion as applied in certain instances and why the
`
`4
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`reliance in whole may also be the stronger assertion in other instances.” Id.
`
`(emphasis original).
`
`The Petition is void of any attempt to justify its admitted vertical redundancy
`
`using the bi-direction analysis described by the Board in Liberty Mut. While
`
`Petitioner states that Grounds 1 and 2 “rely upon different combinations that
`
`individually assert unique benefits and address the claims in different ways” (Pet.
`
`12), that is not the standard articulated in Liberty Mut. If that were the standard, then
`
`the exception would swallow the admonishing of redundant challenges, because all
`
`redundant grounds relying on different references could be characterized in the same
`
`self-serving manner.
`
`The Petition also argues that “evaluation of both grounds does not impose a
`
`substantial burden on the Board or the Patent Owner” ostensibly because Grounds 1
`
`and 2 both “rely on the same combination of references for all but one feature in
`
`each of independent claims 1, 22 and 25.” 5 At a minimum, that concession confirms
`
`the Board should deny as admittedly duplicative the Ground 2 challenges of the
`
`remainder of the claims (i.e., claims 3, 4, 5-21, and 23-24). In addition, with respect
`
`to all challenged claims 1-25, that concession undermines the Petition because the
`
`
`5 Liberty Mut. makes clear that the burden is on Petitioner to justify its redundancy,
`not on the Patent Owner to explain why the redundancy is burdensome.
`
`5
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`burden on Patent Owner 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.6 This double-jeopardy approach games the system and poses on unfair
`
`burden on Patent Owner. Indeed, § 325(d) is expressly drafted to avoid this very
`
`scenario.
`
`Petitioner also suggests a “useful purpose is served by instituting both
`
`grounds” ostensibly because the Board might interpret certain unidentified
`
`limitations of unidentified claims as covering: (1) “an allowed copy count is
`
`periodically increased to allow for the natural addition of user devices over time; and
`
`(2) “implementations in which an allowed copy count is supplemented with
`
`additional temporary licenses under certain circumstances.” Pet. 13. Petitioner does
`
`not explain, however, whether or how those descriptions are mutually-exclusive.
`
`Moreover, those statements are descriptions of Petitioner’s interpretation of the cited
`
`references, not the actual claim language. Petitioner essentially argues that both
`
`grounds should be instituted because the cited references are not identical to one
`
`another. This is not the standard. See Mobotix Corp. v. E-Watch, Inc., IPR2013-
`
`
`6 Patent Owner does not consent to Petitioner’s tacit suggestion that the regulations
`governing joinder can be ignored here and that this matter could somehow be joined
`together with IPR2017-00948.
`
`6
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`00335, Paper 20 at 2-3 (P.T.A.B. January 10, 2014) (Denying request for rehearing
`
`where petitioners argued technical distinctions between the prior art references but
`
`failed to “identify any distinctions made between [the prior art references] with
`
`respect to the limitations recited [in the claims].”); Conopco, Inc. v. Procter &
`
`Gamble Co., IPR2013-00505, Paper 9 at 17 (P.T.A.B. February 12, 2014) (finding
`
`grounds redundant where the petitioner did not identify “relative strengths or
`
`weaknesses in the prior art disclosures as they relate to the limitations of th[e]
`
`claims”).
`
`In addressing the claim language, the only excuse the Petition offers for
`
`additionally citing Colosso is that it allegedly provides “additional guidance” (i.e.,
`
`it is admittedly redundant) “regarding certain content distribution aspects of claim
`
`elements 1.0, 1.6, 2.0, 5.0, 22.0, 22.4, and 25.4.” This ambiguous excuse appears in
`
`the following block quotation:
`
`In this combination, DeMello and Staruiala are applied similarly to the
`manner discussed at VI.A-B. Indeed, the analysis and citations to
`DeMello and Staruiala presented in VI.A-B., incorporated herein by
`reference, apply equally to Ground 2. Ground 2 supplements with
`additional guidance from Colosso regarding certain content distribution
`aspects of claim elements 1.0, 1.6, 2.0, 5.0, 22.0, 22.4, and 25.4. The
`remaining claim elements are addressed fully by the analysis and
`citations to DeMello/Staruiala presented in VI.A-B.
