Apple Inc.v.Contentguard Holdings, Inc.

Patent Trial and Appeal Board

Jul 13, 2015

10345390 (P.T.A.B. Jul. 13, 2015)

Trials@uspto.gov Paper 11
571-272-7822 Date: July 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

CONTENTGUARD HOLDINGS, INC.,
Patent Owner.

Case IPR2015-00440
Patent 6,963,859 B2

Before PATRICK R. SCANLON, KERRY BEGLEY, and
KEVIN W. CHERRY, Administrative Patent Judges.

CHERRY, 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 requesting an inter partes review of
claims 1, 3, 5, 8, 13, 15, 16, 19–21, 24, 29, 31, 33, 36, 40, 42, 43, 46–48, 51, 58,
60, 62, 65, 69, 71, 72, 75–77, and 81 (“the challenged claims”) of U.S. Patent No.
6,963,859 B2 (Ex. 1001, “the ’859 patent”). Paper 1 (“Pet.”). Patent Owner,
ContentGuard Holdings, Inc., filed a Preliminary Response pursuant to 35 U.S.C.
§ 313. Paper 10 (“Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314. Section 314 provides that an
inter partes review may not be instituted “unless . . . the information presented in
the petition . . . 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.”
For the reasons that follow, we deny institution of inter partes review.
A. Related Matters
Petitioner indicates that the ’859 patent was asserted against it and other
defendants by Patent Owner in several lawsuits pending in various U.S. district
courts. See Pet. 2; Paper 9, 3.
Petitioner filed two other petitions seeking inter partes review of the
’859 patent: Cases IPR2015-00441 and IPR2015-00442. Petitioner also filed
petitions in Cases IPR2015-00351–358, 399, 400, and 443–458, challenging
related U.S. Patent Nos. 7,225,160; 7,269,576; 7,523,072; 7,774,280; 8,001,053;
8,370,956; 8,393,007; and 8,583,556. Paper 9, 2–3.

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B. The ’859 Patent
The subject matter of the ’859 patent relates to distribution of and usage
rights enforcement for digitally encoded works. Ex. 1001, 1:12–13. According to
the ’859 patent, an issue facing the publishing and information industries is “how
to prevent the unauthorized and unaccounted distribution or usage of electronically
published materials.” Id. at 1:16–19. In particular, a major concern is “[t]he ease
with which electronically published works can be ‘perfectly’ reproduced and
distributed.” Id. at 1:30–31. One way to curb unaccounted distribution is to
prevent unauthorized copying and transmission. Id. at 1:49–51. Another way is to
distribute software, which requires a “key” to enable its use. Id. at 1:65–66.
However, the ’859 patent discloses that, although such distribution and protection
schemes prevent unauthorized distributions, they do so by sacrificing the potential
for subsequent revenue bearing uses. Id. at 2:61–65. For example, the ’859 patent
discloses that “it may be desirable to allow the lending of a purchased work to
permit exposure of the work to potential buyers,” “permit the creation of a
derivative work for a fee,” or “permit copying the work for a fee.” Id. at 2:65–3:3.
The ’859 patent discloses that it solves these problems by both permanently
attaching usage rights to digital works, and placing elements in repositories, which
enforce usage rights and store and control the digital works. Id. at 6:11–21.
Repositories are trusted systems, which support usage rights. Id. at 6:22–44,
11:63–12:63, 49:63–67.
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C. Illustrative Claim
Claims 1, 29, and 58 are independent. Claim 1 is reproduced below:
1. A rendering system adapted for use in a distributed system
for managing use of content, said rendering system being operative to
rendering content in accordance with usage rights associated with the
content, said rendering system comprising:
a rendering device configured to render the content; and
a distributed repository coupled to said rendering device and
including a requester mode of operation and server mode of operation,
wherein the server mode of operation is operative to enforce
usage rights associated with the content and permit the rendering
device to render the content in accordance with a manner of use
specified by the usage rights,
the requester mode of operation is operative to request access to
content from another distributed repository, and
said distributed repository is operative to receive a request to
render the content and permit the content to be rendered only if a
manner of use specified in the request corresponds to a manner of use
specified in the usage rights.
Ex. 1001, 51:16–38.
D. Evidence Relied Upon
Petitioner relies upon the following prior art references:
Hartrick EP 0 567 800 A1 Nov. 3, 1993 Ex. 1021
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Liam Comerford & Steve R. White, ABYSS: A Trusted Architecture for
Software Protection (1987) (Ex. 1016, “ABYSS”).1
DOROTHY ELIZABETH ROBLING DENNING, CRYPTOGRAPHY AND DATA
SECURITY (1983) (Ex. 1017, “Denning”).
Petitioner also relies upon the Declaration of Alan Sherman Regarding U.S.
Patent Nos. 6,963,859; 7,523,072; 8,370,956; 8,393,007; 7,269,576, dated
December 20, 2014 (Ex. 1013, “Sherman Declaration”).
E. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:
References Basis Challenged Claims
ABYSS and Denning § 103(a)
1, 3, 5, 8, 13, 15, 16, 19–21, 24, 29,
31, 33, 36, 40, 42, 43, 46–48, 51, 58,
60, 62, 65, 69, 71, 72, 75–77, and 81
ABYSS, Denning, and
Hartrick § 103(a)
1, 3, 5, 8, 13, 15, 16, 19–21, 24, 29,
31, 33, 36, 40, 42, 43, 46–48, 51, 58,
60, 62, 65, 69, 71, 72, 75–77, and 81

