Apple Inc.v.ContentGuard Holdings, Inc.

Patent Trial and Appeal Board

Jun 29, 2015

10956070 (P.T.A.B. Jun. 29, 2015)

Trials@uspto.gov Paper 9
571-272-7822 Date: June 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE, INC.,
Petitioner,

v.

CONTENTGUARD HOLDINGS, INC.,
Patent Owner.

Case IPR2015-00357
Patent 8,001,053 B2

Before KARL D. EASTHOM, GLENN J. PERRY, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a) and 37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner, Apple, Inc., filed a Petition to institute an inter partes review of
claims 1–5, 8, 9, 15–19, 22, 23, 26–30, 33, and 34 (the “challenged claims”) of
U.S. Patent No. 8,001,053 B2 (the “’053 patent”). Paper 1, “Pet.” Patent Owner,
ContentGuard Holdings, Inc., filed a Preliminary Response pursuant to 35 U.S.C.
§ 313. Paper 8, “Prelim. Resp.”
We have authority to determine whether to institute an inter partes review.
35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). We deny the Petition.
A. The Asserted Grounds
Petitioner identifies the following as asserted grounds of unpatentability:
References Basis Claims Challenged
England (Ex. 1009)1 § 103(a)2 1–5, 8, 9, 15–19, 22, 23,
26–30, 33, and 34
England and Gruse
(Ex. 1008)3
§ 103(a) 1–5, 8, 9, 15–19, 22, 23,
26–30, 33, and 34
England and Wiggins
(Ex. 1011)4
§ 103(a) 1–5, 8, 9, 15–19, 22, 23,
26–30, 33, and 34
England, Gruse, and
Wiggins
§ 103(a) 1–5, 8, 9, 15–19, 22, 23,
26–30, 33, and 34

1 U.S. Patent No. 6,327,652 B1 (Dec. 4, 2001).
2 The Leahy-Smith America Invents Act (“AIA”), Pub.L. No. 112-29, took effect
on March 18, 2013. Because the application from which the ’053 patent issued
was filed before that date, our citations to Title 35 are to its pre-AIA version.
3 U.S. Patent No. 6,389,538 B1 (May 14, 2002).
4 U.S. Patent No. 5,717,604 (Feb. 10, 1998).
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Pet. 2–3; see also Pet. 43 (“Claims 1–5, 8, 9, 15–19, 22, 23, 26–30, 33 and 34
would have been obvious based on England (Ex. 1009) alone, or in view of Gruse
(Ex. 1008) and/or Wiggins (Ex. 1011).” (capitalization and underlining removed)).
B. The ’053 Patent
The ’053 patent generally relates to systems and methods for digital rights
management (“DRM”). Ex. 1005, 1:20–23, 1:48.
C. The Challenged Claims
The challenged claims are 1–5, 8, 9, 15–19, 22, 23, 26–30, 33, and 34.
Pet. 3. Claim 1 is illustrative and reproduced below:
1. A method for sharing rights adapted to be associated with
an item, the method comprising:
specifying, in a first license, using a processor, at least one
usage right and at least one meta-right for the item, wherein the usage
right and the meta-right include at least one right that is shared among
one or more users or devices;
defining, via the at least one usage right, using a processor, a
manner of use selected from a plurality of permitted manners of use
for the item;
defining, via the at least one meta-right, using a processor, a
manner of rights creation for the item, wherein said at least one meta-
right is enforceable by a repository and allows said one or more users
or devices to create new rights;
associating, using a processor, at least one state variable with
the at least one right in the first license, wherein the at least one state
variable identifies a location where a state of rights is tracked;
generating, in a second license, using a processor, one or more
rights based on the meta-right in the first license, wherein the one or
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more rights in the second license includes at least one right that is
shared among one or more users or devices; and
associating at least one state variable with the at least one right
that is shared in the second license, wherein the at least one state
variable that is associated with the second license is based on the at
least one state variable that is associated with the first license.
II. ANALYSIS
A. Failure to Identify Related Matters
A petition for an inter partes review “may be considered only if,” among
other things, “the petition provides such other information as the Director may
require by regulation.” 35 U.S.C. § 312(a)(4). In that regard, the Director requires
a petitioner to include certain mandatory notices with its petition. 37 C.F.R.
§ 42.8(a)(1). The mandatory notices include a requirement to “[i]dentify any other
judicial or administrative matter that would affect, or be affected by, a decision in
the proceeding.” 37 C.F.R. § 42.8(b)(2) (titled “Related matters”). “Judicial
matters include actions involving the patent in federal court. Administrative
matters include every application and patent claiming, or which may claim, the
benefit of the priority of the filing date of the party’s involved patent or application
as well as any ex parte and inter partes reexaminations for an involved patent.”
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012).
Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner identifies only the following
related matters: ContentGuard Holdings, Inc. v. Amazon.com, Inc., Case No. 2:13-
cv-01112 (E.D. Tex.) (the “Texas lawsuit against Apple”); Cases IPR2015-00355,
-00356, and -00358 (involving the ’053 patent); and Cases IPR2015-00351,
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-00352, -00353, and -00354 (involving related U.S. Patent No. 7,774,280 B2 (“the
’280 patent”)). Pet. 2.
According to Patent Owner, however, there are numerous additional related
matters: Google Inc. v. ContentGuard Holdings, Inc., Case No. 14-cv-0498 (N.D.
Cal.) (the “California lawsuit”); ContentGuard Holdings, Inc. v. Google Inc., Case
No. 14-cv-0061 (E.D. Tex.) (the “Texas lawsuit against Google”); pending U.S.
Patent Application No. 13/162,826 (“the ’826 application”), which is a
continuation of the application from which the ’053 patent issued; Case CBM2015-
00040 (involving the ’280 patent); and Case CBM2015-00043 (involving the ’053
patent).5 Paper 7, 1–2.
Patent Owner is correct that the California lawsuit is a related matter, as it
involves a declaratory judgment action for non-infringement of the ’053 patent.
Ex. 3001 ¶¶ 48–55. The Texas lawsuit against Google also is a related matter, as it
involves an assertion of infringement of the ’053 patent. Ex. 3002 ¶¶ 44–45.
Thus, Petitioner should have identified both of those lawsuits in order to have its
Petition considered. 35 U.S.C. § 312(a)(4); 37 C.F.R. § 42.8(b)(2). Although it is
possible that Petitioner was not aware of the California lawsuit, it was informed of
the Texas lawsuit against Google. See Ex. 3003 (Order denying Patent Owner’s
motion for consolidation of the Texas lawsuits, said order entered in the Texas
lawsuit against Apple).

