EWS-006420
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`Early Warning Services 1042
`IPR of U.S. Pat. No. 8,887,308
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`
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`Early Warning Services 1042
`IPR of U.S. Pat. No. 8,887,308
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`
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`TABLE OF CONTENTS
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`INTRODUCTION..icscscccssssscsssecscssssessssvecesssececsssevscsssseeessssvtsssssuecessseeessssees -|-
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`II.
`
`MANDATORY NOTICES UNDER37 C.F.R. § 42.8(B).sscssssssseeeessssseeees -1-
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`REAL PARTIESIN INTEREST o.eecssecsscsseesscssssecscesseeecsssseesssseeesssvees -1-
`
`RELATED MATTERS o.eeecssessssssesscssssescessesccssssesecsssveesesssecssssiessssees -2-
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`PAYMENT OF FEES ....scessssssssesssesesssssesesssevsesesssesesssseessesseeesssneessen -2-
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`DESIGNATION OF LEAD COUNSEL).....esssccsssssssssssssseessssseessseees -3-
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`SERVICE INFORMATION....essccsssssssssssssseessssssessssstessssssesssssesesssees -3-
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`POWER OF ATTORNEYuveesscsecsssssssessesseesesssssescesssesssssnessssseesssasees -3-
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`il.
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`REQUIREMENTS FOR INTER PARTES REVIEW vsscccssessscssseesssssesesseeees -3-
`
`A.
`
`B.
`
`GROUND FOR STANDING ....sssessssessssssesssssssstesssssesssssseessssseeseseees -3-
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`IDENTIFICATION OF THE PRIOR ART REFERENCES ........... ~4-
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`1.
`
`2.
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`3.
`
`A.
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`DeMello as Prior Art under 35 U.S.C. § 102(b) [Ex.
`LOOO] ...eeeeeceeecceesececeseeeesceeceaeersaeeeseecesneceaeerseeeseessaeeseeaeensaeeees -4-
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`Pestoni as Prior Art under 35 U.S.C. § 102(b) [Ex. 1007] ....- 4 -
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`Wiseras Prior Art under 35 U.S.C. § 102(b) [Ex. 1008]....... -4-
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`Cooper as Prior Art under 35 U.S.C. § 102(b) [Ex. 1009] ....- 5 -
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`C.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED........... -5-
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`IV.
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`OVERVIEW OF THE ‘860 PATENT ooo eee ree etre ereseteeeeneee -6-
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`A.
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`B.
`
`C.
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`PRIORITY DATE OF THE ‘860 PATENT ooo. eects senees -6-
`
`SUMMARYOF THE ‘860 PATENT uu.eects eeeeeeneees -6-
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`SUMMARY OF RELEVANT PROSECUTION FILE
`HISTORYoo... eecccceeesseeeceseeeceesaeceseneesesaeecesaeesesaseseseeeessaeecnsaaeees - 10-
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`D.
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`PERSON OF ORDINARYSKILL IN THE ARTue -11-
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`1
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`EWS-006421
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`EWS-006421
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`
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`PROPOSED CLAIM CONSTRUCTION... eeeeseeeeeneeetaee -11-
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`1.
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`2.
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`3.
`
`4.
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`5.
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`6.
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`7.
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`8.
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`“verified Web SCrviCe” oo... eeeeeesseerseeessneceseecerseeesneeearereneees - 13 -
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`“metadata of the digital content” oo... ee eeeeseeeeeeeeeeeeeeeeees -14-
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`“two way data exchange SeCSSION”..........csceceesseceesteeesseeeeeeees - 14-
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`“redeemable instrument”..............eveesuessuesatesessesssesseees - 14-
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`“USEF ACCESS PANE] eee eecceeseeceeeeecseeeseeesererseeteaeeeeseeersaes -15-
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`“customization MOdUIe”........eeeeeccessseeeesnceceeseeeeseaeeeteneeeeeees - 16-
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`“royalty SCHEME”........csseeesssececseseeeeeeseeessseeeesesseeessaeeeeeneeeesaas - 16-
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`“remote Control Operation” ........cscccccescceesssecesseeeeessneeeesteeeeees -17-
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`PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A
`REASONABLE LIKELIHOOD OF PREVAILING 1... ee eeeeceeeeeeneeees - 18 -
`
`A.
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`B.