`
`7
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`Pet. at 68. The Petition fails to explain, however, how those numbered limitations
`
`require “content distribution aspects” (a phrase that does not appear in the claims)
`
`that purportedly merit additional (and redundant) reliance on Colosso. Claim 2, for
`
`example, recites “wherein the digital product comprises software”; and Colosso is
`
`cited only as allegedly “disclos[ing] a digital product that comprises software.” Pet.
`
`76. It appears, therefore, that the “additional guidance” from Colosso regarding
`
`allegedly claimed “content distribution” is in fact illusory and that Colosso is cited
`
`for no other purpose than a misguided hope for a second and third bite at the same
`
`apple.
`
`
`
`For the foregoing reasons, Grounds 1 and 2 both be denied under § 325(d) as
`
`being admittedly redundant while failing to present any “meaningful advantage for
`
`proceeding on multiple grounds in terms of their variant strengths and weaknesses
`
`as applied to the challenged claim.” Ford Motor Company v. Paice LLC, et. al,
`
`IPR2014-00570, Paper 17 at 3-4 (P.T.A.B. November 26, 2014). The Petitioners
`
`already have the benefit derived from the Board’s institution decision of IPR2017-
`
`00948 (which Petitioner attaches as an exhibit). See R.J. Reynolds, IPR2017-01118,
`
`Paper 8 at 5 (identifying those factors as favoring denial of the petition(s)).
`
`Therefore, the Petition should be denied in its entirety as impermissibly redundant.
`
`8
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`III. 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 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.”
`
`EX1002, at 29; see also Declaration of Dr. DiEuliis (“EX2001”) at ¶ - (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 ¶ -
`
`- (citing EX1001, 1:31-41). Conventionally, publishers and digital owners have
`
`9
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`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
`
`adjustment is designed “to accommodate a reasonable small increase in the number
`
`of devices linked to a specific license ….” EX2001 ¶¶ -- (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.”
`
`10
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`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 ¶ - (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 ¶¶ --. 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.
`
`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 ¶¶ --. 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 ¶ -- (citing EX1001, 4:56-64; 7:1-
`
`11
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`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
`
`¶ -- (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 ¶¶ --. It should
`
`be noted that device count is different from the allowed copy count.
`
`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
`
`12
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`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 ¶¶ --.
`
`A. Distinctions between the Independent Claims 1, 22, and 25
`The ‘960 patent issued with 25 claims. Of those, Claims 1, 22 and 25 are
`
`independent claims. As explained further below, independent Claims 1 and 22 both
`
`have limiting preambles that explicitly state each claim is directed to “adjusting the
`
`license” in terms of its “allowed copy count”. By way of contrast, the preamble of
`
`independent Claim 25 only recites “[a] computer program product, comprising” and
`
`is therefore not limiting in the same way.
`
`Claim 25 also differs from the other independent claims in that it expressly
`
`defines the “first time period” as commencing “after an initial authorization of the
`
`digital product,” which is a distinction the Board previously noted in dismissing an
`
`earlier petition filed against the ‘960 Patent. See EX1007, Decision Denying
`
`Institution in IPR2016-01271, at 7-9.
`
`As will be shown, the distinctions between the independent claims give rise
`
`to unique points of novelty over the art cited in the Petition.
`
`B.
`Priority Date of the ‘960 Patent
`The ‘960 Patent issued from U.S. Application Serial No. 12/272,570 (“the
`
`13
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`‘570 Application”) 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.
`
`IV. THE PETITION REDUNDANTLY CHALLENGES THE
`PATENTABILITY OF EACH CLAIM OF THE ‘960 PATENT
`As discussed above in Section II, the Petition should be denied under 35
`
`U.S.C. § 325 (d) as redundant to IPR2017-00948.
