`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`DOCKET NO.: 098173–0966641
`Filed on behalf of Unified Patents Inc.
`By: Paul C. Haughey, Reg. No. 31,836
`Scott Kolassa, Reg. No. 55,337
`Kilpatrick Townsend & Stockton LLP
`Two Embarcadero Center, Eighth Floor
`San Francisco, CA 94111–3834
`Tel: (415) 576–0200
`Email: phaughey@kilpatricktownsend.com
`
`Jonathan Stroud, Reg. No. 72,518
`Unified Patents Inc.
`1875 Connecticut Av. NW, Floor 10
`Washington D.C., 20009
`Tel: (202) 805–8931
`Email: jonathan@unifiedpatents.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`WILLIAM GRECIA
`Patent Owner
`
`IPR2016–0789
`Patent 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
`
`i
`
`EWS-006815
`
`Early Warning Services 1047
`IPR of U.S. Pat. No. 8,887,308
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES ........................................................................ - 1 -
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party–in–Interest ...................................................................... - 1 -
`
`Related Matters ................................................................................. - 1 -
`
`Counsels ........................................................................................... - 2 -
`
`Service Information, Email, Hand Delivery, and Postal .................. - 2 -
`
`II.
`
`CERTIFICATION OF GROUNDS FOR STANDING ............................. - 2 -
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ............... - 3 -
`
`A.
`
`Prior Art Patents and Printed Publications ....................................... - 3 -
`
`1.
`
`2.
`
`3.
`
`4.
`
`U.S. Patent No. 6,891,953 (filed on June 27, 2000 and
`issued on May 10, 2005) (“DeMello” (EX1005)), which
`is prior art under 35 U.S.C. § 102(b). .................................... - 3 -
`
`U.S. Pub. No. 2008/0313264 (filed on Jun. 12, 2007 and
`published on Dec. 18, 2008) (“Pestoni” (EX1006)),
`which is prior art under 35 U.S.C. § 102(b). ......................... - 3 -
`
`U.S. Pat. 8,001,612, filed Aug. 12, 2005 and issued Aug.
`16, 2011 (“Wieder” (EX1007)), which is prior art under
`35 U.S.C. § 102(e). Wieder is used to show the claimed
`token database. ....................................................................... - 3 -
`
`U.S. Pat. 6,385,596 (filed Feb. 6, 1998 and issued May 7)
`(“Wiser” (EX1008)), which is prior art under 35 U.S.C. §
`102(b). Wiser is used to show the customization module
`and “royalty scheme” of claims 11, 16, 25 and 26. ............... - 4 -
`
`B.
`
`Grounds for Challenge ..................................................................... - 4 -
`
`IV. OVERVIEW OF THE ’555 PATENT ....................................................... - 4 -
`
`A.
`
`B.
`
`Priority Date of the ’555 Patent........................................................ - 4 -
`
`Summary of the ’555 Patent ............................................................. - 5 -
`
`i
`
`EWS-006816
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`C.
`
`D.
`
`Summary of Relevant Prosecution File History ............................ - 10 -
`
`Person of Ordinary Skill in the Art ................................................ - 11 -
`
`V.
`
`CLAIM CONSTRUCTION ..................................................................... - 11 -
`
`A.
`
`B.
`
`C.
`
`“verified web service” .................................................................... - 12 -
`
`“metadata of the encrypted digital media” ..................................... - 13 -
`
`“two way data exchange” ............................................................... - 13 -
`
`VI. PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A
`REASONABLE LIKELIHOOD OF PREVAILING ............................... - 14 -
`
`A. Ground 1: Claims 1–10, 12–15, and 17–24 are unpatentable as
`obvious over DeMello (EX1005) and Wieder (EX1007) in view
`of the admitted prior art. ................................................................. - 14 -
`
`B.
