Apple Inc.v.Contentguard Holdings, Inc.

Patent Trial and Appeal Board

Jun 29, 2015

13585408 (P.T.A.B. Jun. 29, 2015)

Trials@uspto.gov Paper No. 9
571.272.7822 Filed: 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 IPR2015-00450
Patent 8,393,007 B2
____________

Before BARBARA A. PARVIS, KERRY BEGLEY, and
KEVIN W. CHERRY, Administrative Patent Judges.

BEGLEY, Administrative Patent Judge.

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

Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
review of claims 1–15 of U.S. Patent No. 8,393,007 B2 (Ex. 1007, “the ’007
patent”). ContentGuard Holdings, Inc. (“Patent Owner”) filed a Preliminary
Response to the Petition. Paper 8 (“Prelim. Resp.”).
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Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
instituted unless “the information presented in the petition . . . and any
response . . . shows that there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.” Having considered the Petition and the Preliminary Response, we
determine that there is not a reasonable likelihood that Petitioner would
prevail in establishing that any of the challenged claims of the ’007 patent
are unpatentable. We deny institution of inter partes review.
I. BACKGROUND
A. THE ’007 PATENT
The ’007 patent relates to “distribution and usage rights enforcement
for digitally encoded works.” Ex. 1007, 1:26–27. According to the
’007 patent, the ease with which electronically published works can be
reproduced and distributed is a major concern and presents a fundamental
issue: “how to prevent the unauthorized and unaccounted distribution or
usage of electronically published materials.” Id. at 1:31–45.
The ’007 patent explains several known techniques for preventing
such “unauthorized and unaccounted distribution or usage,” including
preventing unauthorized copying and transmission as well as distributing
software that requires a “key” to enable its use. Id. at 1:63–2:18. These
techniques, however, operate by preventing subsequent distribution of a
work and “sacrifice[e] the potential for subsequent revenue bearing uses.”
Id. at 3:4–8. The ’007 patent notes that it would be desirable for the owner
of a digital work to have flexibility in how the work may be distributed. Id.
at 3:12–14. For example, it may be desirable to allow lending of a
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purchased work to expose the work to potential buyers, creation of a
derivative work for a fee, or copying of the work for a fee. Id. at 3:8–12.
The ’007 patent purports to solve these problems by permanently
attaching usage rights to digital works and by placing digital works in
repositories. Id. at 6:24–44. Repositories are trusted systems, which support
usage rights. Id. at 6:24–44, 11:63–12:63, 49:63–67.
Claims 1, 6, and 11 of the ’007 patent are independent claims.
Claim 1 is illustrative of the claimed subject matter:
1. A computer-implemented method of distributing digital
content to at least one recipient computing device to be
rendered by the at least one recipient computing device in
accordance with usage rights information, the method
comprising:
determining, by at least one sending computing device, if the
at least one recipient computing device is trusted to
receive the digital content from the at least one sending
computing device;
sending the digital content, by the at least one sending
computing device, to the at least one recipient computing
device only if the at least one recipient computing device
has been determined to be trusted to receive the digital
content from the at least one sending computing device;
and
sending usage rights information indicating how the digital
content may be rendered by the at least one recipient
computing device, the usage rights information being
enforceable by the at least on recipient computing device.
Id. at 50:31–49.
B. ASSERTED PRIOR ART
The Petition relies upon the following asserted prior art references, as
well as the supporting Declaration of Alan Sherman, Ph.D. (Ex. 1013, “the
Dr. Sherman Declaration”):
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U.S. Patent No. 6,135,646 (filed Feb. 28, 1997)1 (issued Oct. 24,
2000) (Ex. 1018, “Kahn”);
R.J. Linn, Copyright and the Information Services in the Context of
the National Research and Education Network, in 1 PROCEEDINGS:
TECHNOLOGICAL STRATEGIES FOR PROTECTING INTELLECTUAL PROPERTY IN
THE NETWORKED MULTIMEDIA ENVIRONMENT 9–20 (1994) (Ex. 1058,
“Linn”); and
J.D. Tygar & Bennet Yee, Dyad: A System for Using Physically
Secure Coprocessors, in 1 PROCEEDINGS: TECHNOLOGICAL STRATEGIES FOR
PROTECTING INTELLECTUAL PROPERTY IN THE NETWORKED MULTIMEDIA
ENVIRONMENT 121–52 (1994) (Ex. 1057, “Dyad”).
C. ASSERTED GROUNDS OF UNPATENTABILITY
Petitioner challenges claims 1–15 of the ’007 patent on the following
grounds. Pet. 3.
Challenged Claims Basis References
1–15 § 103 Kahn and Linn
1–15 § 103 Kahn, Linn, and Dyad