`
`GROUND 1: CLAIMS 1-25 and 27-30 ARE
`UNPATENTABLE AS ANTICIPATED BY DEMELLO............ - 18 -
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`GROUND 2: CLAIMS 1-20 ARE UNPATENTABLE AS
`ANTICIPATED BY PESTONI....0.....cccceccceseeeeseeeeseeseseeeesneseseereas - 29 -
`
`
`
`C. GROUND|(continued for claims 21-25, 27-30): CLAIMS21-
`25 & 27-30 ARE UNPATENTABLE AS ANTICIPATED BY
`DEMELLO 0... cee cceccceseeceseecesneesseeensneecesceceeecseersteeessnecenseeseaeeenas - 49 -
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`D.
`
`E.
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`F..
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`GROUND 3: CLAIMS 21-30 ARE UNPATENTABLE OVER
`DEMELLO IN COMBINATION WITH WISER.............:ceee - 49 -
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`GROUND4: CLAIMS 21-30 ARE UNPATENTABLE OVER
`PESTONI IN COMBINATION WITH WISER... eeeeeeeeeee - 49 -
`
`GROUND 5: CLAIMS 17 AND 30 ARE UNPATENTABLE
`OVER DEMELLO IN COMBINATION WITH WISER AND
`COOPER ooo ceecccecccesseceeeeeesneceeaeeesaeessaeeceeaeesaeeesaeeesaeeesenecenesesaeensate - 59 -
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`VI.
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`CONCLUSION(ee eeccceecccceeceeeseeeseeeeesceeeaeeceneeeeeaceceeeeaecseaeeesnesseneeneeeensaes - 60 -
`
`il
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`EWS-006422
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`EWS-006422
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`EXHIBIT LIST
`
`
`U.S. Patent No. 8,533,860 to Grecia.
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`
`
`
`
`
`
`
`
`1002
`
`1003
`
`1004
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`Original Complaint for Patent Infringement, William Grecia v.
`Sony Network Entertainment International, LLC, No. 1:13-cv-
`08731 (Dec. 6, 2013)
`
`Proof of Service, William Grecia v. Sony Network Entertainment
`International, LLC, No. 1:13-cv-08731 (Dec. 11, 2013)
`
`SONY NETWORK ENTERTAINMENT INTERNATIONAL
`LLC’S PROPOSED TERMS FOR CONSTRUCTION,William
`Grecia v. Sony Network Entertainment International, LLC, No.
`1:13-cv-08731, Consolidated Lead Case: Case No. 3:14-cv-
`00775-EMC, Case No. 3:14-cv-00969-EMC
`
`1005
`
`Plaintiff's Patent Local Rule 131 Disclosures by Grecia
`[proposed claim construction terms], Case No. C14-530RAJ
`
`
`1006
`
`U.S. Patent No. 6,891,953 to DeMello et a/., Prior Art under 35
`U.S.C. § 102(b)
`
`
`1007
`
`U.S. Pub. No. 200803 13264 to Pestoni, Prior Art under 35
`U.S.C. § 102(b)
`
`
`U.S. Pat. 6,385,596 to Wiser, Prior Art under 35 U.S.C. § 102(b)
`1008
`
`
`1009
`
`U.S. Pub. No. 20090037388 to Cooper, Prior Art under 35
`U.S.C. § 102(b)
`
`1010
`
`Declaration of Ravi S. Cherukuri & Exhibits A-D
`
`ill
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`EWS-006423
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`EWS-006423
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`
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`1.
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`INTRODUCTION
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`Petitioner SONY NETWORK ENTERTAINMENT INTERNATIONAL
`
`LLC (“SNEI” or“Petitioner”) respectfully petitions for initiation ofinter partes
`
`review of Claims 1-30 of U.S. Patent No. 8,533,860 (the “ ’860 Patent”) in
`
`accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq. (“Petition”).
`
`The ‘860 Patent issued on Sept. 10, 2013, more than nine monthspriorto the filing
`
`of this Petition. The ‘860 Patentis currently asserted in a co-pendinglitigation,
`
`and this Petition is being filed within one year of Petitioner being served with a
`
`complaint for patent infringement. (See Exs. 1002 and 1003.) Thus, the ‘860
`
`Patent is eligible for inter partes review. As described in detail herein, the ‘860
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`Patent is clearly anticipated and rendered obviousbya series ofpriorart
`
`references, and therefore this petition should be granted.
`
`Il. MANDATORY NOTICES UNDER37 C.F.R. § 42.8(B)
`
`A.
`
`REAL PARTIESIN INTEREST
`
`The realpartiesin interest ace SONY NETWORK ENTERTAINMENT
`
`INTERNATIONALLLC, a Delaware corporation with a principal place of
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`business at 6080 Center Drive, 10th Floor, Los Angeles, CA 90045 and SONY
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`COMPUTER ENTERTAINMENT AMERICA LLC, a Delaware corporation with
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`a principal place of business at 2207 Bridgepointe Parkway, San Mateo, CA
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`94404.