`
`Ground 2: Claims 1–10, 12–15, and 17–24 are unpatentable as
`obvious over Pestoni (EX1006) and Wieder (EX1007) in view
`of the admitted prior art. ................................................................. - 14 -
`
`C. Ground 3: Claims 11, 16, and 25-26 are unpatentable over
`DeMello (EX1005) in combination with Wieder (EX1007) and
`Wiser (EX1008) and the admitted prior art. ................................... - 52 -
`
`D. Ground 4: Claims 11, 16 and 25-26 are unpatentable over
`Pestoni (EX1006) and Wieder (EX1007) and the admitted prior
`art in combination with Wiser (EX1008). ...................................... - 52 -
`
`VII. CONCLUSION ......................................................................................... - 60 -
`
`ii
`
`EWS-006817
`
`

`

`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`
`
`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), and Ex. C
`
`Sony Network Entertainment Int’l v. Grecia, IPR2015–00422,
`Preliminary Response (PTAB Mar. 11, 2015)
`
`Notice of Allowability of U.S. Patent No. 8,402,555 to Grecia
`
`U.S. Patent No. 6,891,953 to DeMello et al., Prior Art under 35
`U.S.C. § 102(b)
`
`U.S. Pub. No. 20080313264 to Pestoni, Prior Art under 35
`U.S.C. § 102(b)
`
`U.S. Pat. 8,001,612 to Wieder, Prior Art under 35 U.S.C. §
`102(e)
`
`U.S. Pat. 6,385,596 to Wiser, Prior Art under 35 U.S.C. § 102(b)
`
`Declaration of Ravi S. Cherukuri & Exhibits A–D
`
`Unified Patents LLC Voluntary Interrogatories
`
`iii
`
`EWS-006818
`
`

`

`
`
`IPR2016–00789 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 Unified is the real
`
`party–in–interest, and further certifies that no other party exercised control or
`
`could exercise control over Unified’s participation in this proceeding, the filing of
`
`this petition, or the conduct of any ensuing trial. See EX1010, Unified Patents
`
`LLC Voluntary Interrogatories.
`
`B. Related Matters
`
`U.S. Patent No. 8,402,555 (“ ’555 Patent (EX1001)) is a parent of a
`
`continuation U.S. Patent No. 8,533,860 (“ ’860 Patent”), which has a continuation
`
`U.S. Patent No. 8,887,308 (“ ’308 Patent”), against which IPR petitions are being
`
`concurrently filed. On Dec. 6, 2013 Grecia sued Microsoft, Google, Sony Network
`
`Entertainment International and Apple for infringement of the ’860 Patent.
`
`Between Feb. 20, 2014 and Nov. 30, 2015, Grecia has sued the following for
`
`infringement of different combinations of the three patents: Adobe Systems,
`
`American Express, Visa, MasterCard, Charter Communications, Time Warner
`
`Cable, AT&T Services, DirecTV, WideOpenWest Finance, RCN Telecom
`
`Services, Network L.C.C., Charter Communications, Time Warner Cable,
`
`Comcast, DISH Network, Amazon.com, Samsung Telecommunications America
`
`and Vudu.
`
`- 1 -
`
`EWS-006819
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`A Petition for Inter Partes review of the ’860 Patent was filed by Sony Network
`
`Entertainment International LLC, IPR2015–00422, PTAB, December 14, 2014 and
`
`dismissed by request of the parties. Petitioner filed IPR2016-00600 against the
`
`’860 Patent on Feb. 17, 2016. Petitioner filed IPR2016-00602 against the ’308
`
`Patent on March 3, 2016.
`
`C. Counsels
`
`Lead Counsel for Petitioner is Paul C. Haughey (Reg. No. 31,836), of
`
`Kilpatrick Townsend & Stockton LLP. Back–up Counsel is Jonathan Stroud (Reg.
`
`No. 72,518), of Unified, and Scott E. Kolassa (Reg. No. 55,337), of Kilpatrick
`
`Townsend & Stockton LLP.
`
`D.
`
`Service Information, Email, Hand Delivery, and Postal
`
`Unified
`
`consents
`
`to
`
`electronic
`
`service
`
`phaughey@kilpatricktownsend.com,
`
`jonathan@unifiedpatents.com,
`
`at
`
`and
`
`SKolassa@kilpatricktownsend.com.
`
`II. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
`
`review is sought is available for inter partes review and that Petitioner is not
`
`barred or estopped from requesting and inter partes review challenging the patent
`
`claims on the grounds identified in this Petition.
