Petition for Inter Partes Review of:
`U.S. Patent 8,402,555
`
`DOCKET NO.: 079833–000045
`Filed on behalf of Mastercard International Incorporated
`
`By:
`
`Joseph R. Lanser, Reg. No. 44,860
`Brian Michaelis, Reg. No. 34,221
`David A. Klein, Reg. No. 46,835
`Joseph Walker, Reg. No. 66,798
`SEYFARTH SHAW LLP
`131 S. Dearborn Street
`Chicago, Illinois 60013
`Tel: (312) 460-5895
`Email: jlanser@seyfarth.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Mastercard International Incorporated,
`Petitioner
`
`v.
`
`WILLIAM GRECIA,
`Patent Owner
`
`IPR 2017–00788
`
`U.S. Patent No. 8,402,555
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,402,555
`CHALLENGING CLAIMS 1-26
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`36851381v.1
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`Adobe, Exhibit 1020
`
`
`U.S. Patent 8,402,555
`
`DOCKET NO.: 079833–000045
`Filed on behalf of Mastercard International Incorporated
`
`By:
`
`Joseph R. Lanser, Reg. No. 44,860
`Brian Michaelis, Reg. No. 34,221
`David A. Klein, Reg. No. 46,835
`Joseph Walker, Reg. No. 66,798
`SEYFARTH SHAW LLP
`131 S. Dearborn Street
`Chicago, Illinois 60013
`Tel: (312) 460-5895
`Email: jlanser@seyfarth.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Mastercard International Incorporated,
`Petitioner
`
`v.
`
`WILLIAM GRECIA,
`Patent Owner
`
`IPR 2017–00788
`
`U.S. Patent No. 8,402,555
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,402,555
`CHALLENGING CLAIMS 1-26
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`36851381v.1
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`Adobe, Exhibit 1020
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`V.
`
`MANDATORY NOTICES
`Real Party–in–Interest
`A.
`B.
`Related Matters
`C.
`Counsel
`D.
`Service Information, Email, Hand Delivery, and Postal
`CERTIFICATION OF GROUNDS FOR STANDING
`II.
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Prior Art
`A.
`B.
`Grounds for Challenge
`IV. OVERVIEW OF THE ‘555 PATENT
`Priority Date
`A.
`B.
`Summary of the ‘555 Patent
`C.
`Summary of Relevant Prosecution File History
`D.
`Person of Ordinary Skill in the Art
`CLAIM CONSTRUCTION
`“or”
`A.
`B.
`“the request comprising a membership verification token
`provided by a first user, corresponding to the encrypted digital
`media”
`“the electronic identification reference comprises a verified web
`service account identifier”
`“metadata of the encrypted digital media”
`“two way data exchange”
`“key file”
`“the branding request is a request from one or more secondary
`users”
`VI. PROPOSED REJECTIONS SHOWING A REASONABLE
`LIKELIHOOD OF PREVAILING
`A. Most Pertinent Prior Art
`Ameerally (EX1003)
`1.
`
`C.
`
`D.
`E.
`F.
`G.
`
`36851381v.1
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`-i-
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`1
`1
`1
`3
`3
`3
`4
`4
`6
`7
`7
`8
`11
`12
`12
`14
`
`14
`
`15
`16
`16
`17
`
`18
`
`18
`22
`22
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`Adobe, Exhibit 1020
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`
`
`TABLE OF CONTENTS
`
`B.
`
`Gautier (EX1005)
`2.
`Taylor (EX1008)
`3.
`Frakes (EX1006)
`4.
`Zweig (EX1004)
`5.
`Invalidity of Claims 1-26 of the ‘555 Patent
`Independent Claim 1 and Dependent Claims 2-11
`1.
`2.
`Independent Claim 12, and Dependent Claims 13 and 14
`and 24-26
`Independent Claim 15 and Dependent Claims 16-23
`3.