II. ANALYSIS
A. ASSERTED GROUND BASED ON KAHN AND LINN
1. Non-Compliance with 35 U.S.C. § 312(a)(3) and 37 C.F.R.
§§ 42.22(a)(2), 42.104(b)(4)–(5)
Under 35 U.S.C. § 312(a)(3), a petition for inter partes review “may
be considered only if . . . the petition identifies, in writing and with
particularity, each claim challenged, the grounds on which the challenge to
each claim is based, and the evidence that supports the grounds for the

1 Kahn claims priority to U.S. Patent Application No. 08/142,161, filed
October 22, 1993. Ex. 1018, at [63].
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challenge to each claim.” 35 U.S.C. § 312(a)(3) (emphases added). Our
rules further address the showing required in a petition. In particular,
37 C.F.R. § 42.104(b)(4) provides that “[t]he petition must specify where
each element of the claim is found in the prior art patents or printed
publications relied upon,” 37 C.F.R. § 42.104(b)(4) (emphasis added), and
37 C.F.R. § 42.104(b)(5) adds that the Petition must “identify[] specific
portions of the evidence that support the challenge,” 37 C.F.R.
§ 42.104(b)(5) (emphasis added). Similarly, 37 C.F.R. § 42.22(a)(2) states
that a petition “must include . . . [a] full statement of the reasons for the
relief requested, including a detailed explanation of the significance of the
evidence.” 37 C.F.R. § 42.22(a)(2) (emphases added). For the reasons
discussed below, we agree with Patent Owner’s assertions that the Petition
fails to comply with each of these requirements in addressing the asserted
ground based on Kahn and Linn. See Prelim. Resp. 4–10.
As background, we provide an overview of the structure of the
Petition, which informs the deficiencies we explain below. The Petition
starts its analysis of the asserted ground of obviousness over Kahn and Linn
with a general discussion of each reference. Pet. 22–35 (§§ IV.A–B). It
then proffers a hypothetical, integrated system that purports to combine the
teachings and suggestions of Kahn and Linn with the knowledge of a person
of ordinary skill in the art (“the hypothetical Kahn-Linn system”). Id. at 35–
40 (§ IV.C). Next, the Petition argues that the hypothetical Kahn-Linn
system “would” satisfy three sets of particular claim terms, namely
(1) “usage rights,” (2) “sending computing device” (or “sending apparatus”)
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and “receiving computing device,”2 and (3) “authorization object.” Id. at
40–49 (§ IV.D); see id. at 15–20. Finally, the Petition includes an eight-
page section asserting that the hypothetical Kahn-Linn system “would” meet
each limitation of the fifteen challenged claims. Id. at 49–57 (§ IV.E). With
this background, we turn to the evidentiary deficiencies of the Petition.
The entire Petition is riddled with vague, nested citations to broad
sections of Kahn, Linn, the Dr. Sherman Declaration, numerous other
exhibits, and other sections of the Petition. See, e.g., id. at 47 (“See §§ IV.B,
D.1; Ex. 1018 at 3:3-13, 8:27-30, 26:31-38; Ex. 1058 at 13, 15-16; Ex. 1013
at ¶ D104-12, D128”). Most problematically, when addressing how Kahn
and Linn teach or suggest the limitations of the ’007 patent claims, the
Petition generally parrots the claim language, or Petitioner’s proffered claim
construction, and argues that the hypothetical Kahn-Linn system “would”
meet each limitation. See Pet. 49–57. Each of these arguments is followed
by incomprehensible citations to broad sections of the record, such as “See
§ IV.C; Ex. 1018 at 23:48-26:38; Ex. 1058 at 14, 15-16; Ex. 1013 at ¶ D104,
D233” (Pet. 49), “See §§ IV.A.4, C; Ex. 1018 at 25:30-58, 26:10-38;
Ex. 1058 at 15-16. Ex. 1013 at ¶ D237” (Pet. 51), “See § IV.C; Ex. 1018 at
25:54-26:38; Ex. 1058 at 15-16; Ex. 1013 at ¶¶ D105-12, D238” (Pet. 51),
and “See § IV.B.2; Ex. 1058 at 16; Ex. 1013 at ¶ D97-112, D240-41”

