Distinctive Developments, Ltd.v.Uniloc USA, Inc.

Patent Trial and Appeal Board

Dec 3, 2014

09792045 (P.T.A.B. Dec. 3, 2014)

Trials@uspto.gov Paper 38
571-272-7822 Entered: December 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DISTINCTIVE DEVELOPMENTS, LTD, ELECTRONIC
ARTS INC., GAMELOFT S.E., HALFBRICK STUDIOS PTY
LTD., LAMINAR RESEARCH LLC, MOJANG AB, and
SQUARE ENIX, INC.,
Petitioner,

v.

UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
Patent Owner.

Case IPR2013-00391
Patent 6,857,067 B2

Before JAMESON LEE, ALLEN R. MacDONALD, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

IPR2013-00391
Patent 6,857,067 B2

2
I. INTRODUCTION
Distinctive Developments, Ltd., Electronic Arts Inc., Gameloft
S.E., Halfbrick Studios Pty Ltd., Laminar Research LLC, Mojang AB,
and Square Enix, Inc. (collectively, “Petitioner”) filed an Amended
Petition requesting inter partes review of claims 1, 20–22, 30, 31, 35,
67, 107, and 108 (“the challenged claims”) of U.S. Patent No.
6,857,067 B2 (Ex. 1001, “the ’067 patent”). Paper 11 (“Pet.”).
Uniloc USA, Inc., and Uniloc Luxembourg S.A. (“Patent Owner”)
filed a Preliminary Response. Paper 14 (“Prelim. Resp.”). On
December 18, 2013, we instituted an inter partes review of claims 1,
20–22, 30, 31, 67, 107, and 108 on certain grounds of unpatentability
alleged in the Petition. Paper 15 (“Dec. to Inst.”). After institution of
trial, Patent Owner filed a Patent Owner Response (Paper 22, “PO
Resp.”) to which Petitioner filed a Reply (Paper 24, “Pet. Reply”).
Oral argument was held on July 11, 2014.
1

We have jurisdiction under 35 U.S.C. §§ 6(c) and 314. This
Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and
37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has
shown by a preponderance of the evidence that claims 1, 20, 22, 30,
31, 67, 107, and 108 of the ’067 patent are unpatentable, but has not
shown by a preponderance of the evidence that claims 21 and 22 are
unpatentable.

1
A transcript of the oral hearing is included in the record as Paper 37
(“Tr.”).
IPR2013-00391
Patent 6,857,067 B2

3
A. Related Proceedings
Petitioner indicates that the ’067 patent was asserted against it
in seven co-pending cases filed on July 20, 2012, and captioned (1)
Uniloc USA, Inc. v. Distinctive Developments, Ltd., Case No. 6:12-cv-
00462 (E.D. Tex.); (2) Uniloc USA, Inc. v. Electronic Arts, Inc., Case
No. 6:12-cv-00463 (E.D. Tex.); (3) Uniloc USA, Inc. v. Gameloft S.E.,
Case No. 6:12-cv-00466 (E.D. Tex.); (4) Uniloc USA, Inc. v.
Halfbrick Studios Pty Ltd., Case No. 6:12-cv-00467 (E.D. Tex.); (5)
Uniloc USA, Inc. v. Laminar Research, LLC, Case No. 6:12-cv-00468
(E.D. Tex.); (6) Uniloc USA, Inc. v. Mojang AB, Case No. 6:12-cv-
00470 (E.D. Tex.); and (7) Uniloc USA, Inc. v. Square Enix, Inc.,
Case No. 6:12-cv-00472 (E.D. Tex.). Pet. 58.
B. The ’067 Patent
The subject matter of the ’067 patent relates to preventing
unauthorized access to electronic data, such as computer software,
music, movies, and e-books. Ex. 1001, 1:11–13. A portable licensing
medium, which stores license data, is configured to communicate with
the electronic device. Id. at 3:63–65. The license data is used by the
electronic device to determine whether to allow access to the
electronic data. Id. at 3:65–67. A registration authority is configured
to communicate with the electronic device. Id. at 3:67–4:1. The
registration authority has verification data for verifying the license
data stored on the licensing medium. Id. at 4:1–3. The registration
authority provides updated license data to the licensing medium. Id.
at 4:3–4. Figure 1 is reproduced below:
IPR2013-00391
Patent 6,857,067 B2