5 The petition in CBM2015-00043 was filed December 11, 2014, and, thus, did not
exist when the instant Petition was filed on December 10, 2014. The petition in
CBM2015-00040 was filed December 9, 2014, and, thus, we do not presume
Petitioner was aware of it when it filed its Petition the next day.
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Patent Owner is also correct that the ’826 application is a related matter.
The ’826 application was published on October 6, 2011, and it is listed in the child
continuity data field in the Public PAIR search report of the ’053 patent. Thus,
Petitioner should have been aware of it and identified it in the Petition.
Additionally, Petitioner’s declarant, Atul Prakash, Ph.D., cites several PTAB
decisions involving patents belonging to Patent Owner, as affecting the
construction of claims of the ’053 patent. See Ex. 1003 ¶ 284 (citing ZTE Corp. v.
ContentGuard Holdings Inc., Case IPR2013-00139, Paper 57 (PTAB June 26,
2014); ZTE Corp. v. ContentGuard Holdings Inc., Case IPR2013-00133, Paper 61
(PTAB July 1, 2014); ZTE Corp. v. ContentGuard Holdings Inc., Case IPR2013-
00138, Paper 57 (PTAB July 1, 2014)); see also Ex. 1003 ¶ 285 (citing ZTE Corp.
v. ContentGuard Holdings Inc., Case IPR2013-00133, Paper 15 (PTAB July 1,
2013)). Yet, the Petition does not identify, as related matters, the inter partes
reviews in which those decisions were rendered. Pet. 2.
The Petition’s failure to comply with 37 C.F.R. § 42.8(b)(2), and thus also
35 U.S.C. § 312(a)(4), could be grounds for denial of the Petition. 35 U.S.C.
§ 312(a)(4); cf. Reflectix, Inc., v. Promethian Insulation Tech. LLC, Case IPR2015-
00039, 2015 WL 1927414, at *9 (PTAB Apr. 24, 2015) (denying institution
because petition did not comply with parallel requirement, under 35 U.S.C.
§ 312(a)(2), to identify all real parties-in-interest). It is unnecessary to determine
whether to deny the Petition on that basis, however, because the Petition is denied
for additional reasons, as explained below.
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B. No Reasonable Likelihood of Prevailing
A petition must show how the challenged claims are unpatentable under the
statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). All of Petitioner’s
grounds of unpatentability challenge the claims as obvious under 35 U.S.C.
§ 103(a).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject matter pertains. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations, including: (1) the scope
and content of the prior art, (2) any differences between the claimed subject matter
and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-
called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966).
There is not a reasonable likelihood that Petitioner would prevail in showing
the subject matter of any of the challenged claims is obvious over any of the
grounds identified in the Petition.
First, the Petition does not identify sufficiently the differences between the
claimed invention and the prior art, or how the prior art teachings are to be
modified or combined, if at all. Pet. 43–58; see Graham, 383 U.S. at 17–18
(obviousness inquiry is based on factual inquiries including the difference between
the claimed invention and the prior art). Indeed, it is difficult to understand the
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distinctions (if any) between the asserted grounds, because they are lumped
together. Id. For example, the Petition states the following:
To the person of ordinary skill, England, by itself or in
view of other prior art, suggests a range of possible
implementations of its scheme, particularly in view of the
knowledge and experience the person of skill would have
possessed in 2001 or before. As a consequence, England,
alone or with other prior art, would have rendered
obvious variations of the processes, systems and devices
it expressly describes including variations such as the
following: (i) system components with varying security
capabilities, including those capable of functioning as
“trusted systems”; (ii) “at least one state variable”
specifying the location of a computer (e.g., a remote
server) where a state of rights is tracked, as opposed to
the location in a data structure where the right is being
tracked; (iii) the “at least one state variable” associated
with the shared right in the second license being the same
state variable used in connection with that right in the
first license; or (iv) the values of states in “shared” state
variables being inherited from another state variable.
Each of these types of variations would have been
considered obvious design or implementation choices
based on the guidance in England in view of what would
have been known to the person of ordinary skill and other
prior art, e.g., either based on the guidance within
England alone to the person of ordinary skill, or when
England is considered with other prior art (i.e., in view of
either Gruse (Ex. 1008) or Wiggins (Ex. 1011) alone, or
in view of Gruse, and further in view of Wiggins). See
Ex. 1003 at ¶¶ 926–929.
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Pet. 43–44. 6
The Petition also lacks an articulated or apparent reason supported by “some
rationale underpinning” to modify/combine the purportedly known elements into
the fashion claimed by the ’053 patent. See KSR, 550 U.S. at 418 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Instead, and as demonstrated in the
block quote above, Petitioner leaves it to the Board to ascertain what gaps to fill,
and then presents vague statements regarding what the prior art suggests, referring
to “a range of possible implementations,” “obvious variations,” and “obvious
design or implementation choices.” Pet. 43–44.
A reason to modify/combine the prior art is not the only thing unclear in the
Petition. Also not clear is any particular modification/combination of the prior art,
let alone how such modification/combination would have rendered obvious any of
the challenged claims. Indeed, the Petition lacks a meaningful, if any, discussion
showing how the prior art renders obvious any particular claim being challenged.
Petitioner’s citation in the block quote above of four paragraphs from Dr.
Prakash’s declaration (Ex. 1003 ¶¶ 926–929) does not help Petitioner show a
reasonable likelihood of prevailing.