2 The relevant section of the Petition specifically argues that the
hypothetical Kahn-Linn system would include “repositories.” Pet. 43–47.
The term “repository” is not recited in the ’007 patent claims, but Petitioner
argues, elsewhere in the Petition, that the claim terms “sending computing
device” (or “sending apparatus”) and “receiving computing device” must be
repositories. Id. at 15–17. Therefore, we understand the relevant section of
the Petition to argue that the hypothetical Kahn-Linn system would meet
these claim terms.
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(Pet. 52). See Pet. 49–57. This practice results in multiple levels of
abstraction, obscuring Petitioner’s position regarding which reference, and
which portion of which reference, teaches or suggests the claim limitations.
It also blurs the actual teachings and suggestions of the references from
Petitioner’s characterizations and modifications of these teachings and
suggestions in creating the proposed hypothetical Kahn-Linn system.
As one representative example, Petitioner’s analysis of one step of
independent claim 1—“sending usage rights information indicating how the
digital content may be rendered by the at least one recipient computing
device”—and the corresponding step in independent claims 6 and 11,
includes the following sentence:
In a combined system, at the successful completion of a
purchase transaction, the Kahn repositories would send a Linn
envelope containing the content applicable terms and conditions
(sending “usage rights information”) for each object to the
rendering software. Ex. 1013 at ¶ D112, D239; see § IV.A.2,
C; Ex. 1018 at 24:26-26:38; Ex. 1058 at 13, 15-16.
Pet. 52. The supporting citation features unexplained citations to three full
pages of Linn, more than two columns of Kahn, two other sections of the
Petition (§§ IV.A.2 and IV.C), and two paragraphs of the Dr. Sherman
Declaration (¶¶ D112, D239)—one of which includes a claim chart
supported exclusively by internal cross-references. The two cited
paragraphs of the Dr. Sherman Declaration include cross-references to more
than eighty paragraphs, or nearly thirty pages, of the Declaration. In
addition, the two cited sections of the Petition comprise seven pages and
further cite: (1) another two sections (§§ IV.A.3 and IV.B.2), or nearly five
pages, of the Petition, (2) more than thirty paragraphs, or fourteen pages, of
the Dr. Sherman Declaration, (3) different portions of at least ten columns of
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Kahn, and (4) another page of Linn. See Pet. 25–27, 35–40. As a result—
without considering the additional internal cross-references in these sections
of the Petition and paragraphs of the Dr. Sherman Declaration—the single
sentence of the Petition quoted above cites: (1) nearly twelve pages of the
Petition, (2) four pages of Linn, (3) portions of at least ten different columns
of Kahn, and (4) more than one hundred paragraphs, or forty pages, of the
Dr. Sherman Declaration.
The pervasive use of internal cross-references within the Petition and
the supporting Dr. Sherman Declaration obfuscates the evidentiary support
for the Petition’s assertions. For example, the eight-page section of the
Petition that addresses how the hypothetical Kahn-Linn system would satisfy
the ’007 patent claims (§ IV.E) features thirty internal cross-references to ten
different sections of the Petition, which span twenty-six pages of the Petition
(§§ III.D.4, IV.A.1–4, IV.B.2, IV.C, IV.D.1–3). Further, Dr. Sherman’s
supporting testimony—cited extensively in the Petition—is routinely, and
often exclusively, supported by internal cross references to other paragraphs
of the Declaration. See, e.g., Ex. 1013 ¶ D237 (“See ¶¶ D27, D33-46,
above”); id. ¶ D241 (“See ¶¶ D55-57, D70-77, above”). Petitioner’s claim
charts, which appear only in the Dr. Sherman Declaration, are supported
exclusively by internal cross-references, generally to vast sections of the
Declaration. See id. ¶¶ D235–42, D259, D269, D280; see, e.g., id. ¶ D238
(claim chart for limitation “1.a” in the ’007 patent, citing fifty-nine
paragraphs (¶¶ D1–4, D14–21, D33–48, D131–161) of the Dr. Sherman
Declaration).
These defects in the Petition are compounded by the Petition’s
repeated citation to broad sections of the Dr. Sherman Declaration to support
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conclusory arguments and reasoning. See Prelim. Resp. 7–10. The
Dr. Sherman Declaration is a 474-page omnibus declaration covering
nineteen petitions for inter partes review challenging the ’007 patent and
four related patents. See Ex. 1013, i; see generally id. Nearly 200 pages of
the Declaration are relevant to this Petition. See id. §§ I–V.C.2, V.C.4–5,