`
`- 2 -
`
`EWS-006820
`
`

`

`
`
`IPR2016–00789 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)–(2), Petitioner challenges
`
`claims 1–26 of the ’555 Patent.
`
`A.
`
`Prior Art Patents and Printed Publications
`
`The following references are pertinent to the grounds of unpatentability
`
`explained below:1
`
`1.
`
`U.S. Patent No. 6,891,953 (filed on June 27, 2000 and issued on May 10,
`
`2005) (“DeMello” (EX1005)), which is prior art under 35 U.S.C. § 102(b).
`
`2.
`
`U.S. Pub. No. 2008/0313264 (filed on Jun. 12, 2007 and published on Dec.
`
`18, 2008) (“Pestoni” (EX1006)), which is prior art under 35 U.S.C. §
`
`102(b).
`
`3.
`
`U.S. Pat. 8,001,612, filed Aug. 12, 2005 and issued Aug. 16, 2011
`
`(“Wieder” (EX1007)), which is prior art under 35 U.S.C. § 102(e). Wieder
`
`is used to show the claimed token database.
`
`
`
`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.
`
`- 3 -
`
`EWS-006821
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`4.
`
`U.S. Pat. 6,385,596 (filed Feb. 6, 1998 and issued May 7) (“Wiser”
`
`(EX1008)), which is prior art under 35 U.S.C. § 102(b). Wiser is used to
`
`show the customization module and “royalty scheme” of claims 11, 16, 25
`
`and 26.
`
`B. Grounds for Challenge
`
`This Petition, supported by the declaration of Ravi S. Cherukuri (“Cherukuri
`
`Decl.” (EX1009)) requests cancellation of challenged claims 1–26 of the ’555
`
`Patent as unpatentable under 35 U.S.C. §103. Two main references are used, with
`
`additional references for dependent claims.
`
`IV. OVERVIEW OF THE ’555 PATENT
`A.
`Priority Date of the ’555 Patent
`
`The ’555 Patent is a continuation of Application No. 12/985,351, filed on
`
`Jan. 6, 2011, which is a continuation of Application No. 12/728,218, filed on Mar.
`
`21, 2010, now abandoned. In the 11–27–2012 response in the prosecution history
`
`of the ’555 Patent, Patent Owner claimed priority to his Provisional Application
`
`No. 61/303,292 (filed Feb. 10, 2010) to swear behind Baiya U.S. Pub. No.
`
`20110288946. Petitioner does not believe the ’555 Patent is entitled to the Feb. 10,
`
`2010 priority date, but assumes that is the effective date for the purposes of this
`
`petition since all the prior art is more than a year earlier than this date.
`
`- 4 -
`
`EWS-006822
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`B.
`
`Summary of the ’555 Patent
`
`The ’555 Patent is directed to Digital Rights Management (DRM). The prior
`
`art was alleged to tie media to a particular user or limited number of devices:
`
`“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 ….” (’555 Patent at
`2:67 – 3:4).
`“DRM schemes for e–books include embedding credit card
`information and other personal information inside the metadata
`area of a delivered file format and restricting the compatibility
`of the file with a limited number of reader devices and
`computer applications.” Id. at 2:18–22.
`
`The alleged innovation of the ’555 Patent is to obtain a membership
`
`identification reference (e.g., Facebook ID) from a website providing membership
`
`and write it into the metadata of the media. This allows anyone with the
`
`membership reference ID to access the media on any device. The claim elements
`
`of claim 1 and the other challenged claims correspond to the steps of Fig. 6 of the
`
`’555 Patent, copied below:
`
`- 5 -
`
`EWS-006823
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`
`
`Claim 1 of the ’555 Patent is simple but lengthy, and is summarized below
`
`with the letters corresponding to the elements in the claim charts below, and the
`
`numbers corresponding to Fig. 6 above:
`
`[A] Preamble: Authorizing media access for plural data processing devices
`
`(multiple user devices).
`
`[B] (602) Receive user request, with membership verification token (e.g.,
`
`Amazon password), for content access and branding. Patent Owner admits
`
`- 6 -
`
`EWS-006824
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`that corresponding steps B and C of the ’860 Patent are in the prior art (as
`
`discussed below).
`
`[C] (604) The verification token is authenticated.