4

Figure 1 of the ’067 patent depicts licensing medium 120 (for
example, a Smart Card), client computer 100, registration authority
110, and vendor 130. Registration authority 110 determines whether a
given user is authorized to have access to a given piece of electronic
data. Id. at 6:48–50. A client program installed on client computer
100 communicates with licensing information storage medium 120,
referred to as the licensing medium, and with registration authority
110. Id. at 6:63–66. Registration authority 110, in turn,
communicates with software vendor 130, which maintains a database
of valid licenses issued for the electronic data. Id. at 7:3–5.
Licensing medium 120 may be any type of portable electronic
data storage medium that has a unique, unalterable serial number or
other form of identification that can be transmitted electronically, such
as a smart card, memory stick, magnetic strip card, floppy disk, or
other removable computer storage media. Id. at 7:13–18. Licensing
medium 120 may communicate with client device 100 using a wired
or wireless connection. Id. at 7:18–22. In some embodiments,
licensing medium 120 may be non-removable, such as an internal
IPR2013-00391
Patent 6,857,067 B2

5
random access memory (RAM) installed in a cellular phone. Id. at
7:23–28. In the embodiment depicted in Figure 1, licensing medium
120 is a smart card. Id. at 7:32–33.
As disclosed in the Specification, registration authority 110 is a
remote server that maintains a licensing database containing
information for all of the licensing media 120 authorized by the
software protection administrator and all of the software licenses
authorized by the software vendors 130. Id. at 7:62–66.
C. Illustrative Claims
Of the challenged claims, claims 1, 67, 107, and 108 are the
only independent claims. Claim 1 is illustrative and is reproduced
below:
1. A system for preventing unauthorized access to
electronic data on an electronic device, the system
comprising:
a portable licensing medium configured to
communicate with the electronic device and to store
license data, the license data configured to be used by the
electronic device to determine whether to allow access to
the electronic data; and
a registration authority configured to communicate
with the electronic device, the registration authority
having verification data for verifying the license data
stored on the licensing medium,
wherein the registration authority provides updated
license data for the licensing medium.
IPR2013-00391
Patent 6,857,067 B2

6
D. Prior Art Supporting the Instituted Challenges
The following prior art references were asserted in the instituted
grounds:
Cronce US 7,032,240 B1 Apr. 18, 2006
(filed Feb. 14, 2000)
Ex. 1002
Deluca US 6,008,737 Dec. 28, 1999 Ex. 1004
E. The Instituted Challenges of Unpatentability
We instituted this trial on the basis that Petitioner had
demonstrated a reasonable likelihood of showing claims 1, 20–22, 30,
31, 67, 107, and 108 are unpatentable based upon the following
grounds:
Reference Basis Claims challenged
Cronce § 102 1, 20, 31, 67, 107, and 108
Deluca § 102 1, 20–22, 30, 31, 67, 107, and 108
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light
of the specification of the patent in which they appear. 37 C.F.R.
§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,766 (Aug. 14, 2012). Also, claim terms are given their ordinary
and customary meaning, as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
IPR2013-00391
Patent 6,857,067 B2

7
1. “verification data for verifying the license data” (claim 1)
Claim 1 recites “verification data for verifying the license data.”
Claims 67, 107, and 108 recite limitations with commensurate scope.
PO Resp. 21–22.
Patent Owner contends that a person of ordinary skill in the art
would have understood “verification data for verifying the license
data” as “data that allows the license data itself to be independently
verified, for example, by one of the three [methods described in
column 4, lines 5 to 26 of the ’067 patent].” PO Resp. 16–17 (citing
Ex. 1001, 4:6–9, 4:13–16, 4:22–26; Ex. 2002 ¶ 15).
Petitioner counters that Patent Owner’s proposed construction
is overly narrow because it excludes embodiments disclosed in the
’067 patent in which the “verification data for verifying the license
data” is a list of authorized identifiers. Pet. Reply 1–2 (quoting Ex.
1001, 4:34–42). Petitioner argues that claim 13, which depends from
claim 1, specifies that “the verification data comprises a list of
authorized identifiers,” and, therefore, claim 1 necessarily
encompasses embodiments in which a list of authorized identifiers are
the recited “verification data.” Id. at 2–3. Patent Owner’s expert, Dr.
Michael T. Goodrich, acknowledged that a list of authorized
identifiers can be included in the “verification data,” but testified that
the list of authorized identifiers “would not exclusively be the whole
of the verification data,” because the verification data must be able to
verify fully that the license data has not been tampered with. Ex.
1013, 27:3–13, 32:11–14.
IPR2013-00391
Patent 6,857,067 B2