V.C.7, V.C.11, V.D.3–4, V.D.6, VII.A–F, VII.G.4.
The Petition regularly cites to large sections of the Dr. Sherman
Declaration as support for otherwise unexplained statements. For example,
one sentence of the Petition states, without explanation: “A person of skill
would have considered it obvious to use the complementary features of each
of the systems in the way they are taught, subject to minor alterations needed
to integrate the two systems. Ex. 1013 at ¶ D105, D95-D118.” Pet. 43. The
supporting citation to the Dr. Sherman Declaration (¶¶ D95–118) covers
twenty-four paragraphs, or more than nine pages.
More generally, many sections of the Petition feature sparse
explanation, and rely heavily on supporting citations to the Dr. Sherman
Declaration to buttress the conclusory analysis. For example, the eight-page
section of the Petition arguing that the hypothetical Kahn-Linn system meets
the limitations of the ’007 patent claims (§ IV.E) directly cites more than
one-hundred paragraphs, or fifty pages, of the Dr. Sherman Declaration. See
Pet. 49–57. Thus, even without accounting for the additional internal cross-
references within these paragraphs of the Declaration, the supporting
declaration testimony is more than six times the length of the relevant
discussion in the Petition.
Put simply, the Petition generally does not stand on its own, and its
arguments often are incomprehensible without reviewing broad portions of
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the Dr. Sherman Declaration, the length of which exceeds the relevant
discussion in the Petition by multitudes. The Petition’s practice of citing
multiple pages of the Dr. Sherman Declaration to support conclusory
statements and more generally, using the Declaration to vastly expand its
thin analysis and reasoning violates our rules in two respects.
First, this practice amounts to incorporation by reference—which is
impermissible under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments
must not be incorporated by reference from one document into another
document.”); Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-
00454, slip op. at 7–10 (PTAB Aug. 29, 2014) (Paper 12) (informative).
This incorporation by reference from the 474-page Declaration into the
Petition “serves to circumvent the [60-]page limit[] imposed on petitions for
inter partes review, while imposing on our time by asking us to sift through
[hundreds of] pages of [the] Declaration (including numerous pages of claim
charts) to locate the specific [relevant] arguments.” Cisco Sys., Inc.,
IPR2014-00454, slip op. at 10 (Paper 12) (informative); see 37 C.F.R.
§ 42.24(a)(1)(i). We will not consider arguments and information that are
not presented and developed in the Petition, and instead are incorporated by
reference to the Dr. Sherman Declaration. Second, the Petition’s consistent
citation to voluminous portions of the Dr. Sherman Declaration, which
generally include additional internal cross-references, runs afoul of the
particularity and specificity required of supporting evidence under our
governing statute and rules. See 35 U.S.C. § 312(a)(3); 37 C.F.R.
§§ 42.22(a)(2), 42.104(b)(4)–(5).
In sum, the Petition’s conclusory analysis with supporting citations to
an incomprehensible web of internal cross-references to the Petition and the
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Dr. Sherman Declaration and imprecise citations to Kahn and Linn leaves us
“to play archeologist with the record.” Cisco Sys., Inc., IPR2014-00454, slip
op. at 10 (Paper 12) (informative). Based on the deficiencies addressed
above, the Petition fails: (1) to specify sufficiently where the limitations of
claims 1–15 of the ’007 patent are taught or suggested by Kahn or Linn, and
(2) to provide a sufficiently detailed explanation of the significance of the
citations to these references and the Dr. Sherman Declaration—as required
under 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R.
§ 42.104(b)(4)–(5). We, therefore, deny institution of the asserted ground of
obviousness over Kahn and Linn.
2. Failure to Perform Graham Analysis
The Petition’s analysis of the alleged obviousness of claims 1–15 of
the ’007 patent over Kahn and Linn suffers from an additional legal
deficiency. A patent claim is unpatentable as obvious under 35 U.S.C.
§ 103(a)3 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.” 35 U.S.C. § 103(a); KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The legal conclusion of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) “the scope and content of the prior art,” (2) “differences
between the prior art and the claims at issue,” (3) “the level of ordinary skill
in the pertinent art,” and (4) any “secondary considerations,” or objective