`VII. CONCLUSION
`CERTIFICATE OF SERVICE
`CERTIFICATION OF WORD COUNT
`
`23
`24
`26
`28
`31
`31
`
`55
`64
`68
`iv
`v
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`36851381v.1
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`EXHIBIT LIST
`
`Description
`U.S. Patent No. 8,402,555 to Grecia
`
`Grecia v. Amazon.com, No. 2:14–cv–00530 (W.D. Wash. Dec. 22, 2014)
`(Joint claim construction statement by Patent Owner and Amazon) with
`Ex. C
`
`US Pub. No. 2006/0212401 to Ameerally, et al., Sep. 21, 2006
`
`US Pub. No. 2007/0233606 to Zweig, et al., Oct. 4, 2007
`
`US Pub. No. 2005/0021478 to Gautier et al., Jan. 27, 2005
`
`First Look: iTunes Digital Copy, Dan Frakes, MacWorld, Jan. 22, 2008
`
`Security Engineering: A Guide to Building Dependable Distributed
`Systems, 2nd Ed., Ross Anderson (2008), “Chapter 6: Distributed
`Systems” and “Chapter 22: Copyright and DRM”
`
`How Do I Use a Starbucks iTunes Free Pick of the Week Song Card,
`Dave Taylor, Aug. 8, 2008
`
`Brick-and-Mortar Stores Eye New Music Formats, Ed Christman, Reuters
`Internet News, October 28, 2007
`
`US Pub. No. 2004/0254883 to Kondrk et al., Dec.16, 2004
`
`US Pub. No. 2008/0040379 to Suitts et al., Feb. 14, 2008
`
`iTunes Store Terms of Service, Apple Inc., September 10, 2007
`
`Declaration of Ravi S. Cherukuri & Exhibits A–C
`
`Exhibit
`No.
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`
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`36851381v.1
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`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`
`I.
`
`MANDATORY NOTICES
`A. Real Party–in–Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that: (1) Mastercard
`
`International Incorporated (“Mastercard”) is the real party–in–interest, which is a
`
`subsidiary of Mastercard Incorporated; and (2) no other party exercised control, or
`
`could exercise control, over Mastercard’s participation in this proceeding, the
`
`filing of this petition, or the conduct of any ensuing trial.
`
`B. Related Matters
`U.S. Patent No. 8,402,555 (‘555 Patent (EX1001)) is a parent of
`
`continuation U.S. Patent No. 8,533,860 (‘860 Patent), which is a parent of
`
`continuation U.S. Patent No. 8,887,308 (‘308 Patent).
`
`Since November 18, 2015, the owner of the ‘555 Patent, William Grecia
`
`(“Grecia”), has filed patent infringement lawsuits against the following parties
`
`asserting infringement of certain claims of the ‘555 Patent: (a) Big Ten Network
`
`Services, LLC; (b) Cablevision Systems Corporation; (c) Fox Entertainment
`
`Group, Inc.; (d) NFL Network Services, LLC; (e) Starz Entertainment, LLC; (f)
`
`Adobe Systems Incorporated: (g) Adorama Camera, Inc.; (h) Cox
`
`Communications, Inc., (i) McDonald’s Corporation; (j) Mastercard Incorporated;
`
`(k) American Express Company; and (l) Visa Incorporated.
`
`36851381v.1
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`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`
`A Petition for Inter Partes Review for the ‘555 Patent was filed by Unified
`
`Patents, Inc. on March 22, 2016 (IPR2016-00789). The Board denied that Petition
`
`on September 9, 2016. Petitioner Unified Patents filed a Request for Rehearing on
`
`October 11, 2016, which the Board denied on November 29, 2016. This
`
`proceeding is terminated.
`
`A first Petition for Inter Partes Review for the ‘860 Patent was filed by
`
`Sony Network Entertainment International LLC on December 11, 2014 (IPR2015-
`
`00422). This proceeding was dismissed by request of the parties. A second
`
`Petition for Inter Partes Review for the ‘860 Patent was filed by Unified Patents,
`
`Inc. on February 17, 2016 (IPR2016-00600). The Board denied the Petition on
`
`August 16, 2016. Petitioner Unified Patents filed a Request for Rehearing on
`
`September 9, 2016, which the Board denied on October 13, 2016. This proceeding
`
`is terminated. A third Petition for Inter Partes Review of the ‘860 Patent was filed
`
`by Mastercard on January 27, 2017.
`
`A first Petition for Inter Partes Review for the ‘308 Patent was filed by
`
`Unified Patents, Inc. on March 3, 2016 (IPR2016-00602). The Board denied the
`
`Petition on August 30, 2016. Petitioner Unified Patents filed a Request for
`
`Rehearing on September 29, 2016, which the Board denied on November 22, 2016.