`
`[D] (606) Establish a connection with user communication console (with
`
`GUI and API for a verified web service, e.g., Facebook)
`
`[E] (608) An identification reference (e.g., Facebook login) is requested
`
`from the user.
`
`[F] (610) The identification reference is received.
`
`[G] (612)The membership verification token and identification reference are
`
`written into the content metadata. Patent Owner admits the corresponding step in
`
`the ’860 Patent is in the prior art.
`
`With respect to the continuation ’860 Patent, the Patent Owner has
`
`suggested that the particular order set forth above is required, and that all
`
`corresponding 6 modules of Fig. 1 must be present and separate. See Sony Network
`
`Entertainment Int’l v. Grecia, IPR2015–00422 at 3–4, 17–18 (PTAB Mar. 11,
`
`2015) (Preliminary Response) (“Sony v. Grecia Preliminary Response” (EX1003)).
`
`However, the Provisional Application never mentioned the word “module” as used
`
`in the claims, and did not have the module diagram of Fig. 1. The “module” term
`
`was added to claim 12, and the order of the modules (e.g., first and second receipt
`
`- 7 -
`
`EWS-006825
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`modules in claim 12) and method steps (e.g., claim 1) is described in the ’555
`
`Patent as not limiting:
`
`“In this document, relational terms such as `first` and
`second`, and the like may be used solely to distinguish
`one entity or action from another entity or action without
`necessarily requiring or
`implying any actual such
`relationship or order between such entities or actions.”
`’555 Patent, 4:60–64.
`
`Fig. 3 of the ’555 Patent, copied below, shows an embodiment where a user
`
`obtains content using GUI 301 on the left, using a “verification token” that is
`
`authenticated (a “membership verification token” in the ’555 Patent claims,
`
`described in the application as having a list of options). This corresponds to the
`
`first two steps, 602 and 603, which are admitted prior art in the continuation ’860
`
`Patent. Note the same described system performs both steps. Then, the user uses
`
`GUI 307 on the right to contact a “verified web service” (e.g., Facebook) to verify
`
`the user using an electronic ID (e.g., Facebook login). The same system performs
`
`the last 3 steps.
`
`- 8 -
`
`EWS-006826
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`
`
`Petitioner notes that the term “excelsior enabler” as used in the specification
`
`simply means user. Patent Owner characterized it as follows: “authorized users
`
`(excelsior enablers).” June 12, 2012 response to office action for the ’555 Patent.
`
`The term “enabler” was also in the original claims of the ’555 Patent, but was
`
`replaced with “user.” “Excelsior” refers to the main, or first user: “[T]he excelsior
`
`enabler and secondary enablers defined comprises human beings or computerized
`
`mechanisms programmed to process steps of the invention as would normally be
`
`done manually by a human being.” ’555 Patent, 5:12–16.
`
`- 9 -
`
`EWS-006827
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`C.
`
`Summary of Relevant Prosecution File History
`
`The claims in the parent ’555 Patent were originally rejected as obvious
`
`under §103 U.S. Pre-Grant Publication Number 2011/0288946 to Baiya (“Baiya”)
`
`in view of U.S. Patent 7,526,650 to Wimmer (“Wimmer”). The Examiner’s
`
`reasons for allowance (EX1004) noted that Baiya and Wimmer taught the first and
`
`last elements of claim 1. Neither of them show a user’s membership used to brand
`
`digital content so it could be used on multiple devices. 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. Thus, the
`
`Examiner found no reference where a user’s membership was used to brand digital
`
`content so it could be used on multiple devices. This feature, however, is clearly
`
`present in the prior art references discussed herein.
`
`In the Certificate of Correction, the claim language “obtained from a verified
`
`web service” was changed to “related to a verified web service.”
`
`- 10 -
`
`EWS-006828
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`D.
`
`Person of Ordinary Skill in the Art
`
`One of ordinary skill in the art at time of the earliest claimed effective filing
`
`date of the ’555 Patent (Feb. 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. (See Cherukuri Decl. (EX1009), ¶¶ 28–32, 59–61.) The claims of the
`
`’555 Patent are directed 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 programs, generally. (Id., ¶ 22.)