8
The ’067 patent does not define either “verification data” or
“verification data for verifying the license data stored on the licensing
medium.” The language of claim 1, however, specifies that the
recited “verification data” is “for verifying the license data stored on
the licensing medium.” Patent Owner cites three methods described
in the ’067 patent (PO Resp. 15), but those methods verify the validity
of the licensing medium, not of the license data. Ex. 1001, 4:6–26
(“The electronic device may verify the validity of the licensing
medium by comparing the license data to the verification data of the
registration authority.” (emphasis added)); see also claims 2, 5, 9, 10
(reciting “verify validity of the licensing medium by . . .” (emphasis
added)). Based on our review, the only disclosure in the ’067 patent
of a “verification” of license data is the disclosure that the license data
(or a hash of it, or an encrypted hash of it) is compared to a copy of
itself in the “verification data” of the registration authority. Ex. 1001,
4:6–26. In the context of the ’067 patent, then, we construe “verifying
the license data,” as recited in claim 1, to mean comparing the license
data to a copy of itself to confirm that the two match.
Claim 13 provides context for understanding the difference
between “verification data” and “verification data for verifying the
license data.” Claim 13 specifies that “the verification data comprises
a list of authorized identifiers that allow access to the electronic data.”
The list of authorized identifiers, however, is not compared to license
data. It is compared, instead, to “registration information.” Ex. 1001,
4:34–42; claim 14 (“when the identifier sent with the registration
information corresponds to one of the authorized identifiers.”). Thus,
IPR2013-00391
Patent 6,857,067 B2

9
a list of authorized identifiers may be sufficient to verify validity of a
licensing medium, such that the registration authority provides
updated license data, but the authorized identifiers cannot be used to
“verify” the license data because they are not a copy of the license
data with which the license data can be compared. Accordingly, we
find persuasive the testimony of Patent Owner’s expert, Dr. Goodrich,
that a list of authorized identifiers may be included in “verification
data,” but cannot be “verification data for verifying license data,”
because the authorized identifiers cannot be used to verify the license
data by means of a comparison with it. Ex. 1013, 27:3–13, 32:11–14.
For the foregoing reasons, we construe “verification data for
verifying the license data” as “a copy of the license data with which
the license data can be compared.”
2. “verification data” (claims 67, 107, and 108)
Unlike claim 1, which recites “verification data for verifying
the license data,” claims 67, 107, and 108 recite “verification data”
without specifying a purpose for which it is used. These limitations,
therefore, require that the registration authority have “verification
data,” but do not require that the registration authority have
“verification data for verifying the license data.” As discussed above,
the ’067 patent states clearly that “verification data” may include data,
such as a list of authorized identifiers, that are used to verify the
licensing medium. Ex. 1001, 4:34–42, Claim 13. The ’067 patent
describes the list of authorized identifiers as being compared to
registration information, not to license data. Accordingly, Patent
Owner’s proposed construction of “verification data” is overly narrow
IPR2013-00391
Patent 6,857,067 B2

10
because “verification data”—as opposed to “verification data for
verifying the license data”—includes data, such as a list of authorized
identifiers, that is not used to verify the license data itself. Ex. 1001,
4:34–42, Claim 13.
For the foregoing reasons, we construe “verification data” as
“data including at least (1) a copy of the license data with which the
license data can be compared; or (2) a list of authorized identifiers
with which an identifier in registration information can be compared.”
3. “provides updated license data” (claim 1) / “providing updated
license data” (claims 67, 107, and 108)
Claim 1 recites “provides updated license data,” and claims 67,
107, and 108 recite “providing updated license data.” Patent Owner
contends that these phrases should be construed as “to modify existing
data with new data in such a way that the existing data is brought up
to date or made more current.” PO Resp. 26–29 (citing Ex. 2002 ¶¶
24–29), 34. Specifically, Patent Owner contends that “neither
creating a new record nor deleting an existing record meets [this]
limitation.” Id. at 26.
Petitioner counters that (1) Patent Owner’s proposed
construction is overly narrow because the ’067 patent discloses
deleting license data as one way of updating license data; (2) the ’067
patent does not define “updating” to have a special meaning; and (3) a
person of ordinary skill in the art at the time would have understood
“updating” to include deleting old license data and adding new license
data. Pet. Reply 10–13.
IPR2013-00391
Patent 6,857,067 B2