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284 (2011), revised 35 U.S.C. § 103, effective March 16, 2013.
Because the ’007 patent was filed before March 16, 2013, our references and
citations to § 103 in this decision are to the pre-AIA version.
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indicia, of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966). These underlying factual determinations “must be considered by the
trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d
534, 546 (Fed. Cir. 1998).
Here, as Patent Owner points out, the Petition fails to identify
sufficiently the differences between any claim of the ’007 patent and the
asserted prior art references, Kahn and Linn. See Pet. 22–57; Prelim.
Resp. 6–7, 42. Rather than address these differences, the Petition creates a
hypothetical Kahn-Linn system—based on how a person of ordinary skill in
the art allegedly “would” or “could” combine the two references into an
integrated system—in an analysis that is divorced entirely from the language
of the ’007 patent claims. See Pet. 35–40 (§ IV.C). The Petition then
argues, in conclusory fashion, that this hypothetical system “would” meet
each of the limitations of the claims. See id. at 49–57 (§ IV.E). This
analysis—which compares the challenged claims to a hypothetical integrated
system that allegedly implements elements of both Kahn and Linn as well as
the knowledge of one of ordinary skill in the art—obscures any comparison
of the individual prior art references to the claim limitations. It does not
explain with any particularity which claim limitations are absent from Kahn
or Linn. See Prelim. Resp. 6, 42. Therefore, the Petition fails to perform an
adequate Graham analysis, as required for an obviousness determination.
Accordingly, we determine that the Petition does not show a
reasonable likelihood that Petitioner would prevail in showing that claims 1–
15 of the ’007 patent would have been obvious over Kahn and Linn. See
Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18
(PTAB May 28, 2015) (Paper 11) (denying institution of an asserted
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obviousness ground based on Petitioner’s failure to explain adequately any
differences between the asserted prior art and the claimed invention); Liberty
Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip
op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who
does not state the differences between a challenged claim and the prior art,
and relies instead on the Patent Owner and the Board to determine those
differences . . . risks having the corresponding ground of obviousness not
included for trial for failing to adequately state a claim for relief.”).
3. Lack of Rationale to Combine and Improper Hindsight
Turning to the merits, we deny institution of the asserted ground based
on Kahn and Linn for an additional, independent reason. Specifically, we
determine that the obviousness analysis proposed in the Petition does not
provide sufficiently articulated reasoning, with rational underpinning, to
combine Kahn and Linn to reach the invention recited in the challenged
claims and, instead, is driven by improper hindsight.
i. The Proposed Hypothetical Kahn-Linn System
The Petition asserts that a person of ordinary skill in the art would
have recognized that Kahn and Linn “address complementary parts of the
same problem[,] secure content distribution,” and that “the scheme[]
described in each reference solves the gap of the other.” Pet. 35–36. Such a
person, according to the Petition, “would have had a strong motivation to
integrate the two schemes to yield a functional end-to-end scheme” in which
Kahn’s object management system distributes content, and end-user devices
using Linn’s software download that content and render it in accordance
with terms and conditions. Id. at 36. From this premise, the Petition argues
that a person of ordinary skill would have integrated Kahn and Linn into a
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unified system—the hypothetical Kahn-Linn system—by making at least the
following changes,4 which the Petition classifies as “only minor, logical
modifications.” Id.
First, “a person of ordinary skill would have configured the Linn
rendering software to interface with the Kahn object management system,
such as by using the account creation and purchase transaction protocols
described in Kahn.” Id. According to the Petition, this would be “logical
and natural.” Id. at 36–37. Second, to implement the system, a person of
ordinary skill would have the entity “operating the Kahn repository system
distribute [the Linn] rendering software[,] configured to interact with the
repository servers and payment servers”—based on an alleged specific
suggestion to do so in Linn. Id. at 37. Third, the person of ordinary skill
then would have “integrat[ed] the Kahn user registration techniques into the
[Linn] rendering software [to] improve the Linn enforcement mechanisms.”
Id.
Fourth, although Kahn and Linn allegedly teach only the “use of
digital certificates and digital signatures to validate the authenticity and
integrity of content before that content can be stored or used,” the person of
ordinary skill would have “logically exten[ded]” this technique to Linn’s
rendering software, distributing the “software with a digital signature and