`
`V. CLAIM CONSTRUCTION
`Claim terms of a patent in inter partes review are normally given the
`
`“broadest reasonable construction in light of the specification.” See 37 C.F.R. §
`
`42.100(b): see also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1279–81
`
`(Fed. Cir. 2015).
`
`The following discussion proposes constructions and support for those
`
`constructions. Any claim terms not included in the following discussion should be
`
`given their ordinary meaning in light of the specification, as commonly understood
`
`by those of ordinary skill in the art. The broadest reasonable interpretation of a
`
`claim term may be the same as or broader than the construction under the standard
`
`set forth in Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005), but it cannot be
`
`- 11 -
`
`EWS-006829
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`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 of whether the terms are interpreted under the Phillips standard or the
`
`“broadest reasonable interpretation” standard.
`
`There have been no claim construction orders yet in the District Court
`
`litigations involving the ’555 Patent. There has been a joint claim construction
`
`statement by Patent Owner and Amazon. (See Grecia v. Amazon.com, No. 2:14–
`
`cv–00530 (W.D. Wash. Dec. 22, 2014) (Joint claim construction statement by
`
`Patent Owner and Amazon), and Ex. C (“Grecia v. Amazon.com Claim
`
`Construction” (EX1002)); see also 37 C.F.R. § 42.62 and F.R.E. 801(d)(2). See
`
`also Cherukuri Decl. (EX1009) at ¶¶ 43–55.
`
`A.
`
` “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 …. Other verified web services in which real member
`names are required such as the LinkedIn API and the PayPal
`API …” (’555 Patent at 10:42–51, emphasis added.)
`
`In the Grecia v. Amazon litigation, Patent Owner proposed “a web service
`
`accessible with an authenticated credential” and Amazon proposed “a web service
`
`- 12 -
`
`EWS-006830
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`that is used to authenticate the identity of a user or device.” See Grecia v.
`
`Amazon.com Claim Construction (EX1002), Ex. C, p. 16. The Patent Owner term
`
`of an “authenticated credential” does not appear in the ’860 Patent and the identical
`
`specification of the continuation ’308 Patent, and the example is a Facebook login
`
`name and password to authenticate the user, not authenticate the credential. Thus,
`
`the Amazon proposal is correct: the proper construction is any web service that is
`
`used to authenticate the identity of a user or a device, or, in other words, any web
`
`service which verifies an identity, such as through a user name and password.
`
`B.
`
`“metadata of the encrypted digital media”
`
`In the Grecia v. Amazon litigation, Patent Owner proposed “data about the
`
`digital content” and Amazon proposed “data that describes the digital content, in
`
`the same media file as the digital content.” Id. (EX1002), Ex. C, p. 1. Petitioner
`
`submits it is well known that metadata doesn’t just describe the digital content, and
`
`thus Amazon’s construction is too narrow. Also, meta data is not necessarily in the
`
`same media file. See Cherukuri Decl. ¶50. Petitioner, for the purposes of this
`
`petition, submits the construction is data about the digital media.
`
`C.
`
`“two way data exchange”
`
`In the Grecia v. Amazon litigation related to the continuation ’860 Patent, a
`
`similar term including “session” was construed (“two way data exchange session”).
`
`Patent Owner proposed “requesting the at least one identification reference from
`
`- 13 -
`
`EWS-006831
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`the at least one communications console and receiving the at least one
`
`identification reference from the at least one communications console.” Amazon
`
`proposed “transfer of information from a device to a server and from the server to
`
`the device.” Grecia v. Amazon.com (EX1002), Ex. C, p. 19. The Patent Owner
`
`proposal adds in other limitations from the claim and is thus too detailed, and
`
`Amazon adds a server and device limitation. In any event, without the term
`
`“session,” the plain meaning appears clear. Petitioner submits the construction is
`
`an exchange of data.
`
`VI. PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A
`REASONABLE LIKELIHOOD OF PREVAILING
`
`The references addressed below anticipate and/or render obvious the claimed
`
`subject matter, and are corroborated by the opinion in the Cherukuri Decl.
`
`(EX1009).
`
`A. Ground 1: Claims 1–10, 12–15, and 17–24 are unpatentable as obvious
`over DeMello (EX1005) and Wieder (EX1007) in view of the admitted
`prior art.