`
`However, even putting that aside, the Petition itself also redundantly
`
`challenges the patentability of each claim of the ‘960 Patent, without providing any
`
`alleged justification for such inefficient redundancies. As the Board has previously
`
`explained, “multiple grounds, which are presented in a redundant manner by a
`
`petitioner who makes no meaningful distinction between them, are contrary to the
`
`regulatory and statutory mandates, and therefore are not all entitled to
`
`consideration.” See Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., No.
`
`CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012). Such redundancies place a
`
`significant burden on both the Board and the patent owner, causing unnecessary
`
`delay, compounding costs to all parties involved, and compromising the ability to
`
`complete review within the statutory deadline. Id.; 37 C.F.R. § 42.1(b); see also 37
`
`C.F.R. § 42.108. As such, analyzing the petition and eliminating redundant grounds
`
`streamlines the proceeding. Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027,
`
`14
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`Paper 26 at 4-5 (P.T.A.B. June 11, 2013); Liberty Mut., CBM2012-00003, Paper 7
`
`at 2.
`
`The Petition presents grounds that are vertically redundant with respect to
`
`each other. Vertical redundancy “involves a plurality of prior art applied both in
`
`partial combination and in full combination. In the former case, fewer references
`
`than the entire combination are sufficient to render a claim obvious, and in the latter
`
`case the entire combination is relied on to render the same claim obvious.” Liberty
`
`Mut., CBM2012-00003, Paper 7 at 3. In such instances where reliance on a
`
`combination and separate reliance on a portion thereof are both alleged to
`
`sufficiently present a prima facie case of invalidity, “[t]here must be an explanation
`
`of why the reliance in part may be the stronger assertion as applied in certain
`
`instances and why the reliance in whole may also be the stronger assertion in other
`
`instances.” Id. (emphasis in original).
`
`If one of the alternative grounds is better from all perspectives, then the Board
`
`should only consider the stronger ground and not burden the Patent Owner and the
`
`Board with the weaker ground. Further, if there is no difference in the grounds, the
`
`Petitioner should only assert one of the grounds. Id. at 12. “Only if the Petitioner
`
`reasonably articulates why each ground has strength and weakness relative to the
`
`other should both grounds be asserted for consideration.” Id. (emphasis added).
`
`15
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`Petitioner makes no effort to justify its vertically redundant theories by
`
`explaining why “the reliance in part [e.g., on the primary reference alone] may be
`
`the stronger assertion as applied in certain instances and why the reliance in whole
`
`[e.g., the full combination of identified references] may also be the stronger assertion
`
`in other instances.” Id. Rather, for Ground 1, in each instance of vertical redundancy,
`
`Petitioner suggests that DeMello alone discloses the limitation, but “if the Board
`
`finds otherwise,” then a combination with Staruiala is argued under theories of
`
`obviousness. And for Ground 2, Petitioner not only fully incorporates Ground 1 (Pet.
`
`at 68), Petitioner merely offers a third reference, Colosso in combination for
`
`“improved flexibility within the DeMello/Staruiala DRM system.” Pet. at 67-68
`
`(emphasis added).
`
`The Board in Eizo Corp. v. Barco N.V.7 flatly rejected a similar attempt to
`
`hedge bets and unnecessarily multiply the work of both the Board and the Patent
`
`Owner. The Board there found insufficient the petitioner’s “conclusory assertion”
`
`that “[t]o the extent [the first prior art reference] may not explicitly teach” the
`
`limitation, the second prior art reference “explicitly teaches this limitation.” The
`
`Board explained that “such an assertion fails to resolve the exact differences sought
`
`to be derived from” the second prior art reference. Id.