II. ANALYSIS
A. Ground Relying on ABYSS and Denning
1. Procedural Defects
As a threshold matter, we note that the Petition has several significant
procedural defects. For instance, a petition for inter partes review must
“identif[y], in writing and with particularity, each claim challenged, the grounds on

1 The Petition does not provide any further information about where ABYSS was
published.
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which the challenge to each claim is based, and the evidence that supports the
grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). According to
37 C.F.R. § 42.104(b)(4), a petition for inter partes review “must identify how the
construed claim is unpatentable under the statutory grounds on which the petitioner
challenges the claims, and must specify where each element of the claim is found
in the prior art patents or printed publications relied upon,” 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). Similarly,
37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of
the reasons for the relief requested, including a detailed explanation of the
significance of the evidence including material facts, and the governing law, rules,
and precedent.” The Office Patent Trial Practice Guide suggests that parties
requesting inter partes review 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. 48,756, 48,763 (Aug. 14, 2012). 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 ABYSS and Denning.2 See Prelim. Resp. 4–9.
Indeed, the Petition fails to satisfy these fundamental requirements at every
level. For example, the Petition contains numerous nested string citations to broad

2 Although our discussion is focused on the ground of ABYSS and Denning, this
analysis applies equally to the ground based on ABYSS, Denning, and Hartrick.
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swaths of the references, the Sherman Declaration, and internal cross-references to
whole sections of the Petition. See, e.g., Pet. 47–48 (discussing the first “element”
of claim 1 and citing, inter alia, “See Ex. 1016, 39–40, 44–45, 49; §§ IV.A2, E.1;
Ex. 1013 at ¶ C6, C34–43, C123–24” and “See § IV.E.1–2; Ex. 1016 at 42, 43, 47,
49, 50; Ex. 1017 at 178–79; Ex. 1013 at ¶ C173, C68–73, C80–85”). The analysis
of what the Petition identifies as the first of six elements of claim 1 spans a little
more than one page of the Petition, but cites to 56 paragraphs of the Sherman
Declaration, 11 pages of the 13-page ABYSS reference, and at least 16 pages of
internal sections of the Petition. Our count does not include the further internal
citations and cross references contained in the cross-cited portions of Petition. The
same problem continues for the remaining five elements. For example, although
the unpatentability analysis of the second element is only five lines in the Petition
(see Pet. 49), it cites over 30 paragraphs of the Sherman Declaration, 9 pages of
ABYSS, and 5 other pages of the Petition. These nested citations to so much of
the record obscure what exactly Petitioner is relying on as teaching or suggesting
these elements. The remaining elements each include citations that are no better:
“See § IV.E.2; Ex. 1016 at 44, 49, 50; Ex. 1013 at ¶ C106–09, C123–26, C174”
(Pet. 50); “See § IV.A.4; Ex. 1016 at 40, 42–45; Ex. 1013 at ¶ C48–53, C104–05”
(Pet. 51); “See § IV.A.3–4; Ex. 1016 at 38–40, 42–45, 50; Ex. 1013 at ¶ C6–10,
C55–58” (Pet. 51). See Pet. 49–57.
The problem of nested citations is not limited to the Petition itself. The
Sherman Declaration makes further use of internal cross references. For example,