6 The Petition does not identify the differences between England and the claimed
inventions. Yet, the Petition also does not show that there are no differences. The
Petition fails to show, let alone assert, anticipation at least because the Petition
does not show that England discloses all the limitations of the challenged claims,
as arranged in the challenged claims. See Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1370 (Fed. Cir. 2008) (holding that an anticipatory reference must show
all limitations arranged or combined in the same way as recited in the claims).
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In paragraph 926, Dr. Prakash cites, as evidence, over 100 other paragraphs
of his own declaration. Ex. 1003 ¶ 926 (“As I explained above, the core concepts
of claims 1, 15, and 26 were all well-known to persons of ordinary skill in the art.
See supra ¶¶ 129-154 (usage rights), 156-185 (meta-rights), 188-210 (state
variables), 211-231 (sharing). . . . The claims do not include any new concepts
or novel ideas. See supra ¶¶ 819-824.”). Board rules require specific evidentiary
citations. 37 C.F.R. § 42.104(b)(5). Board rules also prohibit incorporation by
reference, such as incorporating over 100 paragraphs of a declaration into a
petition. 37 C.F.R. § 42.6(a)(3).
In paragraph 927, Dr. Prakash echoes similarly vague statements from the
Petition regarding what the prior art suggests, referring to “England guidance to
implement the England scheme in a variety of ways.” Ex. 1003 ¶ 927. In the
remainder of that paragraph, Dr. Prakash fails to elucidate the distinctions (if any)
between the asserted grounds, stating:
If claims 1, 15, and 26 are found requiring particular
implementations or configurations that [are] not
expressly described in England, those configurations or
implementations would have been considered obvious
implementation or design choices based on the guidance
in England, the knowledge the person of ordinary skill
would possess, and additional guidance found in either
Gruse or Wiggins.
Id.
In paragraphs 928 and 929, Dr. Prakash again cites to numerous paragraphs
elsewhere in the same declaration. Id. ¶¶ 928–929 (citing id. ¶¶ 573–590, 604–
612, 619–641, 645–653). The Petition’s citation, whether directly or indirectly, to
voluminous portions of the declaration runs afoul of 37 C.F.R. § 42.104(b)(5),
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which requires identification of “specific portions of the evidence that support the
challenge.” Id.
A petition must show how the challenged claims are unpatentable under the
statutory ground(s) it identifies. 37 C.F.R. § 42.104(b)(4). The instant Petition
does not do this, and there is not a reasonable likelihood that Petitioner would
prevail with respect to any of the challenged claims on any of the challenged
grounds. See 35 U.S.C. § 314(a).
C. Additional Considerations
The Director requires us to apply our trial rules “to secure the just, speedy,
and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1. No such
proceeding could be secured with the record presented to us by Petitioner.
Dr. Prakash’s declaration is an omnibus declaration used by Petitioner in
eight separate Petitions, collectively challenging both the ’053 patent and the
related ’280 patent with four sets of prior art each.7 The declaration is 342 pages,
includes voluminous information not relevant to this Petition, and, as discussed
above, contains numerous self-citations.
The Petition includes sixty-one exhibits totaling over 30,000 pages. See
Exs. 1001–1061. Petitioner asserts that all exhibits are relied upon in the Petition.
See Pet. “Attachment B” (subtitled “List of Evidence and Exhibits Relied Upon in
Petition”). Fifty-one of the exhibits, however, are not cited in the Petition.
Although some of those fifty-one exhibits are cited in Dr. Prakash’s declaration,