`
`This proceeding is terminated. A second Petition for Inter Partes Review for the
`
`‘308 Patent was filed by Dish Network, LLC on July 29, 2016 (IPR2016-01519).
`
`36851381v.1
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`IPR2017-00788 Petition
`U.S. Patent 8,402,555
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`The Board denied second Petition on January 20, 2017. A third Petition for Inter
`
`Partes Review for the ‘308 Patent was filed by Mastercard on January 27, 2017.
`
`C. Counsel
`
`Lead Counsel for Petitioner is Joseph Lanser (Reg. No. 44,860), of Seyfarth
`
`Shaw LLP.
`
`Back-up Counsel is Brian Michaelis (Reg. No. 34,221), David A. Klein
`
`(Reg. No. 46,835), and Joseph Walker (Reg. No. 66,798), each of Seyfarth Shaw
`
`LLP.
`
`Service Information, Email, Hand Delivery, and Postal
`
`D.
`Mastercard consents to electronic service at the following e-mail addresses:
`
`(1) jlanser@seyfarth.com; (2) bmichaelis@seyfarth.com; (3)
`
`daklein@seyfarth.com; (4) jmwalker@seyfarth.com; and (5)
`
`chiipdocket@seyfarth.com.
`
`Mastercard counsel can be contacted at telephone: 312-460-5895; facsimile:
`
`312-460-7895.
`
`II.
`
`CERTIFICATION OF GROUNDS FOR STANDING
`
`Pursuant to Rule 42.104(a), Petitioner certifies that the ‘555 Patent, for
`
`which review is sought, is available for Inter Partes Review, and that Petitioner is
`
`not barred or estopped from requesting such Inter Partes Review challenging the
`
`claims on the grounds identified in this Petition.
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`36851381v.1
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`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1) and (2), Petitioner
`
`challenges, and requests cancellation of, each of claims 1–26 of the ‘555 Patent, as
`
`unpatentable under 35 USC § 103.
`
`Prior Art
`
`A.
`The following prior art references are pertinent to the grounds of Petitioner’s
`
`challenges:1
`
`1.
`
`US Patent Application Publication No. 2006/0212401, titled “Method
`
`and System for Network-Based Promotion of Particular Digital Media Items,” for
`
`Ameerally, et al., published on Sep. 21, 2006 and assigned to Apple Computer,
`
`Inc. (EX1003), which is prior art under 35 U.S.C. § 102(b);
`
`2.
`
`US Patent Application Publication No. 2007/0233606, titled
`
`“Decoupling Rights in a Digital Content Unit from Download,” for Zweig, et al.,
`
`published on Oct. 4, 2007 and assigned to Apple Computer, Inc. (EX1004), which
`
`is prior art under 35 U.S.C. § 102(b);
`
`3.
`
`US Patent Application Publication. No. 2005/0021478, titled “Method
`
`and System for Network-Based Purchase and Distribution of Media,” for Gautier
`
`
`1 The ‘555 Patent issued from a patent application filed prior to enactment of the
`America Invents Act (“AIA”). Accordingly, pre–AIA statutory framework applies.
`
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`IPR2017-00788 Petition
`U.S. Patent 8,402,555
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`et al., published on January 27, 2005 and assigned to Apple Computer, Inc.
`
`(EX1005), which is prior art under 35 U.S.C. § 102(b);
`
`4.
`
`Article titled First Look: iTunes Digital Copy, authored by Dan
`
`Frakes and published by MacWorld on January 22, 2008 (accessible at
`
`<http://web.archive.org/web/20080124013853/http://www.macworld.com/article/1
`
`31751/2008/01/digitalcopy.html>) (EX1006), which is prior art under 35 U.S.C.
`
`§ 102(b);
`
`5.
`
`Book titled Security Engineering: A Guide to Building Dependable
`
`Distributed Systems, 2nd Ed., authored by Ross Anderson and published in 2008
`
`(EX1007), which is prior art under 35 U.S.C. § 102(b);
`
`6.
`
`Article titled How Do I Use a Starbucks iTunes Free Pick of The
`
`Week Song Card, authored by Dave Taylor and published on August 8, 2008
`
`(accessible at <http://web.archive.org/web/20080916071909/http://www.