paragraphs C153–70 of the Sherman Declaration purport to explain how ABYSS
shows use of a repository. See Ex. 1013 ¶¶ C153–70. These 18 paragraphs cite to
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a further 62 paragraphs. Petitioner’s claim charts, which appear only in the
Sherman Declaration, are supported exclusively by internal cross-references,
generally to vast sections of the Declaration. See id. ¶ C174 (e.g., element [1.a] of
the ’859 patent citing ¶¶ C23–C59, C76–C126, or 88 paragraphs of the Sherman
Declaration); id. at ¶ C175.
The clarity problems caused by the nested citations are exacerbated by the
labyrinthine-way Petitioner has structured the Petition. A brief description of the
structure of the Petition will illustrate this problem. The Petition’s unpatentability
analysis is divided into roughly five sections. First, the Petition presents a synopsis
of each reference, describing what Petitioner contends each of the three principal
references relied upon in the Petition generally discloses. See Pet. 23–37
(§§ IV.A–IV.C). Although this section quotes heavily from each reference, it also
includes extensive citations to the Sherman Declaration and various
characterizations of the references. See, e.g., id. at 25 (citing Ex. 1006, 38–40, 43,
49, 50, Ex. 1013 ¶¶ C6, C34–45, C74–75, C147–48). Second, the Petition
constructs an “implementation” of the ABYSS system using certain encryption
techniques (public-key encryption (“PKI”)) taught in a second reference, Denning,
which Petitioner contends would be incorporated into at least four aspects of
ABYSS. See Pet. 37–40. Third, the Petition then describes the “operation” of the
“implemented” system. See id. at 40–43. Fourth, the Petition next discusses how,
based on the “operation” of the “implemented” system, the implementation
discloses “repositories” and “usage rights,” as Petitioner has construed those terms.
See id. at 43–47. Fifth, the Petition maps this “operation” of the “implementation”
of ABYSS onto the challenged claims. See id. at 47–57. This mapping relies on
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all the previous summaries and descriptions. Id. Thus, the unpatentability analysis
relies on the description of the hypothetical operation of a hypothetical
implementation of a system relying, in part, on Petitioner’s description and
characterization of the disclosed system. The result of all these layers of analysis
is that the final unpatentability analysis is two or three levels removed from the
actual disclosure of the references. Petitioner’s approach completely blurs the line
between the actual teachings of each asserted reference, Petitioner’s modifications
to the teachings, and Petitioner’s characterizations of those teachings. This
approach improperly shifts the burden of deciphering Petitioner’s arguments onto
Patent Owner and the Board.3
The lack of clarity in the Petition is further compounded by the improper
incorporation by reference of the Sherman Declaration. The Petition is full of
conclusory statements that cite to broad swathes of the lengthy Sherman
Declaration.4 Indeed, without referring heavily to the Sherman Declaration many
sections of the Petition would be unintelligible. Patent Owner properly directs our
attention to the Board’s informative decision in Cisco Systems, Inc. v. C-Cation
Techs., LLC, Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12)
(informative). Prelim. Resp. 7. As explained in Cisco, citations to “large portions
of another document, without sufficient explanation of those portions, amounts to