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`EWS-006424
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`EWS-006424
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`
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`B.
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`RELATED MATTERS
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`The ‘860 Patent has been the subject of the following civil actions:
`
`Grecia v. Apple Inc., 3-14-cv-04990, CAND, November 12, 2014
`
`Grecia v. Apple Inc , 3-14-cv-04985, CAND, November11, 2014
`
`Grecia v. Amazon.com, Inc., 2-14-cv-00530, WAWD,April 9, 2014
`
`Grecia v. VUDU,Inc. et al, 3-14-cv-01220, CAND, March 14, 2014
`
`Grecia v. Google Inc., 3-14-cv-01194, CAND, March 13, 2014
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`Grecia v. Microsoft Corp., 2-14-cv-00306, WAWD, March 4, 2014
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`Grecia v. Sony Network Entertainment International, LLC,3-14-cv-00969,
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`CAND,March 3, 2014
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`Grecia v. Apple Inc. et al, 3-14-cv-00775, CAND,February 20, 2014
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`Grecia v. Microsoft Corporation, 1-13-cv-08734, ILND, December6, 2013
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`Grecia v. Google Inc., 1-13-cv-08733, ILND, December6, 2013
`
`Grecia v. Apple Inc., 1-13-cv-08727, ILND, December6, 2013
`
`C.
`
`PAYMENT OF FEES
`
`This Petition is accompanied by a paymentof $31,000 and requests review
`
`of Claims 1-30 of the ‘860 Patent. 37 C.F.R. § 42.15. Thus, this Petition meets the
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`fee requirements under 35 U.S.C. § 312(a)(1).
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`EWS-006425
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`EWS-006425
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`
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`D.
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`DESIGNATION OF LEAD COUNSEL
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`Lead Counselfor Petitioner is Paul C. Haughey (Reg. No. 31,836), of
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`Kilpatrick Townsend & Stockton LLP. Back-up Counselis Scott E. Kolassa (Reg.
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`No. 55,337), of Kilpatrick Townsend & Stockton LLP.
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`E.
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`SERVICE INFORMATION
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`Asidentified in the attached Certificate of Service, a copy ofthis Petition, in
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`its entirety, is being served to the address of the attorney or agent of record in the
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`Patent Office for the ‘860 Patent, as well as counsel of record for the Patent Owner
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`in the above-referencedlitigations. Petitioner may be servedatthe offices oftheir
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`counsel, Kilpatrick Townsend & Stockton LLP.
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`F.
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`POWER OF ATTORNEY
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`Powers of attorney are being filed with the designation of counsel in
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`accordance with 37 C.F.R. § 42.10(b).
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`Hl. REQUIREMENTS FOR INTER PARTES REVIEW
`
`A.
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`GROUND FOR STANDING
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`Petitionercertifies that the ‘860 Patent is available for inter partes review,
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`and further certifies that Petitioner is not barred or estopped from requesting an
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`inter partes review challenging the ‘860 Patent on the groundsidentified herein.
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`The ‘860 Patent has not been subject to a previous estoppel-based proceeding of
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`EWS-006426
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`EWS-006426
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`
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`the AIA, and the Complaint served on Petitioner was served within the last twelve
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`months, on December 11, 2013.
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`(See Ex. 1003.)
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`B.
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`IDENTIFICATION OF THE PRIOR ART REFERENCES
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`1.
`
`DeMello as Prior Art under 35 U.S.C. § 102(b) [Ex. 1006]
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`U.S. Patent No. 6,891,953 (“DeMello”) wasfiled on June 27, 2000 and
`
`issued on May 10, 2005. DeMello describes a system for delivery of electronic
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`books or other media. A purchasercan link a book to a “persona”so that it can be
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`read on multiple user devices or shared with others whoare a part of the same
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`persona. The user provides a user ID and password for a PASSPORT membership
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`system. A PASSPORTIDis written to an activation certificate which is written to
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`metadata for the content.
`
`2.
`
`Pestoni as Prior Art under 35 U.S.C. § 102(b) [Ex. 1007]
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`U.S. Pub. No. 2008/03 13264 to Pestoni (“Pestoni’’) was filed Jun. 12, 2007
`
`and was published Dec. 18, 2008. Pestoni discloses content licenses for domain
`
`memberships. The content license is metadata with a domain ID. Multiple devices
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`and users can access content using the domain ID.