`
`Grounds 1 and 2 are discussed together below in order use the same claim
`
`charts and fit within the allowed page limits. Only independent claim 1 is
`
`separately discussed.
`
`B. Ground 2: Claims 1–10, 12–15, and 17–24 are unpatentable as obvious
`over Pestoni (EX1006) and Wieder (EX1007) in view of the admitted
`prior art.
`
`- 14 -
`
`EWS-006832
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`Claim 1–DeMello. DeMello describes a system for delivery of electronic books or
`
`other media. Id. at 4:41–49. A purchaser can link a book to a “persona” so that it
`
`can be read on multiple user devices (readers) or shared with others associated
`
`withthe same persona. The user provides PASSPORT credentials (a user ID and a
`
`password – PASSPORT is Microsoft’s single sign–on service). An activation
`
`server authenticates the user using the PASSPORT credentials in communication
`
`with the PASSPORT servers. The PASSPORT ID is associated with the
`
`purchaser’s persona and written to an activation certificate. Id. at 13: 21–35.
`
`
`
`As shown in Fig. 4 of DeMello above, the user requests content at a retail
`
`site 71 on the left, and there is “user authentication,” as noted below box 72. As
`
`described below, user authentication can be performed by establishing a
`
`- 15 -
`
`EWS-006833
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`membership using authentication credentials
`
`(e.g., Amazon.com
`
`log–on
`
`credentials), which is a verification token. A separate HTTPS connection 70 on
`
`the right is used to establish a connection with an Activation Site 75, where a
`
`user’s PASSPORT ID is used to verify the user and brand the metadata of the
`
`content.
`
`[A] – Preamble. DeMello discloses a DRM system which monitors access to
`
`encrypted content and facilitates interoperability between a plurality of processing
`
`devices. The claim chart below shows the specific language from DeMello for
`
`these limitations.
`
`’555 Patent
`(emphasis
`added)
`[A] 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:
`
`Prior Art (emphasis added)
`
`DeMello (EX1005)
`“A server architecture for a digital rights management
`system that distributes and protects rights in content.” Id. at
`Abstract, ll. 1–2.
`
`An encrypted digital media: “ “source sealed” and
`“individually sealed” content is encrypted.” Id. at 2:6–10.
`
`Facilitating interoperability between a plurality of data
`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.” Id. at 13:17–24.
`
`- 16 -
`
`EWS-006834
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`“activation ‘quotas’ that allow users to activate readers on
`multiple devices … as well as allow them to activate new
`devices as they upgrade their hardware, reformat their
`hard disks, etc. Id. at 25:29–36.
`
`[B] This element (chart below) requires an encrypted digital media access
`
`branding request (which eventually results in a metadata read/write) along with a
`
`membership verification token [this was alleged vs. the Amazon Kindle logon, for
`
`example] from a communications console (the user device). Patent Owner admits
`
`the corresponding element in the continuation ’860 Patent, and the corresponding
`
`following element [C] are shown in the prior art:
`
`“…communicating access rights over the Internet to a
`license server–the first and second steps of method claim
`1 in the ‘860 patent–was well known in the digital rights
`management field.”
` Sony v. Grecia Preliminary
`Response at p. 14 (EX1003). See also p. 6, lines 6–7:
`“Clearly, many prior art systems taught the verification
`of a token through a GUI interface.”
`
`Element [B] is nearly identical to the admitted prior art elements of the ’860
`
`Patent, except a “membership” verification token is used instead of the list of
`
`possible tokens in the ’860 Patent. That list includes items in claim 2 describing
`
`types of membership tokens, such as a password or e–mail address. This claim
`
`also uses “branding” instead of write, which means the same thing. Also, another
`
`difference is that the last part of this element says “the request comprising a
`
`- 17 -
`
`EWS-006835
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`membership verification token provided by a first user, corresponding to the
`
`encrypted digital media.” This clearly means the request corresponds to the digital
`
`media, since the membership verification token is not related to the media until the
`
`branding is completed.