3 We also note the record is larded with 69 exhibits submitted by Petitioner
totaling almost 30,000 pages, most of which are not cited or relied on in the
Petition.
4 The Sherman Declaration is about 470 pages long. Although most of it relates to
patents and references not at issue in this proceeding, the portion relating to this
proceeding is about 200 pages long. See Ex. 1013 §§ I–VI.D (i.e., pages 1–228).
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incorporation by reference.” Cisco, Case IPR2014-00454, slip op. at 8. Similarly,
Cisco explains that the “practice of citing [a] Declaration to support conclusory
statements that are not otherwise supported in the Petition also amounts to
incorporation by reference.” Id. at 9. Such incorporation by reference is improper:
“[a]rguments must not be incorporated by reference from one document into
another document.” 37 C.F.R. § 42.6(a)(3); see also DeSilva v. DiLeonardi, 181
F.3d 865, 866–67 (7th Cir. 1999) (Incorporation by reference “amounts to a self-
help increase in the length of the [] brief . . . . A brief must make all arguments
accessible to the judges, rather than ask them to play archeologist with the
record.”). For example, in its two-page argument that ABYSS and Denning teach
a repository (Pet. 46–47), the Petition collectively cites to paragraphs C1–22, C82–
89, C95–103, and C146–170 of the Sherman Declaration, corresponding to
approximately 25 pages of testimony.
In sum, the Petition’s conclusory analysis with supporting citations to an
incomprehensible web of internal cross-references to the Petition and the Sherman
Declaration, and imprecise citations to ABYSS and Denning, leaves us “to play
archeologist with the record.” Cisco Sys., Inc., IPR2014-00454, at 10 (Paper 12)
(informative). Based on the deficiencies addressed above, the Petition fails: (1) to
specify sufficiently where the limitations of the challenged claims of the ’859
patent are taught or suggested by ABYSS or Denning; and (2) to provide a
sufficiently detailed explanation of the significance of the citations to these
references and the 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 ABYSS and Denning.
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2. Obviousness Analysis
In addition to these serious procedural defects in the Petition, we also find
the obviousness analysis to be deficient on the merits. In particular, we determine
that the Petition’s obviousness analysis suffers two flaws: (1) it fails to provide an
adequate explanation of the differences between the prior art and the claimed
invention; and (2) it is driven by improper hindsight and lacks sufficient articulated
reasons with rational underpinning to support the modifications it proposes.
i. Legal Standards
A patent claim is unpatentable as obvious under 35 U.S.C. § 103(a)5 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 Supreme Court has explained that:
Under § 103, [(1)] the scope and content of the prior art are to
be determined; [(2)] differences between the prior art and the claims
at issue are to be ascertained; and [(3)] the level of ordinary skill in
the pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such [(4)]
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give light
to the circumstances surrounding the origin of the subject matter
sought to be patented.