4 We note that the Petition appears to classify the proposed changes to reach
the hypothetical Kahn-Linn system as involving only three modifications.
See id. at 36–40 (labeling certain paragraphs as “[f]irst,” “[s]econd” and
“[t]hird”) (emphasis omitted). To the extent the Petition does so, we
disagree. Based on our review of the Petition as well as Kahn and Linn, we
find that the proposed implementation of the hypothetical Kahn-Linn system
involves several more distinct modifications, which we outline in our
discussion below.
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digital certificate to enable users to validate [its] authenticity and integrity
. . . before installing it.” Id. at 38 (emphasis added). Fifth, it also “would
have been logical to apply this technique to the software operating the Kahn
servers, by requiring software to be signed using a digital certificate.” Id.
According to the Petition, using “digital certificates and signatures for this
purpose was a conventional technique, and implementing these features
would be routine.” Id.
Sixth, “[a] person of skill would have considered known techniques”
to enforce “terms and conditions . . . on the user-side[,] . . . such as those
described in Linn” and “[f]or example, . . . could have configured,” with
“routine and predictable effort,” “the Kahn repository servers to package
digital content and an envelope containing terms and conditions into the
information objects described in Linn.” Id. at 38–39. Seventh, “a person of
ordinary skill also could have . . . add[ed] fields within the Linn envelope to
accommodate the various terms and conditions described in Kahn.” Id.
Eighth, the person of ordinary skill “could” use Standard Generalized
Markup Language (“SGML”) “to represent the usage fields . . . to
accommodate Kahn’s additional usage rights and to add flexibility to the
combined system.” Id. at 39–40. Ninth, “a person of skill could have
readily integrated th[e] known technique” of encrypting content, as
described in Kahn, “with the Linn envelopes to ensure only the user with the
corresponding private key (i.e., the user identified in the digital certificate)
could decrypt the symmetric key and access the content.” Id. at 40.
ii. Discussion
The Supreme Court has explained that an obviousness analysis should
“determine whether there was an apparent reason to combine the known
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elements in the fashion claimed by the patent at issue.” KSR, 550 U.S.
at 418. Similarly, the Federal Circuit has made clear that an obviousness
determination “cannot be sustained by mere conclusory statements; instead,
there must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006); see KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d at 988).
An obviousness analysis, however, must “avoid hindsight reconstruction by
using the patent in suit as a guide through the maze of prior art references,
combining the right references in the right way so as to achieve the result of