`
`askdavetaylor.com/how_to_use_redeem_starbucks_itunes_free_pick_week_song_
`
`card.html>) (EX1008), which is prior art under 35 U.S.C. § 102(b);
`
`7.
`
`Article titled Brick-and-Mortar Stores Eye New Music Formats,
`
`authored by Ed Christman and published on October 28, 2007 (accessible from
`
`<http://www.reuters.com/article/us-formats-idUSN2838542620071028?
`
`pageNumber=1>) (EX1009), which is prior art under 35 U.S.C. § 102(b);
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`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`
`8.
`
`US Patent Application Publication No. 2004/0254883, titled “Method
`
`and System for Network-Based Purchase and Distribution,” for Kondrk et al.,
`
`published Dec. 16, 2004 and assigned to Apple Computer, Inc. (EX1010), which is
`
`prior art under 35 U.S.C. § 102(b);
`
`9.
`
`US Patent Application Publication No. 2008/0040379, titled “Media
`
`Package Format for Distribution to A Media Distribution System,” for Suitts et al.,
`
`published Feb. 14, 2008 and assigned to Apple, Inc. (EX1011), which is prior art
`
`under 35 U.S.C. § 102(b); and
`
`10. Apple’s iTunes Store Terms of Service, by Apple Inc., last updated
`
`September 10, 2007 (accessible at <http://web.archive.org/web/
`
`20071011075700/http://www.apple.com/legal/itunes/us/service.html>) (EX1012),
`
`which is prior art under 35 U.S.C. § 102(b).
`
`B. Grounds for Challenge
`This Petition, supported by the declaration of Ravi S. Cherukuri (“Cherukuri
`
`Decl.”) requests cancellation of each of challenged claims 1-26 of the ‘555 Patent,
`
`as unpatentable under 35 U.S.C. § 103.2
`
`Before Grecia filed his patent applications that resulted in the ‘555 Patent,
`
`Apple Computer, Inc. (“Apple”) developed, was publicly using, and filed various
`
`
`2 The prior art and challenges set forth herein by Petitioner have not been
`considered by the PTAB in any prior proceeding relating to the ‘555 Patent.
`
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`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`
`patent applications relating to, its iTunes® digital media purchase, distribution and
`
`sharing system. The Apple iTunes® system, as shown by various published patent
`
`applications and articles cited in this Petition, performed, or could have performed,
`
`everything claimed in the ‘555 Patent.
`
`IV. OVERVIEW OF THE ‘555 PATENT
`A.
`Priority Date
`Application serial no. 13/397,517, which became the ‘555 Patent, was filed
`
`on February 15, 2012, as a continuation of application serial no. 12/985,351, filed
`
`January 6, 2011 (abandoned), which was a continuation of application no.
`
`12/728,218, filed March 21, 2010 (abandoned).
`
`During prosecution of the ’555 Patent, applicant filed a Response, dated
`
`November 27, 2012, to an Office Action dated May 31, 2012, and used provisional
`
`application no. 61/303,292, filed February 10, 2010, to swear behind prior art U.S.
`
`Pub. No. 20110288946 relied on by the Examiner to reject the claims in that Office
`
`Action. While Petitioner does not believe, nor acquiesce, that the ‘555 Patent is
`
`entitled to an earlier invention date of February 10, 2010, for purposes of this
`
`Petition, it is assumed that the ‘555 Patent is entitled to an earliest invention date of
`
`February 10, 2010.
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`36851381v.1
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`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`
`All prior art cited and relied on in this Petition qualifies as prior art under 35
`
`USC § 102(b), as each was published more than a year before the earliest filing
`
`date of the ‘555 Patent, which is March 21, 2010.
`
`Summary of the ‘555 Patent
`
`B.
`The ‘555 patent issued on March 19, 2013. The ‘555 Patent is titled
`
`“Personalized Digital Media Access,” and relates generally to a Digital Rights
`
`Management (DRM) system.3 According to the ‘555 Patent:
`
`The invention is an apparatus that facilitates access to encrypted
`digital media to accept verification and authentication from an
`excelsior enabler using at least one token and at least one electronic
`identification. (‘555 Patent, Abstract).