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`3. Wiser as Prior Art under 35 U.S.C. § 102(b) [Ex. 1008]
`
`USS. Pat. 6,385,596 to Wiser (“Wiser”) wasfiled Feb. 6, 1998 and issued
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`May 7, 2002. Wiseris cited for the customization module of claims 21-30 and for
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`the “royalty scheme” of claim 26. Wiser showsa royalty schemetied toa DRM
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`-4-
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`EWS-006427
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`EWS-006427
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`
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`system, and in particular to a certificate ID and voucherID in a log file (metadata)
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`associated with the content.
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`4.
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`Cooperas Prior Art under 35 U.S.C. § 102(b) [Ex. 1009]
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`U.S. Pub. No. 20090037388 to Cooper (“Cooper”) wasfiled Aug. 1, 2008
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`and was published Feb. 5, 2009. Cooperis cited for the remote operation of claim
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`17. Cooper describes transferring electronic media information over a public
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`network with copyright [DRM] safeguards. Cooper provides an explicit reference
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`to the well-known use of remote procedure calls as a method of communication.
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`C.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 311, this Petition requests cancellation of Claims1-
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`30 of the ‘860 Patent in accordance with one or more of the following grounds, as
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`indicated in the discussion below. Two main references are used, addressing both
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`anticipation and obviousness, with additional references for dependent claims.
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`Ground 1; CLAIMS1-25 & 27-30 ARE ANTICIPATED BY DEMELLO.
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`Ground 2: CLAIMS 1-20 ARE ANTICIPATED BY PESTONI
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`Ground 3: CLAIMS 21-30 ARE OBVIOUS OVER DEMELLO IN
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`COMBINATION WITH WISER.
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`Ground 5: CLAIMS 21-30 ARE OBVIOUS OVER PESTONIIN
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`COMBINATION WITH WISER
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`EWS-006428
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`EWS-006428
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`
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`Ground 5; CLAIMS 17 & 30 ARE OBVIOUS OVER DEMELLO IN
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`COMBINATION WITH WISER AND COOPER
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`IV. OVERVIEW OF THE ‘860 PATENT
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`A.
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`PRIORITY DATE OF THE ‘860 PATENT
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`The ‘860 Patent is a continuation of application No. 13/397,517, filed on
`
`Feb. 15, 2012, now Pat. 8,402,555 (the “ ‘555 Patent”), which is a continuation of
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`application No. 12/985,351, filed on Jan. 6, 2011, which is a continuation of
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`application No. 12/728,218, filed on Mar. 21, 2010, now abandoned. Although not
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`listed on the ‘860 Patent or Certificate of Correction, in the | 1-27-2012 response in
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`the prosecution history of the ‘555 Patent, Grecia claimed priority to his
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`provisional application 61/303292 (filed Feb. 10, 2010) to swear behind a cited
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`reference. Petitioner does not believe the ‘860 Patentis entitled to the Feb. 10,
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`2010 priority data, but assumesthatis the effective date for the purposesofthis
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`petition sinceall the prior art is more than a yearearlier than this date.
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`B.
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`SUMMARYOF THE‘860 PATENT
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`The ‘860 Patentis directed to Digital Rights Management (DRM).
`
`Itis
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`directed to unlocking media based on a membership, as opposedto a specific
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`machine ID, with a membership verification token being written into the metadata
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`of the media. One example provided in the ‘860 Patent is using a Facebook token,
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`whichthe user receives when logging in to Facebook. In this example, the ‘860
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`-6-
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`EWS-006429
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`EWS-006429
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`
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`Patent would rely on Facebookto verify the user, and to tie media access to a
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`user(s) instead of a particular machine ID. Subsequently, an electronic
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`identification reference (e.g., machine ID) is requested. The Facebook token
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`and/or machine ID are then written to the metadata.
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`The claim elements of claim | and the other challenged claims correspond to
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`the steps of Fig. 6 of Grecia ‘860, copied below:
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`Start
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`
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`Receive a branding request from at least
`one communications console of the
`
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`plurality of data processing devices
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`one communications console
`media
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`Authenticate the membership verification
`token
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`Establish connection with the at least
`one communications console
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`Request at least one electronic
`identification reference from the at least
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`Receive the at least one electronic
`identification reference from the at least
`one communications console
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`Brand metadata of the encrypted digital
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`602
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`604
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`606
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`608
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`n10
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`612
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`EWS-006430
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`EWS-006430
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`The alleged shortcomingofthe priorart is
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`“The current metadata writable DRM measures do not offer a
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`way to provide unlimited interoperability between different
`
`machines. Therefore, a solution is needed to give consumersthe
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`unlimited interoperability between devices and "fair use" sharing
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`partners for an infinite time frame while protecting commercial
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`digital media from unlicensed distribution to sustain long-term
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`return of investments.” (‘860 Patent at 2:1 —~ 3:7).