the claims in suit.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011).
We find the reasons proffered in the Petition for the proposed
modifications to be conclusory and superficial. For example, Petitioner
concedes that neither Kahn nor Linn teaches behavioral integrity, i.e.,
requiring software to include a digital certificate in order to be installed in
the repository, which Petitioner acknowledges is a requisite aspect of the
“recipient computing device” and “sending computing device” (or “sending
apparatus”) recited in the ’007 patent claims. Pet. 15–20; Ex. 1007, 6:30–
44, 7:13–15, 11:63–12:7, 12:47–63, 49:63–67; Ex. 2001, 10–15, 19–21; see
Prelim. Resp. 28–29; ZTE Corp. v. ContentGuard Holdings, Inc., Case
IPR2013-00137, slip op. at 8–9, 11 (PTAB July 1, 2014) (Paper 58).
Petitioner, however, argues that both Kahn and Linn teach using digital
certificates and digital signatures to validate the authenticity and integrity of
the content of a digital object before it can be stored or used. Pet. 38; see
Ex. 1018, 24:47–26:38; Ex. 1058, 15–16. The Petition reasons that it would
be a “logical extension” of these teachings to modify Linn’s rendering
software to include a digital signature and digital certificate and to verify the
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authenticity and integrity of this software before installation (change 4 in
Part II.A.3.i above). Pet. 38, 46. In addition, the Petition argues “it would
have been logical” to include a digital signature and digital certificate in the
software that operates Kahn’s repository servers and to have these servers
validate the digital signature and digital certificate of the software before
installing it (change 5 in Part II.A.3.i above). Id. at 38, 46. The Petition
notes, in conclusory fashion, that “[u]se of digital certificates and signatures
for this purpose was a conventional technique” “with known benefits for
improved security.”5 Id. Yet the Petition does not provide a persuasive
reason to add authentication and security techniques beyond those already
contained in the Kahn and Linn systems—much less to modify both Linn’s
rendering software and any software operating Kahn’s repository servers to
include digital certificates that are verified before installation.
This proposed change is in addition to the several proposed
modifications the Petition asserts one of ordinary skill in the art “could”
make to implement the hypothetical Kahn-Linn system, which appear to be
directed to ensuring that the system would satisfy “the usage rights
information being enforceable by the at least on recipient computing
device,” as recited in the independent claims of the ’007 patent. Id. at 39–
40; see id. at 52. These proposed modifications likewise are supported by
little to no reasoning to support a determination that it would have been
obvious to combine the elements as proposed in the Petition. As an
example, the Petition’s sixth proposed change states “[f]or example, a