7 Cases IPR2015-00351 through -00358.
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several of them are not. Also, mere citation of an exhibit in Dr. Prakash’s
declaration should not be equated with being relied upon in the Petition, because
the declaration is being offered in seven other IPR petitions, each of which
challenges a different patent and/or asserts a different set of prior art.
The Office Patent Trial Practice Guide cautions that petitioners should
“avoid submitting a repository of all the information that a judge could possibly
consider, and instead focus on concise, well-organized, easy-to-follow arguments
supported by readily identifiable evidence of record.” 77 Fed. Reg. at 48,763. The
Petition widely misses that mark.
III. CONCLUSION
The Petition fails to show there is a reasonable likelihood that Petitioner
would prevail with respect to at least one of the claims challenged in the Petition.
See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108.
IV. ORDER
Accordingly, it is ORDERED that the Petition is denied, and no trial is
instituted.
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Petitioner:

Jeffrey Kushan
Michael Franzinger
SIDLEY AUSTIN LLP
jkushan@sidley.com
IPRnotices@sidley.com

Patent Owner:

Timothy P. Maloney
Nicolas Peters
FITCH, EVEN, TABIN & FLANNERY LLP
tim@fitcheven.com
ntpete@fitcheven.com

Robert Cote
McKOOL SMITH, P.C.
rcote@mckoolsmith.com