11
We agree that Patent Owner’s proposed construction is overly
narrow. The claim language requires only that the registration
authority “provides” updated license data. The claim language does
not specify to what the updated license data is provided—the portable
licensing medium, the electronic device, or something else. It also
does not specify whether, or how, the updated license data is used
after it has been provided. Because the claim language does not
require the use of the updated license data, it is improper to construe
this term to require “modify[ing] existing data,” as Patent Owner
proposes.
Moreover, as Petitioner points out, the ’067 patent describes
embodiments in which the license data sent from the registration
authority reflects the creation of new records:
If the registration information is verified by the
registration authority, then a new registration entry is
created for the newly granted or updated license for the
software. The registration authority generates new smart
card data reflecting these changes and sends the new
data back to the client computer to be stored on the smart
card.
Ex. 1001, 9:56–65 (emphasis added). Thus, the ’067 creates a “new
registration entry” not just for a “newly granted” license, but even for
an “updated” license. The ’067 patent nowhere describes sending an
“updated”—as opposed to “new”—registration entry. Accordingly,
we are not persuaded that a newly-added software license cannot be
“updated license data.”
IPR2013-00391
Patent 6,857,067 B2

12
The ’067 also describes an embodiment in which the license
data sent from the registration authority reflects the deleting of old
records:
The registration authority sends new smart card data to
the user reflecting the removal of the software license.
Rather than deleting the entry on the smart card, the
registration authority may change the software license
expiration date to a date in the past.
Id. at 11:29–33 (emphasis added). The “new smart card data” sent
from the registration authority may reflect the deletion of the entry, or
it may retain the entry but with an expiration date set to a date in the
past. Accordingly, we are not persuaded that data reflecting the
removal of a software license cannot be “updated license data.”
Patent Owner’s reliance on a dictionary definition of “update”
is unavailing. As an initial matter, the claim language recites the
adjective “updated,” not the verb “update.” Even if we credited the
dictionary definition by interpreting “updated” to mean “changed to
make more current,” that definition would still encompass data
reflecting the addition of, or removal of, a software license, either of
which make the “license data,” as a whole, more current.
For the foregoing reasons, we construe “[provides/providing]
updated license data” to encompass providing data reflecting the
addition of, or removal of, a software license.
4. “telephone” (claim 22)
Claim 22 recites “wherein the licensing medium is not
removable from the cellular telephone.” Patent Owner contends that
the plain and ordinary meaning of “telephone” requires a device that
has a microphone and is capable of two-way voice communication.
IPR2013-00391
Patent 6,857,067 B2

13
PO Resp. 32. Petitioner counters that neither the specification nor the
claims mention voice communication. Pet. Reply 15.
The ’067 patent does not define “telephone.” Patent Owner’s
expert, Dr. Goodrich, relies upon two definitions of “telephone,” but
neither Patent Owner nor Dr. Goodrich establish sufficiently that the
definitions reflect the meaning of “telephone” at the time of the
inventions. PO Resp. 32 (citing Ex. 2002 ¶ 34). We are persuaded,
however, that a person of ordinary skill in the art at the time of the
invention would have understood “telephone” to require both an
earphone for use in a telephone system and a microphone for use in a
telephone system. See IEEE 100 - THE AUTHORITATIVE DICTIONARY
OF IEEE STANDARDS TERMS 1158 (7th ed. 2000) (“telephone set (1)
(telephone),” “telephone receiver,” “telephone transmitter”).
For the foregoing reasons, we construe “telephone” to require
both an earpiece for use in a telephone system and a microphone for
use in a telephone system.
B. Claims 1, 20, 31, 67, 107, and 108—Anticipation by Cronce
Petitioner contends that claims 1, 20, 31, 67, 107, and 108 are
unpatentable under 35 U.S.C. § 102(e) as anticipated by Cronce. Pet.
9–22.
Patent Owner counters that Cronce does not disclose (1) a
“registration authority having verification data for verifying the
license data stored on the licensing medium,” as recited in
independent claim 1; (2) commensurate limitations recited in
independent claims 67, 107, and 108; and (3) “wherein the licensing
IPR2013-00391
Patent 6,857,067 B2