`
`DeMello teaches “user authentication” and establishing a membership
`
`relationship with a retailer (left of Fig. 4), which inherently would include
`
`providing a token, such as a retailer password and/or email (e.g., Amazon log–on
`
`credentials). User authentication and establishing a membership are obvious in
`
`view of the admitted prior art. The admitted prior art steps are described in the
`
`’555 Patent as verifying membership to a site to buy content, and DeMello recites
`
`establishing such a membership relationship. It would be obvious to use the
`
`verification token of the admitted prior art to establish a membership relationship.
`
`See Cherukuri Decl. (EX1009) ¶74 and Ex. C.
`
`[B] 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 meta data of the
`encrypted digital media, the
`request comprising a
`
`The corresponding element in the ’860 Patent is
`admitted prior art.
`
`DeMello (EX1005) – Retail site (Fig. 4)
`
`“Bookstore servers 72 may communicate with
`users via web browsing software (e.g., by
`providing web pages for viewing with a
`MICROSOFT INTERNET EXPLORER browser
`or a NETSCAPE NAVIGATOR browser).
`Through this communication [access request],
`bookstore servers 72 may allow users to shop for
`
`- 18 -
`
`EWS-006836
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`membership
`verification token provided
`by a first user, corresponding
`to the encrypted digital
`media;
`
`
`eBook titles, establish their membership
`relationship with the retailer [verification token],
`pay for their transactions, and access proof–of
`purchase pages (serve–side receipts).” Id. at 9:9–
`16.
`
`[C] As described above, the corresponding element in the ’860 Patent was
`
`also admitted by Patent Owner to be in the prior art. The only differences is a
`
`particular (membership) token is recited, and a token database is recited, which is
`
`necessary to authenticate any token. DeMello shows authenticating the username
`
`and other credentials (verification token) of this element as described in the chart
`
`below. The authentication can be of the credit card or membership information by
`
`the retail site (e.g., Amazon log–on). It is inherent that a database is used for such
`
`an authentication. These all correspond to the admitted prior art.
`
`Wieder (EX1007) describes a “usage–rights repository” 24 (Wieder Fig. 1)
`
`for storing “usage–rights tokens” (a token database) used for validation of user
`
`ownership by different “experience providers” that allow custom playlists (e.g.,
`
`Apple iTunes, Microsoft Windows Media). Wieder, 4:46–5:39; 8:24–28; 15:1–4.
`
`The database stores the tokens which include “Token–Owner,” “Usage–Rights,”
`
`and “Purchase–Record.” Id. at Fig. 13, 7:30–31. It is inherent in DeMello that the
`
`credit card data are authenticated using a database of membership records of
`
`- 19 -
`
`EWS-006837
`
`

`

`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`customers of an online book store. It is obvious to combine DeMello with Wieder,
`
`which shows authenticating a “Purchase–Record” (verification token).
`
`Because Wieder and DeMello both relate to Digital Rights Management, and
`
`both relate to supporting multiple users or user devices, it would be obvious to
`
`combine Wieder with DeMello to implement a database of user personas associated
`
`with multiple user readers. Also, DeMello specifically refers to “credit card
`
`validation” and “requiring the users to authenticate themselves,” thus referencing
`
`the many standard ways of doing this, of which Wieder is just one example.
`
`Because DeMello describes linking content to a PASSPORT ID instead of a device
`
`ID, it would be obvious to add the PASSPORT ID to the token contents shown in
`
`Fig. 13 of Wieder, thus providing a database of PASSPORT IDs. Additionally, it
`
`would be obvious to include in the record of the database other information, such
`
`as the username and other credentials identified in DeMello. The Wieder database
`
`is also described as including other information, and it would be obvious to include
`
`the other data of DeMello, and it would be obvious to do this in a single database
`
`or multiple databases. Wieder thus shows more details of actions specifically
`
`described in DeMello. See Cherukuri Decl. (EX1009) ¶¶ 75-85.
`
`[C]
`authenticating
`the
`membership
`
`The corresponding element in the ’860 Patent is admitted
`prior art.
`
`DeMello (EX1005) – Retail site authentication:
`
`- 20 -
`
`EWS-006838
`
`

`

`verification
`token, the
`authentication
`being
`performed in
`connection
`with a
`token
`database;
`
`
`
`
`
`IPR2016–00789 Petition
`U.S. Patent 8,402,555
`
`
`
`“Aft