`
`
`7 IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014)
`
`16
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`The Board’s precedential authority on these procedural issues is clear. Here,
`
`Petitioner impermissibly seeks the benefit of different bites at the apple, without
`
`providing a bi-directional explanation of the relative strengths and weaknesses of
`
`each redundantly offered ground. If Petitioner believes the obviousness challenges
`
`are necessary to addresses certain weaknesses of the challenge based on DeMello
`
`alone, or at the very least on DeMello and Staruiala, Petitioner is obligated to
`
`articulate those weaknesses in the Petition itself. Because Petitioner chose to not
`
`offer such concessions, presumably for strategic reasons, the Board need not and
`
`should not consider the merits of the redundant challenges based on obviousness.
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`The attached Declaration of Dr. Val DiEuliis (EX2001) defines a person of
`
`ordinary skill in the art (“POSITA”) as of November 17, 2007 to be some who has
`
`“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¶ -.
`
`Dr. DiEuliis disagrees with the definition POSITA offered in the Petition in
`
`certain respects. 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. ¶¶ --.
`
`17
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`Regardless which definition of a POSITA the Board adopts, Dr. DiEuliis
`
`testifies that he clearly is sufficiently qualified in the pertinent art. See Id. ¶ --.
`
`VI. ARGUMENT
`As discussed above in Section II, the Petition should be denied under 35
`
`U.S.C. § 325 (d) as redundant to IPR2017-00948. Further, the Board should reject
`
`any non-redundant, non-cumulative grounds that remain (if any) because the Petition
`
`fails to show that DeMello in combination with Staruiala, or DeMello in
`
`combination with Staruiala and in further view of Colosso discloses all of the
`
`limitations of the claims of the ‘960 Patent.
`
`A. Claim Construction
`1.
`The Claim Preamble is Limiting
`The Petition injects a fully-dispositive claim construction dispute that
`
`warrants—if not necessitates—resolution at this preliminary stage. Petitioner’s
`
`refusal to recognize that the preambles of independent Claims 1 and 22 are limiting
`
`is fatal to the Petition. This is because Petitioner’s erroneous construction results in
`
`Petitioner overlooking the core “adjusting” concept introduced in the claim
`
`preambles and reflected in the bodies of those independent claims. See EX2001 ¶¶ -
`
`-.
`
`Among other considerations, the Board construes a preamble as limiting if it
`
`states a necessary and defining aspect of the invention. Lg Elecs., Inc. et al. v.
`
`18
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`Toshiba Samsung Storage Tech. Korea Corp., No. IPR2015-01642 (P.T.A.B.
`
`January 25, 2017), Paper No. 37 at 20-21. A significant and often determinative
`
`consideration is whether “the limitations in the body of the claim rely upon and
`
`derive antecedent basis from the preamble.” See id. (quoting Eaton Corp. v.
`
`Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (brackets omitted).
`
`Petitioner’s dismissal of the preambles of Claims 1 and 22 as nonlimiting
`
`overlooks at least the demonstrable fact that those preambles provide antecedent
`
`basis for the terms “digital product” and “allowed copy count” repeatedly recited
`
`throughout the body of the claims. See EX2001 ¶ --. The preambles further recite the
`
`important and informative context that independent Claims 1 and 22 are both
`
`directed to “adjusting” a license in terms of a numerical limit represented by the
`
`“allowed copy count.” More specifically, the preambles define the “allowed copy
`
`count” as “corresponding to a maximum number for devices authorized for use with
`
`the digital product” and the preambles both introduce that adjustable limit as having
`
`a positive value of “at least one.” See EX2001 ¶ --.
`
`The claimed “adjusting” cannot properly be understood outside the context of
`
`the limiting language recited in the preambles of Claims 1 and 22. See EX2001 ¶ --
`
`; see also id. ¶¶ --. Relying on respective preambles for antecedent basis, the bodies
`
`of Claims 1 and 22 recite “in response to the device identity not being on the record,
`
`19
`
`
`
`IPR2017-01665
`U.S. Patent 8,566,960
`
`[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 added). That limitation provides the
`
`condition upon which the adjustable variable “allowed copy count” must be
`
`temporarily “set” from the positive “at least one” value introduced in the preamble
`
`to, instead, an adjusted value expressly-distinguished as “a first
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