`
`[T]he current states of DRM measures are not satisfactory because
`unavoidable issues can arise such as hardware failure or property theft
`that could lead to a payment customer loosing [sic] the right to
`recover purchased products. The current metadata writable DRM
`measures do not offer a way to provide unlimited interoperability
`between different machines. Therefore, a solution is needed to give
`consumers the unlimited interoperability between devices and “fair
`use” sharing partners....” (‘555 Patent, 2:63 – 3:4).
`
`According to the ‘555 Patent, the solution was to have a user enter an
`
`account login ID and password. (See 7:42-44). After the user successfully signed
`
`into a web service, an identifier assigned to the account, referred to as an
`
`“electronic identification reference” (e.g., a Facebook ID) and “a unique serial
`
`number” assigned to the digital media, referred to as a “membership verification
`
`
`3 Certificates of Correction issued September 24, 2013 and February 4, 2014.
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`IPR2017-00788 Petition
`U.S. Patent 8,402,555
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`token” (see 6:37-39) are written (“branded”) into the metadata of the digital media.
`
`According to the ’555 Patent, this allowed anyone to access the media on any
`
`device.
`
`The ’555 Patent includes 26 claims. Claims 1, 12 and 15 are independent,
`
`and are substantially similar in scope, with the main differences being that claim 1
`
`claims a method; claim 12 claims a system; and claim 15 claims a computer
`
`program. The general elements of the claims are shown in Fig. 6 of the ‘555
`
`Patent (reproduced below):
`
`
`Claim 1 is representative, and reproduced below and annotated with
`
`references to Fig. 6:
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`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`
`1. A method for monitoring access to an encrypted digital media,
`the method facilitating interoperability between a plurality of data
`processing devices, the method comprising:
`
`(STEP 602) receiving an encrypted digital media access branding
`request from at least one communications console of the plurality of
`data processing devices, the branding request being a read or write
`request of metadata of the encrypted digital media, the request
`comprising a membership verification token provided by a first user,
`corresponding to the encrypted digital media;
`
`(STEP 604) authenticating the membership verification token, the
`authentication being performed in connection with a token database;
`
`(STEP 606) establishing a connection with the at least one
`communications console wherein the communications console is a
`combination of a graphic user interface (GUI) and an Application
`Programmable Interface (API) protocol, wherein the API is related to
`a verified web service, the verified web service capable of facilitating
`a two way data exchange to complete a verification process;
`
`(STEP 608) requesting at least one electronic identification reference
`from the at least one communications console wherein the electronic
`identification reference comprises a verified web service account
`identifier of the first user;
`
`(STEP 610) receiving the at least one electronic identification
`reference from the at least one communications console; and
`
`(STEP 612) branding metadata of the encrypted digital media by
`writing
`the membership verification
`token and
`the electronic
`identification reference into the metadata.
`
`Fig. 3 of the ‘555 Patent (reproduced below), illustrates how a user obtains
`
`digital content using a GUI 301 to input the claimed “membership verification
`
`token.” This relates to steps 602 and 604 of Fig. 6.
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`U.S. Patent 8,402,555
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`
`
`The user also inputs their login credentials into the GUI/API 307 to connect
`
`with a web service to verify the user’s identification. The user’s account is
`
`associated with an “electronic identification reference” that serves as an account
`
`identifier. This corresponds to steps 606-610 of Fig. 6. The digital content
`
`metadata 302 is then “branded” (i.e., written) with the “membership verification
`
`token” and the “electronic identification reference.” This corresponds to step 612
`
`of Fig. 6.
`
`Summary of Relevant Prosecution File History
`
`C.
`During prosecution of the ‘555 Patent, the claims were rejected as obvious
`
`under §103 over U.S. publication no. 2011/0288946 (“Baiya”) in view of U.S.
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`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`
`Patent 7,526,650 (“Wimmer”). Baiya describes a content management system for a
`
`group or a business, where libraries for documents and other media are established
`
`and authorized users are given keys to access those libraries. Wimmer describes
`
`branding video content with an end user’s personal identity information as a
`
`deterrent against unauthorized redistribution. However, neither taught a user’s
`
`verification identification “branded” into the digital content. Thus, the Examiner
`
`found no reference where an “electronic identification reference” is written into the
`
`metadata of the digital content and allowed the claims.