14
medium is a random access memory,” as recited in claim 20. PO
Resp. 16–25.
Upon consideration of the parties’ contentions and supporting
evidence, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 67, 107, and 108 are
anticipated by Cronce, but has not demonstrated by a preponderance
of the evidence that claims 1, 20, and 31 are anticipated by Cronce.
Cronce (Exhibit 1002)
Cronce describes an authorization system and associated
method for selectively authorizing a host system to use one or more
items of protected information associated with the host system. Ex.
1002, Abstract, 3:44–47. The authorization system includes a
portable authorization device that is coupled removably to the host
system. Ex. 1002, Abstract, 3:47–49. The portable authorization
device is capable of receiving and storing multiple items of
authorization information associated with a plurality of respective
items of protected information from one or more information
authorities. Ex. 1002, Abstract, 3:49–53. Preferably, the portable
authorization device is capable of communicating with multiple types
of information authorities. Ex. 1002, Abstract, 3:53–55. The
portable authorization device of the present invention selectively
authorizes the host system to use the one or more respective items of
protected information based upon the respective authorization
information stored therein. Ex. 1002, Abstract, 3:56–59. Figure 1 of
Cronce is reproduced below:
IPR2013-00391
Patent 6,857,067 B2

15

As depicted in Figure 1, authorization system 100 is comprised of one
or more access control programs 117 associated with host system 110,
portable authorization device 140, and one or more information
authorities 160, 180, and 185. Ex. 1002, 4:58–61. Authorization
system 100 selectively authorizes host system 110 to use a plurality of
items of protected information 115 associated with the host system.
Claim 1
Claim 1 recites a “registration authority having verification data
for verifying the license data stored on the licensing medium.”
Petitioner contends that Cronce discloses a registration authority
(information authority 160, 180, or 185) having verification data
(identification information) for verifying the license data
(authorization information 171 (in one embodiment, dynamic key
selector 171)) stored on the licensing medium (portable authorization
device 140). Pet. 12–14 (citing Ex. 1002, 14:39–58, Fig. 9, Fig. 10);
Pet. Reply 4–5.
Patent Owner counters that Cronce does not teach this
limitation because Cronce compares fixed key ID 151 to identification
IPR2013-00391
Patent 6,857,067 B2

16
information associated with authorization information 171 (i.e., the
recited “license data”), but not to the authorization information 171
itself. PO Resp. 19–20.
We agree with Patent Owner that the “identification
information” disclosed in Cronce is not “verification data for
verifying the license data,” as we have construed that term, because it
is not used to verify the license data (i.e., authorization information
171). Specifically, Cronce does not disclose, for example, a
comparison of identification information with authorization
information 171. Instead, Cronce’s “identification information” is
compared only to fixed key ID 151, which Petitioner does not identify
as the recited “license data” in its Petition.
In its Reply, Petitioner argues that fixed key ID 151 is “the
license data,” because the ’067 patent defines that term broadly as
“data that is used [ ] to determine whether or not to allow access to
electronic data.” Pet. Reply 7–8 (citing Ex. 1001, 3:65–67; Ex.
2002 ¶ 12). We do not agree, however, that “license data” has the
meaning proposed by Petitioner. Specifically, the sentence relied
upon by Petitioner does not define “license data.” It states only that
“license data is used by the electronic device to determine whether to
allow access to the electronic data.” Ex. 1001, 3:65–67. It does not
state that all data used in the process of determining whether to allow
access to electronic data is license data. Even assuming that Cronce’s
fixed key ID 151 is used in the process of determining whether to
allow access to Cronce’s protected information 115, that is not
sufficient for fixed key ID 151 to be the recited “license data.”
IPR2013-00391
Patent 6,857,067 B2