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`The ‘860 Patent acknowledgesthat:
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`“DRM schemes for e-books include embedding credit card
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`information and other personal information inside the metadata
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`area of a delivered file format and restricting the compatibility
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`of the file with a limited number of reader devices and
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`computer applications.”
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`Claim 1 of the ‘860 Patent is lengthy, including many alternative limitations,
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`and is summarized belowto aid in understandingit, with the letters corresponding
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`to the elements in the claim charts below, and the numbers corresponding to Fig. 6
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`above:
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`[A] Preamble: Authorizing accessto plural data processing devices (multiple
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`user devices) using a cloud (Internet)
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`EWS-006431
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`EWS-006431
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`[B] (602) Receive user request for content access, request includes
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`verification token (e.g., password, email or credit card or other device independent
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`token).
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`[C] (604) Verification token is authenticated.
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`[D] (606) Establish connection with user communication module (module is
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`a GUI and API related to a web service)
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`[E] (608) Identification reference (device serial #, email or password,etc.) is
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`requested from user.
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`[F] (610) Identification reference is received.
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`[G] (612)The verification token or identification reference (e.g., email or
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`device serial no.) is written into the content metadata.
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`The claims of parent patent 8,402,555, like Fig. 6, give a good indication of
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`what Grecia thought he invented and what is described. However, Grecia did not
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`allege the narrower ‘555 claims against the Petitioner and other defendants. The
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`claims of the ‘860 Patent eliminate limitations from the ‘555 Patent, such as the
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`term “membership” and the token database for verification of membership, and
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`add a large variety of alternatives, including overlaps, for the verification token
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`and identification reference.
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`To make reading the ‘860 patent easier for the PTAB, Petitioner notes that
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`the term “excelsior enabler” as used in the specification may be confusing. The
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`EWS-006432
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`EWS-006432
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`term “enabler” wasalso originally in the parent claims, but was replaced with
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`“user.” “Excelsior appears to refer to the main,orfirst user: “[T]he excelsior
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`enabler and secondary enablers defined comprises human beings or computerized
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`mechanisms programmedto processsteps of the invention as would normally be
`
`done manually by a human being.” ‘860 Patent, 5:12-16.
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`C.
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`SUMMARY OF RELEVANT PROSECUTION FILE HISTORY
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`The claimsin the parent patent wereoriginally rejected as obvious under
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`§103 over Baiya Pub. 20110288946 in view of WimmerPat. 7,526,650. The ‘860
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`Patent was allowed with an Examiner’s amendmentand norejection, and the
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`reasons for allowancelisted Baiya and Wimmerasthe closest prior art. Baiya
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`describes a content management system for a group or business, wherelibraries for
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`documents and other media are established and authorized users are given keys to
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`access those libraries. Wimmer describes branding video content with an end
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`user's personal identity information as a deterrent against unauthorized
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`redistribution. Thus, the Examiner found no reference where a user’s membership
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`wasused to brand digital content so it could be used on multiple devices. This
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`feature, however,is clearly present in the prior art references discussed herein.
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`In the Certificate of Correction, the claim language “obtained from a verified
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`webservice” was changedto “related to a verified web service.”
`
`-10-
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`EWS-006433
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`EWS-006433
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`D.
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`PERSON OF ORDINARYSKILL IN THE ART
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`One of ordinary skill in the art at time of the earliest claimed effectivefiling
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`date of the ‘860 Patent (Feb. 10, 2010) would possessat least a university degree
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`or have equivalent professional experience related to electronics and/or software,
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`with some experiencein digital rights managementsuch as two years of work
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`experience. (See Ex. 1010, Cherukuri Decl.,| 21-25, 52-54.)The claimsof the
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`‘860 Patent are directed toa DRM system used with standard computers
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`communicating over known network means. Thus, one of ordinary-skill in the art
`
`requires knowledge of DRM programs, generally. U/d., J 22.)
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`E.