`
`Person of Ordinary Skill in the Art
`
`D.
`A person of ordinary skill in the art at time of the earliest effective date of
`
`the ‘555 Patent (February 10, 2010) would possess at least a university degree, or
`
`have equivalent professional experience, related to electronics and/or software,
`
`with some experience in digital rights management, such as two years of work
`
`experience. (Cherukuri Decl. (EX1013), ¶¶ 31-34, 77-79). The claims of the ‘555
`
`Patent are directed generally to a DRM system used with standard computers
`
`communicating over known network means. Thus, one of ordinary skill in the art
`
`requires knowledge of DRM schemes, generally. (Id., ¶¶ 17, 31, 78-79).
`
`V.
`
`CLAIM CONSTRUCTION
`
`Below are proposed constructions of certain claimed phrases and terms.
`
`Any claim term or phrase not included should be given their ordinary meaning in
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`light of the specification, as commonly understood by those of ordinary skill in the
`
`art.
`
`During Inter Partes Review, claims are given the “broadest reasonable
`
`construction in light of the specification of the patent in which they appear.” See 37
`
`C.F.R. § 42.100(b); see also Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 1231,
`
`2144-46 (2016) (confirming use of the broadest reasonable interpretation
`
`standard). Under this standard, claim terms are given their ordinary and customary
`
`meaning, as understood by one of ordinary skill in the art, in the context of the
`
`patent specification. See In re Translogic Tech., Inc. 504 F.3d 1249, 1257 (Fed.
`
`Cir. 2007).
`
`The broadest reasonable interpretation of a claim term or phrase may be the
`
`same as or broader than the construction to be provided under the standard set forth
`
`in Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005), but cannot be narrower.
`
`See Facebook, Inc. v. Pramatus AV LLC, 2014 U.S. App. LEXIS 17678, *11 (Fed.
`
`Cir. 2014). The constructions proposed below should be applied regardless as to
`
`whether the terms are interpreted under the Phillips or “broadest reasonable
`
`interpretation” standards.
`
`There have been no claim constructions provided in any of the District Court
`
`litigations involving the ‘555 Patent. There was a joint claim construction
`
`statement submitted by Grecia and Amazon for the ‘860 Patent in Grecia v
`
`36851381v.1
`
`-13-
`
`Adobe, Exhibit 1020
`
`
`
`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`
`Amazon.com, No. 2:14– cv–00530 (W.D. Wash. Dec. 22, 2014) (EX1002)); see
`
`also 37 C.F.R. § 42.62 and F.R.E. 801(d)(2).
`
`A.
`
`“or”
`
`The conjunctive term “or,” such as, for example, in claims 1, 3, 6, 10-12, 15-
`
`17, 19, 24, and 25, claim alternatives, and must be construed to mean “a choice
`
`between either one of two alternatives, but not both.” See e.g., Kustom Signals,
`
`Inc. v. Applied Concepts, Inc., 264 F. 3d 1326, 1331-1332 (Fed. Cir. 2001); MPEP
`
`§ 2173.05(h). Accordingly, only one claimed alternative must be taught in prior
`
`art for purposes of invalidity.
`
`B.
`“the request comprising a membership verification token
`provided by a first user, corresponding to the encrypted digital media”
`
`During IPR2016-00789 for the ‘555 Patent, the Board construed the phrase
`
`“the request comprising a membership verification token provided by a first user,
`
`corresponding to the encrypted digital media,” in each of independent claims 1, 12
`
`and 15, such that the phrase “corresponding to the encrypted digital media”
`
`modifies the claim term “membership verification token.”4 (IPR2016-00789,
`
`Decision Denying Institution of Inter Partes Review, Sept. 9, 2016, p. 7).
`
`Petitioner agrees with this construction. (Cherukuri Decl. ¶50).
`
`
`4 It was for this reason that the Board denied the Petition in IPR2016-00789, as the
`relied upon art failed to disclose this feature. However, as set forth herein, Apple’s
`iTunes system included this feature.
`
`36851381v.1
`
`-14-
`
`Adobe, Exhibit 1020
`
`
`
`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`
`C.
`“the electronic identification reference comprises a verified web
`service account identifier”
`
`The phrase in claims 1, 12, and 15, should be construed to mean “an
`
`identifier of a web service that can be used to identify a user or device.”