5 To the extent the Dr. Sherman Declaration provides additional arguments
and explanation not mentioned in the Petition, we need not and do not
consider this testimony for the reasons stated above in Part II.A.1.
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person of skill could have configured the Kahn repository servers to package
digital content and an envelope containing terms and conditions into the
information objects described in Linn,” and this “would require only routine
and predictable effort.” Id. at 39 (first emphasis added); see supra
Part II.A.3.i. This change, therefore, is put forward only as an example of a
technique a person of ordinary skill could use, and without adequate
explanation as to why such a person would make this specific change.
Particularly when the many proposed changes are considered together,
the Petition lacks adequate reasoning, with rational underpinning, to show
sufficiently that a person of ordinary skill would have combined the
teachings of Kahn and Linn and the knowledge in the art to reach the
hypothetical Kahn-Linn system, which the Petition alleges would satisfy
each limitation of the challenged claims. In other words, we are not
persuaded that the Petition sufficiently explains why a person of ordinary
skill would simultaneously make all of the many particular proposed
changes and implementation choices to combine Kahn, Linn, and allegedly
known techniques.
Rather, given the extent of the proposed modifications as well as the
thin reasoning proffered for each modification, we conclude that the Petition
improperly “reli[es] upon ex post reasoning” and impermissible hindsight
reconstruction to piece together the hypothetical Kahn-Linn system in a
manner meant to resemble the ’007 patent claims. See KSR, 550 U.S. at 421.
The Petition strains to make numerous distinct modifications, picking and
choosing aspects of Kahn and Linn—in addition to techniques not disclosed
in either reference that allegedly were known in the art—to arrive at the
hypothetical Kahn-Linn system. See Pet. 35–57. “This type of piecemeal
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analysis is precisely the kind of hindsight that [we] must not engage in.”
NTP, 654 F.3d at 1299 (“Care must be taken to avoid hindsight
reconstruction by using the patent in suit as a guide through the maze of
prior art references, combining the right references in the right way so as to
achieve the result of the claims in suit.”); see also ATD Corp., 159 F.3d at
546 (“Determination of obviousness can not be based on the hindsight
combination of components selectively culled from the prior art to fit the
parameters of the patented invention.”).
In sum, we are not persuaded that the Petition shows sufficiently why
one of ordinary skill in the art—without improper hindsight—would have
combined Kahn and Linn to reach the invention recited in claims 1–15 of the
’007 patent. Therefore, we determine that the Petition does not establish a
reasonable likelihood that Petitioner would prevail in showing that any of
the challenged claims would have been obvious over Kahn and Linn.
B. ASSERTED GROUND BASED ON KAHN, LINN, AND DYAD
In addition to the asserted ground of obviousness over Kahn and Linn,
the Petition asserts an obviousness ground that relies on Kahn and Linn as
well as an additional reference, Dyad. Pet. 57–59. Specifically, the Petition
asserts that “Patent Owner may contend a ‘repository’ or ‘trusted’ device
must include particular hardware components, such as a tamper-resistant
module, and that neither Kahn nor Linn explicitly describe[s] use of such
hardware components in their disclosures.” Id. at 57. The Petition then
proceeds to discuss Dyad’s disclosure of tamper-resistant secure
coprocessors and argues that it would have been obvious to one of ordinary
skill in the art to use these secure coprocessors in the hypothetical Kahn-
Linn system. Id. at 57–59; Ex. 1013 ¶¶ 162–66.
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This asserted ground is deficient for several reasons. First, the ground
relies on the Petition’s analysis of the asserted ground based on Kahn and
Linn and adds the teachings of Dyad only to address a potential argument of
Patent Owner that repositories or “trusted” devices have certain additional
requirements. Therefore, the ground suffers from the same deficiencies as
the asserted ground based on Kahn and Linn, addressed above. Second, the
ground is premised on a potential claim construction argument that
Petitioner speculates Patent Owner “may” proffer. Pet. 57; Prelim. Resp.
56–57. Yet Patent Owner does not make any such argument. See Prelim.
Resp. 56–57. Therefore, Petitioner has not shown that institution of this
asserted ground is warranted.
Accordingly, we determine that the Petition does not establish a
reasonable likelihood that Petitioner would prevail in showing that claims 1–
15 would have been obvious over Kahn, Linn, and Dyad.
III. ORDER
For the reasons given, it is:
ORDERED that pursuant to 35 U.S.C. § 314(a), the Petition is denied.

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PETITIONER:
Jeffrey P. Kushan
Michael R. Franzinger
SIDLEY AUSTIN LLP
jkushan@sidley.com
mfranzinger@sidley.com
iprnotices@sidley.com

PATENT OWNER:

Nicholas T. Peters
Timothy P. Maloney
FITCH, EVEN, TABIN & FLANNERY LLP
ntpete@fitcheven.com
tpmalo@fitcheven.com

Robert A. Cote
MCKOOL SMITH, P.C.
rcote@mckoolsmith.com