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`PROPOSED CLAIM CONSTRUCTION
`
`Pursuant to 37 C.F.R. § 42.100(b), the claim terms of an unexpired patent
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`subject to inter partes review shall receive the “broadest reasonable construction in
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`light of the specification of the patent in which [they] appear[].” See also In re
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`Swanson, No. 07-1534 (Fed. Cir. 2008); Jn re Trans Texas Holding Corp., 498
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`F.3d 1290, 1298 (Fed. Cir. 2007) (citing In re Yamamoto, 740 F.2d 1569, 1571
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`(Fed. Cir. 1984).) In compliance with 37 C.F.R. § 42.104(b)(4), Petitioner states
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`that, in general, the “claim terms are presumedto take on their ordinary and
`
`customary meaning.” See Changes to Implement /nter Partes Review
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`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
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`Covered Business Method Patents, 77 Fed. Reg. 48699 (2012), Response to
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`-ll-
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`EWS-006434
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`EWS-006434
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`Comment 35. However, where,as here, a definition is provided by a patent
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`applicant for a specific claim term, that definition will control interpretation of the
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`term as it is used in the claim. See, e.g., Toro Co. v. White Consolidated Indus.,
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`Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999).
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`All claim terms not specifically addressed below have been accordedtheir
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`broadest reasonable interpretation in light of the patent specification, including
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`their plain and ordinary meaning, to the extent such a meaning could be
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`determined by a skilled artisan. And, because the standards of claim interpretation
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`used by the Courts in patentlitigation and by the Board in post-grant proceedings
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`are different, Petitioner expressly reservesthe right to present other interpretations
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`at a later time in the district court litigation. The interpretation of the claims
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`presented herein, either implicitly or explicitly, should not be viewed as
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`constituting, in whole or in part, Petitioner’s own interpretation and/or construction
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`of such claims for the purposes of the underlying litigation. Instead, such
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`constructions in this proceeding should be viewedonly as constituting an
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`interpretation of the claims underthe “broadest reasonable construction” standard.
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`There have been no claim construction briefs or orders yet in the District
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`Court litigation between Patent Owner and Petitioner. Petitioner has submitted
`
`lists of terms to be construed (See Ex. 1004) and Patent Owner has submitted
`
`proposed claim constructions in the related Amazonlitigation (Ex. 1005). Patent
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`-12-
`
`EWS-006435
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`EWS-006435
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`
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`Owner’s statements and admissionsare relevant to the broadest reasonable
`
`interpretation of the claims. See 37 C.F.R. § 42.62 and F.R.E. 801(d)(2).
`
`Petitioner proposes to adopt the following constructions based on the
`
`reasons below andasset forth in Cherukuri Declaration Jf 35-48:
`
`Independent Claim Terms
`
`1.
`
`“verified web service”
`
`Outside the claims, this term only appears once in the ‘860 patent:
`
`“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
`
`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 namesare 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.” (‘860 Patent at 10:41-51, emphasis
`
`added.) There is no discussion of what is meant by “verified.”
`
`The ‘860 patent elsewhere talks about a “membership verification token.”
`
`(See, e.g., 3:52-4:5) Claim | refers to a “verified web service accountidentifier.”
`
`Grecia proposes “a web service accessible with an authenticated credential” (Ex.
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`-13-
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`EWS-006436
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`EWS-006436
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`
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`1005) and Petitioner believes a user name and passwordis an “authenticated
`
`credential.” Accordingly, Petitioner submits the broadest reasonable interpretation
`
`of a “verified web service” is any web service which verifies an identity, such as
`
`through a user name andpassword.
`
`2.
`
`“metadata of the digital content”
`
`Patent Ownerhastaken the position that “metadata of the digital content”
`
`does not require that the metadata be stored within the files comprising the digital
`
`content, but rather can be stored in a database wholly separate from the digital
`
`content files. While not agreeing with that construction in the District Court
`
`litigation, Petitioner, for the purposesofthis petition, submits the broadest
`
`reasonable interpretation of “metadata of the digital content” is Patent Owner’s
`
`proposedconstruction of data about the digital content (Ex. 1005).
`
`3.
`
`“two way data exchangesession”
`
`There is no definition in the ‘860 Patent, but the common understanding of
`
`this term is that data is sent in two directions, and would be sent in any manner.
`
`Petitioner submits the broadest reasonable interpretation of a “two way data
`
`exchange session” is an exchange ofdata.
`
`4.
`
`“redeemable instrument”
`
`This term is listed as an alternative in claims 1, 9, 11 and 21, and claim 21
`
`also specifies that “the verification token is handled by a user as a redeemable
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`~1|4-
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`EWS-006437
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`EWS-006437
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`
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`instrument.” The term “redeemable instrument” is only mentioned once outside
`
`the claims:
`
`‘Examples of the token include, and are not limited to, a
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`structured or random password,e-mail address associated with an e-
`
`commerce payment system used to make an authorization payment, or
`
`other redeemable instruments oftrade for access rights of digital
`
`media. Examples of e-commerce systems are PayPal, Amazon
`
`Payments, and other credit card services.” 8:45-51.