`
`(Cherukuri Decl. ¶¶51-56). Outside the claims, the term “verified web service”
`
`appears only once:
`
`The web service equipped with the API is usually a well-known
`membership themed application in which the users must use an
`authentic identification. Some example [sic] includes Facebook in
`which as a rule, members are required to use their legal name
`identities. A reference number or name with the Facebook Platform
`API represents this information. Other verified web services in which
`real member names are required such as the LinkedIn API and the
`PayPal API and even others could be used, but for this discussion,
`Facebook will be used only as an example of how the authentication
`element of the invention is utilized. (‘555 Patent, 10:42–52).
`
`However, the ‘555 Patent describes that the “electronic identification
`
`reference” is obtained from any web service capable of identifying a user or
`
`device. (Id.) For example:
`
`•
`
`•
`
`•
`
`The at least one electronic identification could be a device serial
`number, a networking MAC address, or a membership ID reference
`from a web service (‘555 Patent, Abstract);
`
`with at least one token and at least one electronic identification
`reference received from the at least one excelsior enabler utilizing at
`least one membership (’555 Patent, 3:23-26); and
`
`Once the enabler successfully sign in to the GUI element then the
`apparatus will query the API for at least one electronic identification
`reference, in this discussion is the FBID. (’555 Patent, 11:25-28).
`
`36851381v.1
`
`-15-
`
`Adobe, Exhibit 1020
`
`
`
`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`
`In the Grecia v. Amazon litigation, Grecia proposed construing “verified
`
`web service” as “a web service accessible with an authenticated credential.”
`
`(EX1002, p. 16). However, “authenticated credential” does not appear anywhere
`
`in the ‘555 Patent, and is vague and ambiguous. (Id.)
`
`“metadata of the encrypted digital media”
`
`D.
`The phrase “metadata of encrypted digital media,” in claims 1, 12 and 15,
`
`should be construed to mean “data about the encrypted digital media.” The term
`
`“metadata” is well-known in the art, and includes data describing the encrypted
`
`digital media. (Cherukuri Decl. ¶ 59). Metadata is not necessarily connected to or
`
`physically embedded in the content file, but can be. Rather, metadata can be in a
`
`separate file that includes information or data about the digital media. (Id). In the
`
`Grecia v. Amazon litigation, Grecia proposed “data about the digital content,”
`
`which is consistent with Petitioner’s proposed construction. (EX1002, Ex. C, p. 1).
`
`(Cherukuri Decl. ¶¶ 57-61).
`
`“two way data exchange”
`
`E.
`The term “two way data exchange,” in claims 1, 12 and 15, should be
`
`construed to mean “the ability to receive and send data.” (Cherukuri Decl. ¶¶ 62-
`
`64). The ‘555 Patent describes “the web service must be available for two way
`
`data exchange to complete the authentication process of this invention.” (’555
`
`Patent, 10:8-10). Such “exchange” described by the ‘555 Patent necessarily only
`
`36851381v.1
`
`-16-
`
`Adobe, Exhibit 1020
`
`
`
`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`
`requires the ability to receive and send data – i.e., the web service must receive a
`
`request and send a response. (Id.).
`
`In the Grecia v. Amazon litigation, Grecia proposed construing a similar
`
`term “two way data exchange session” in the related ‘860 Patent to mean
`
`“requesting the at least one identification reference from the at least one
`
`communications console and receiving the at least one identification reference
`
`from the at least one communications console.” (EX1002, Ex. C, p. 19). Grecia’s
`
`construction adds limitations into the claim, and is thus unduly narrowing.
`
`(Cherukuri Decl. ¶ 66).
`
`“key file”
`
`F.
`The term “key file,” in claim 9, should be construed to mean “a file that
`
`includes an account identifier of a user.” (Cherukuri Decl. ¶¶ 67-70). While the
`
`term appears in several places in the specification of the ‘555 Patent, no definition
`
`is offered as to what constitutes a key file. (Id.). However, in context, an example
`
`of a “key file” appears to be the exemplar XML shown in the ‘555 Patent. (’555
`
`Patent, 11:50-60). Notably, the exemplar XML lacks a unique “key,” as the term
`
`is commonly used within the relevant art of encryption, but rather includes user
`
`account identifiers (“uid” in the XML). (Id.). Moreover, claim 1 recites that “the
`
`electronic identification reference comprises a verified web service account
`
`36851381v.1
`
`-17-
`
`Adobe, Exhibit 1020
`
`
`
`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`
`identifier of the first user.” Based on claims 1 and 9, the essential feature of the
`
`“key file” is the user’s account identifier. (Cherukuri Decl. ¶¶ 67-70).