5 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
’859 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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Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
In addition, “rejections on obviousness grounds 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). The reason for this is that, “[w]hile the
Supreme Court made clear that a mechanical application of the teaching-
suggestion-motivation test, requiring an explicit teaching in the prior art, is
inappropriate, ‘[w]e must still be careful not to allow hindsight reconstruction of
references to reach the claimed invention without any explanation as to how or
why the references would be combined to produce the claimed invention.’”
Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1343, 1368 (Fed. Cir.
2012) (quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed.
Cir. 2008)); see also KSR, 550 U.S. at 421 (“A factfinder should be aware, of
course, of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning
against a “temptation to read into the prior art the teachings of the invention in
issue” and instructing courts to “‘guard against slipping into use of hindsight’”
(citation omitted)). Thus, “[c]are 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.’” Grain Processing Corp. v. Am.–Maize Prods. Co., 840 F.2d 902,
907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d
1005, 1012 (Fed. Cir. 1983)).
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ii. Failure to Perform a Graham Analysis
As Patent Owner points out, the Petition fails to identify sufficiently the
differences between any claim of the ’859 patent and the asserted prior art
references, ABYSS and Denning. See Pet. 22–57; Prelim. Resp. 6–7, 42. Rather
than address these differences, the Petition creates a hypothetical ABYSS-Denning
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 from the language of the challenged ’859 patent claims. See Pet. 35–43
(§ IV.D). The Petition plucks out certain claim terms “usage rights” and
“repositories” and argues that ABYSS and Denning teach these concepts. See id.
at 44–47 (§ IV.E). The Petition then argues, in conclusory fashion, that this
hypothetical system “would” meet each of the limitations of the challenged claims.
See id. at 47–57 (§ IV.F). This analysis—which compares the challenged claims to
a hypothetical integrated system that allegedly implements elements of both
ABYSS and Denning 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 ABYSS or Denning. See Prelim. Resp. 6, 42. Therefore, the Petition
fails to perform an adequate Graham analysis, and leaves us unable to conduct a
proper Graham analysis as required to determine whether the challenged claims
are unpatentable.
Accordingly, we determine that the Petition does not show a reasonable
likelihood that Petitioner would prevail in showing that the challenged claims of
the ’859 patent would have been obvious over ABYSS and Denning. See
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Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB
May 28, 2015) (Paper 11) (denying institution of an asserted 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.”).
iii. Lack of Adequate Rationale/Improper Hindsight
As discussed above, Petitioner proposes modifying the system disclosed in
ABYSS in light of Denning to achieve an “implemented” system, which Petitioner
then reads onto the challenged claims of the ’859 patent. Pet. 37–47
(implementation); id. at 47–57 (unpatentability analysis). The Petition asserts that
it is making four primary changes to the ABYSS system to achieve its hypothetical
implementation. Id. at 37–40. Although the Petition provides some rationale and
basis, namely an explicit suggestion in the ABYSS reference, for the first of these
changes (id. at 37–38), the remaining of the changes are justified only as allegedly
being “routine” (id. at 38) or “obvious implementation choice[s]” (id. at 40). For
example, the third modification, using public key encryption to encrypt the Right-
To-Execute of ABYSS, is justified only because, according to the Petition, “[t]his
would allow symmetric supervisor keys to be replaced by public-private pairs and
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digital certificates” (id. at 39), without any further explanation and with only a
citation to the Sherman Declaration (5 pages of it) for support.
Many of these modifications include what appear to be additional
modifications that are supported with only the most threadbare reasoning. 6 For
example, in the second modification the Petition proposes, i.e., using public-key
encryption to protect the integrity of software, the Petition further asserts that a
person of ordinary skill “also would have understood that the same technique
should be applied to system software, such as updates to the supervisor software
that operated the protected processor, as this would improve system integrity.” Id.
at 38–39. In addition to the problem that Petitioner appears to be trying to obscure
the sheer number of changes, this reasoning is deficient. The Petition already
explained that the processor in ABYSS is protected. Id. at 24. The Petition
provides no rationale why a person of ordinary skill would seek additional integrity
in this circumstance.
More seriously deficient are the unsupported hidden modifications that
appear to litter the section titled, “The Operation of the Implemented System.”
Pet. 40–43. In one paragraph, Petitioner proposes that a vendor “operating” the
implemented system “could create a Right-To-Execute using the ‘targeted
distribution’ technique described in ABYSS,” “could restrict distribution to
processors that had a digital certificate issued by a particular authority for the
group,” and “could specify a condition that the Right-To-Execute can only be