`
`The above makesit clear that “redeemable Instrument” includes a password,
`
`an email, or any other token or data. Patent Owner’s proposed construction also
`
`says it is redeemable for access to a membership (Ex. 1005). From the context in
`
`the ‘860 Patent, Petitioner submits the broadest reasonable interpretation of a
`
`“redeemable instrument” is any electronic data or token that can be usedfor
`
`access to digital media or a membership, such as a passwordor email.
`
`Dependent Claim Terms.
`
`5.
`
`“user access panel”
`
`This only appears in claim 24 andin the specification as quoted below under
`
`“customization module.” It is not defined and does not appearto be a term ofart.
`
`From the context, Petitioner submits the broadest reasonable interpretation of a
`
`“user access panel” is any software or interface that allows users to access data.
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`-15-
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`EWS-006438
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`EWS-006438
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`
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`6.
`
`“customization module”
`
`Claim 21 refers to a customization module in the preamble, but without a
`
`function description or further reference. This term is only used in claim 21, in
`
`claims 23 (customize tag) & 24 (customize user access panel), and in the spec. as
`
`follows:
`
`“Subsequently, the customization module 206 allowsthe user
`
`to customize the user access panelof the encrypted digital media.
`
`According to an embodiment of the present invention, the
`
`customization module 206 facilitates adding one or more of a
`
`banner, a logo, an image, an advertisement, a tag line, a header
`
`message and textual information to the user access panelofthe
`
`encrypted digital media.” 6: 26-33.
`
`Petitioner submits the broadest reasonable interpretation of a “customization
`
`module”is any software, firmware or hardware that allows adding or modifying
`
`data by a user or anyoneelse.
`
`7.
`
`“royalty scheme”
`
`This term is used in dependent claim 26: “wherein the verification token is
`
`connected to a royalty scheme.” Grecia does not propose a definition in Ex. 1005
`
`(claim 26 was not asserted v. Amazon). The only mention of royalty or royalties
`
`outside this claim is 9:48-10:2 of the ‘860 Patent, excerpts below (emphasis
`
`added):
`
`-16-
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`EWS-006439
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`EWS-006439
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`
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`“In the interest of providers of the apparatus delivering this
`
`invention, this document will teach a method of a HTTP PUT
`
`calculation
`
`scheme
`
`for
`
`automatic
`
`royalty billing
`
`and
`
`administration for the token element used in the invention. ...
`
`By changing the amount to $100 for every 1000 PUT requests,
`
`the apparatus provider is paid a $0.10 royalty for each token
`
`created.... As a novelty to the apparatus provider, if a content
`provider fails to pay royalties due, the DevPay hosting will
`automatically deny token accessto all related media products in
`
`distribution and restore this verification element when royalties
`
`are paid in full.” 9:48-10:2.
`
`Petitioner submits the broadest reasonable interpretation of a “royalty
`
`scheme”is any methodthat tracks royalties.
`
`8.
`
`“remote control operation”
`
`This term is used in claims 17 and 30, without any explanation of whatit
`
`does or is used for: “wherein a remote control operation exist.” The term “remote
`
`control” only appears in the claims. The term “remote”is used to refer to a remote
`
`server (accessed over a network, such as the Internet):
`
`“This is a desired feature for a service-style API that is not
`
`bound to a particular process or system and is available as a
`
`remote procedure call. ...For example, a web browser running
`
`on a user computer, cell phone, or other device can download a
`
`section of JavaScript or other code from a web server, and then
`
`-17-
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`EWS-006440
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`EWS-006440
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`
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`use this code to in turn interact with the API of a remote
`
`Internet server system as desired.” 10: 22-34.
`
`Petitioner submits the broadest reasonable interpretation of a “remote control
`
`operation” is any interaction with a remote computer, such as a command or data
`
`input.
`
`V.
`
`PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A
`REASONABLE LIKELIHOOD OF PREVAILING
`
`The references addressed below anticipate and/or render obviousthe claimed
`
`subject matter, and are corroborated by the opinion in the Cherukuri Declaration
`
`(Ex. 1010).
`
`A.