`
`G.
`“the branding request is a request from one or more secondary
`users”
`
`The phrase, as it appears in claim 19, should be construed to mean “a second
`
`branding request from one or more secondary users.” (Cherukuri Decl. ¶¶ 71-72).
`
`This is the only construction that renders claim 19 comprehensible and definite,
`
`and is consistent, to the extent possible, with the specification of the ‘555 Patent
`
`and usage in claim 3 (where the branding request is from the first user or the one or
`
`more secondary users). (Id.). Otherwise, the phrase in claim 19 is indefinite under
`
`35 USC § 112(d) because claims 15 and 18, from which claim 19 depends, recite
`
`only one “branding request,” which claim 18 defines as “a request from the first
`
`user…” (Id.). Claim 19 now redefines the claimed “branding request” set forth in
`
`claim 18 as being “a request from one or more secondary users.” (Id.).
`
`VI.
`
`PROPOSED REJECTIONS SHOWING A REASONABLE
`LIKELIHOOD OF PREVAILING
`
`The prior art discussed below, as corroborated by the opinions in the
`
`Cherukuri Decl. (EX1013), render each of the claims of the ‘555 Patent invalid as
`
`obvious under 35 USC §103.
`
`36851381v.1
`
`-18-
`
`Adobe, Exhibit 1020
`
`
`
`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`
`In summary, since at least the mid-2000’s, Apple’s iTunes® digital media
`
`system practiced or suggested each of the elements of the ‘555 Patent.5 (Cherukuri
`
`Decl. ¶¶ 93-100). For example, since at least 2008, Apple ran a promotion
`
`allowing users to obtain a unique code, for example, on a card available from
`
`Starbucks®, to download a specific encrypted song in iTunes® media player.
`
`(Id.). Another example includes unique “Digital Copy” codes included with
`
`DVDs, which a user would submit to iTunes® since at least 2008 to acquire access
`
`to an encrypted “Digital Copy” of a movie. (Id.). These promotional and “Digital
`
`Copy” codes used by iTunes® were unique and associated with specific
`
`downloadable media (e.g., specific songs or movies). (Id.).
`
`In these examples, a user input the promotional or digital copy code into the
`
`iTunes® media player interface API on a client computer device, which connected
`
`to and sent the code to the iTunes® web-based system. (Cherukuri Decl. ¶¶ 129-
`
`137). The iTunes® system also authenticated the user with a verified login
`
`identification, as the user was required to be logged into his/her iTunes® user
`
`account to access the iTunes® media server and the downloadable media
`
`corresponding to the code. (Id.). The user’s account information was verified by
`
`5 As is often the case, with a system as diverse and complex as Apple’s iTunes®
`system, there is not a single publication that describes the system in its entirety, but
`rather multiple publications that disclose various components or elements of the
`system. As such, each of the prior art references discussed herein describe a
`specific feature or component of the overall iTunes® system.
`
`36851381v.1
`
`-19-
`
`Adobe, Exhibit 1020
`
`
`
`IPR2017-00788 Petition
`U.S. Patent 8,402,555
`
`an e-mail when the account was created, and further verified by prompting the user
`
`to input a valid credit card information at account creation. (Id.).
`
`After the user sent a request with the code via the iTunes® media player
`
`interface, the iTunes® system authenticated the code (i.e., confirmed it was valid
`
`and not used, and that the user met eligibility requirements associated with the
`
`code) and granted rights to the user’s iTunes® media player to access the specific
`
`encrypted digital media associated with that code, for example downloading and
`
`decrypting the media. (Cherukuri Decl. ¶¶ 82-88, 101-102). iTunes® further
`
`wrote the user’s account information into the metadata of the media (e.g., it
`
`included information such as “Purchased by” and “Account Name”). (Id.).
`
`Lastly, the disclosed iTunes® system utilized unique keys to en
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