6 To the extent the 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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installed by workstations that have obtained a digitally signed receipt from the
vendor.” Id. at 40–41. Although some of these choices are contained in different
examples in ABYSS, the Petition fails to explain where these choices are and
whether they represent the same embodiment of ABYSS. Moreover, the Petition
never explains whether a “vendor” is a person of ordinary skill, whether the series
of specific operational choices the Petition proposes are necessary to create a
system that practices the claimed invention, and why a “vendor” would make all
those operational choices or provide some rationale or explanation for operating
the system in the manner the Petition proposes.
But even if all these individual modifications, both large and small, and
choices that Petitioner contends would be obvious were supported, individually, by
articulated reasoning with rational underpinning, nowhere in its analysis in the
Petition does Petitioner provide adequate articulated reasoning for making all of
these changes at once. Petitioner merely claims that “[e]ach of these would have
been an obvious implementation choice for a person of ordinary skill based on the
guidance within ABYSS and Denning.” Pet. 40. Petitioner also justifies why a
person of ordinary skill would use PKI security generally, but does not explain
why a person of ordinary skill would make all of these choices and create the
particular implementation that Petitioner has put forward. We see no difference
between conclusory statements that these are “design choices,” and stating that
these changes are “common sense,” which, without more, is insufficient to support
an obviousness analysis. See Mintz v. Dietz & Watson, 679 F.3d 1372, 1377 (Fed.
Cir. 2012) (“The mere recitation of the words ‘common sense’ without any support
adds nothing to the obviousness equation.”). The mere fact that individual changes
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might have been minor or even obvious does not make doing all of the changes at
once obvious. See In re Irani, 427 F.2d 806, 809 (CCPA 1970) (“Obviousness,
however, must not be judged by hindsight, and a ‘little modification’ can be a most
unobvious one.”).
Without sufficient reason why a person of ordinary skill would engage in,
what appears to us to be, a nearly wholesale reconstruction of ABYSS, we
conclude that Petitioner is simply using Patent Owner’s claims as a guide in
constructing a system loosely based on ABYSS that resembles the claimed
invention. See Plantronics v. Aliph, Inc., 724 F.3d 1343, 1355 (Fed. Cir. 2013)
(“Where, as here, the necessary reasoning is absent, we cannot simply assume that
‘an ordinary artisan would be awakened to modify prior art in such a way as to
lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is
especially important to guard against the dangers of hindsight bias.” (citation
omitted)); see also W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
1552 (Fed. Cir. 1983) (“The result is that the claims were used as a frame, and
individual, naked parts of separate prior art references were employed as a mosaic
to recreate a facsimile of the claimed invention. At no point did the district court,
nor does Garlock, explain why that mosaic would have been obvious to one skilled
in the art . . . .”). This analysis that we determine is infected with impermissible
hindsight cannot form the basis of an obviousness finding. See KSR, 550 U.S. at
421 (“A factfinder should be aware, of course, of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham,
383 U.S. at 36 (warning against a “temptation to read into the prior art the
teachings of the invention in issue” and instructing courts to “‘guard against
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slipping into use of hindsight’” (citation omitted)). Because Petitioner has failed to
support its obviousness analysis with articulated reasoning with rational
underpinning, its obviousness analysis is deficient and cannot establish a
reasonable likelihood of success. See Kahn, 441 F.3d at 988. Therefore, we
determine that the Petition does not establish a reasonable likelihood that Petitioner
would prevail in showing that any of the challenged claims of the ’859 patent
would have been obvious over ABYSS and Denning.
B. Additional Ground
Petitioner also argues that the challenged claims would have been obvious
over the combination of ABYSS, Denning, and Hartrick. Pet. 57–60. Hartrick,
which is relied upon only for teaching “usage rights language” (Pet. 57), does not
cure the deficiencies noted above. Thus, Petitioner has failed to establish a
reasonable likelihood of success on the ground of obviousness over ABYSS,
Denning, and Hartrick, as well.

III. CONCLUSION
We determine that 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(b)(2).

IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied and no trial is instituted.
IPR2015-00440
Patent 6,963,859 B2
19
For PETITIONER:
Jeffrey P. Kushan
Michael R. Franzinger
SIDLEY AUSTIN LLP
iprnotices@sidley.com

For 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