`
`GROUND 1: CLAIMS1-25 and 27-30 ARE UNPATENTABLE
`AS ANTICIPATED BY DEMELLO
`
`Claim 1. DeMello ‘953 describes a system for delivery of electronic books
`
`or other media (4:41-49). A purchaser can link a book to a “persona”so that it can
`
`be read on multiple user devices or shared with others whoare a part of the same
`
`persona. Multiple levels of security are provided, including “individualized” and
`
`“fully individualized,” with many options on credentials used to authenticate a
`
`user. Theuserfirst registers, or activates, different readers with an activation
`
`server.
`
`The user provides a user ID and password for a PASSPORT membership
`
`system, where the user has a PASSPORTID. Theactivation server authenticates
`
`-18-
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`EWS-006441
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`EWS-006441
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`
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`the user using the provided PASSPORTcredentials in a communication with the
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`PASSPORTservers (13:30-35). The PASSPORTID is associated with the
`
`purchaser’s persona. The activation server then obtains a hardware ID from the
`
`purchaser’s reader device (13:62-66). This information is then used to generate an
`
`“activation certificate” associated with the persona (13: 21-29).
`
`Whena user requests to purchase an e-book, the user can be requested to
`
`provide credit card information, as well as a user name and passwordfora retailer
`
`membership (11:1-8). When the user selects and purchases a bookataretailer, the
`
`retailer redirects the purchaserto a distribution center, including purchaser
`
`information such as the activation certificate (3:18-27). The redirection is done
`
`with a URLthat includes an “encrypted blob.” The encrypted blob is metadata- it
`
`includes, among other items, a Transaction ID, Book ID, User Name and
`
`PASSPORTID (16:1-40). DeMello also describes other metadata, the “eBook's
`
`title's meta-data,” (5;29-34) to which a purchaser name(obtained with the credit
`
`card information) can be added (26:18-23).
`
`DeMello showsall the elements of claims 1- 25 and 27-30 as described
`
`below in conjunction with the claim charts.
`
`[A — Preamble]. DeMello discloses a DRM system which authorizes access
`
`to content and contains the other limitations of the preamble, using a “cloud
`
`system”(defined in claim 25 as the Internet), with content encrypted (since the
`
`-19-
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`EWS-006442
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`EWS-006442
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`
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`claim says “or not,” this is not a limitation), with accessfor a plurality of
`
`processing devices. The claim chart below showsthe specific quotations for these
`
`limitations.
`
`
`Prior Art (emphasis added)
`Grecia 8,533,860
`(emphasis added)
`
` [A] 1. A method for
`
` DeMello 6,891,953 (filed 1-27-2000)
`
`
`authorizing access to
`digital content using a
`cloud system, the
`cloud system
`comprising connected
`modules in operation
`as one or more of a
`cloud computing or a
`cloud storage in
`connection with
`devices and users,
`wherein the digital
`contentis at least one
`of encrypted or not
`encrypted, the method
`facilitating access
`rights between a
`plurality of data
`processing devices,
`the method
`comprising:
`
`“A server architecturefor a digital rights management
`system that distributes andprotects rights in content.”
`Abstract, 1sentence.
`
`At least one of encrypted or not encrypted: “source
`sealed’ and “individually sealed” content is encrypted.
`(2:6-10.)
`
`A cloud system is used: “...communications over the wide
`area network 52, such as the Internet.” 8: 24-25.
`[Internet=cloud]
`
`Plurality of processing devices: “The PASSPORT object
`96 provides the required interfaces into the
`PASSPORT.TM. servers that authenticate the end-users
`using, for example, their hotmail accounts (or other
`PASSPORT credentials). In accordance with aspects of
`the present invention, this object advantageously
`associates the activation certificate with a persona,
`instead of a single PC, thus allowing each persona to
`utilize multiple readers to read level 5 titles.” 13: 17-24.
`
`[B] This element requires an access request (metadata read/write request)
`
`along with a verification token from a communications console (the user device).
`
`It is shown in 2 separate ways in DeMello.
`
`-20 -
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`EWS-006443
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`EWS-006443
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`
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`1. Reader already activated. In DeMello, where the user has already
`
`activated a reader, the retailer, upon a purchase request, directs the user to a
`
`fulfillment server with a HTTP request that includes an encrypted instruction with
`
`the purchaser’s name(for “individualized” security) or the activation certificate
`
`(“fully individualized’). See 2:1-30. The purchaser nameoractivation certificate
`
`are the verification token, which can be, from the list in element [B], a “credit
`
`card” (purchaser name on credit card) or a “redeemable instrumentoftrade.” See
`
`40:23-29. The server obtains the purchase name from the credit card, thus
`
`meeting this limitation (Id.). Also, a “redeemable instrument of trade” is defined
`
`in this Petition to include an email and equivalents (see claim construction ab
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