17
Petitioner also argues in Reply that “there is a comparison
between two pieces of information that, if successful, results in
verified and updated license information being transmitted to the
portable authorization device.” Pet. Reply 5. Neither piece of
information is “verification data for verifying the license data,”
however, unless it is compared with the license data itself. Cronce
discloses no such comparison between its identification information
(i.e., the recited “verification data”) and authorization information 171
(i.e., the recited “license data”).
Petitioner also argues in Reply that Cronce discloses a second
verification process in which the information authority (i.e.,
“registration authority”) has a fixed secret key 152 (i.e., “verification
data”) that is compared to a fixed secret key 152 stored on the
portable authorization device. Pet. Reply 5–7. As with the process
relied upon in the Petition, however, Cronce does not disclose the use
of fixed secret key 152 to “verify” authorization information 171
(which Petitioner identifies as the recited “license data”), such as by a
comparison of the two to confirm a match. Because fixed secret key
152 is not used to verify authorization information 171 it is not
“verification data for verifying the license data,” as we have construed
that term.
In view of the foregoing, we conclude that Petitioner has not
demonstrated sufficiently that Cronce discloses “the registration
authority having verification data for verifying the license data,” as
recited in independent claim 1, and in claims 20 and 31 which depend
therefrom.
IPR2013-00391
Patent 6,857,067 B2

18
Claims 67, 107, and 108
We are persuaded that the limitations of independent method
claim 67, and of independent claims 107 and 108, which recite
substantially the same limitations as claim 67, are met by Cronce. For
example, Cronce discloses storing license data (“The portable
authorization device 140 includes . . . a memory for storing the
authorization information 171.”), determining whether to allow access
to electronic data based on license data (“The portable authorization
device of the present invention selectively authorizes the host system
to use the one or more respective items of protected information based
upon the respective authorization information stored therein.”),
verifying the license data stored on the licensing medium (“The
information authorities 160, 180 and 185 provide respective
authorization information 171 for transmission to the portable
information device 140 to authorize use of the items of protected
information.”), and providing updated license data to the licensing
medium (“the portable authorization device 140 can be updated with
new authorization information 171 from information authorities
160/180/185, as explained below.”). Pet. 10–14 (citing Ex. 1002,
3:56–59, 5:17–25, 5:55–59, 5:35–43).
Patent Owner’s argument that these claims are not anticipated
by Cronce for the same reasons that claim 1 is not anticipated by
Cronce (PO Resp. 21–22) is not persuasive. Unlike claim 1, these
claims do not require that the “verification data” be “for verifying the
license data.” As discussed above, we construe “verification data” to
encompass a list of authorized identifiers. As Petitioner points out,
IPR2013-00391
Patent 6,857,067 B2

19
Cronce discloses that “information authority 160/180/185 transmits
identification information,” and that “[i]n a preferred embodiment of
the invention, the identification information is a number used to
uniquely identify the item of protected information 115 authorized by
the dynamic key selector 171.” Pet. 13–14 (quoting 15:39–58)
(emphasis removed). Because the “identification information” can be
a unique identifier that allows access to protected information 115, it
is “verification data.” And because the information authority (i.e.,
“registration authority”) is transmitting identification information (i.e.,
“verification data”), it necessarily has it. In view of the foregoing, we
conclude that Petitioner has demonstrated sufficiently that Cronce
describes a “registration authority having verification data.”
We also are not persuaded by Patent Owner’s argument that
claims 107 and 108 are not anticipated because Cronce’s comparison
is carried out entirely on portable device 140 (i.e., the recited
“portable licensing medium”) rather than on host system 110 (i.e., the
recited “electronic device”). PO Resp. 22–25. As Petitioner points
out, these claim limitations do not require that the “code for verifying”
perform a comparison; they require only that the “code for verifying”
“communicate with [a] registration authority having verification
data.” Pet. Reply 10. Petitioner relies upon Cronce’s disclosure of
access control program 117 on host system 110 communicating with
an information authority. Id; Pet. 12–14. In view of the foregoing,
we conclude that Petitioner has demonstrated sufficiently that Cronce
describes “code for verifying . . . by communicating with a
registration authority” that is “executable on an electronic device.”
IPR2013-00391
Patent 6,857,067 B2

20
Conclusion
For the foregoing reasons, we determine that Petitioner has
established by a preponderance of the evidence that claims 67, 107,
and 108 are unpatentable under 35 U.S.C. § 102(e) as anticipated by
Cronce, but has not established by a preponderance of the evidence
that claims 1, 20, and 31are unpatentable under 35 U.S.C. § 102(e) as
anticipated by Cronce.
C. Claims 1, 20–22, 30, 31, 67, 107, and 108—Anticipation by Deluca
Petitioner contends that claims 1, 20–22, 30, 31, 67, 107, and
108 are unpatentable under 35 U.S.C. § 102(b) as anticipated by
Deluca. Pet. 32–45.
Patent Owner counters that Deluca does not disclose (1)
“provid[ing] updated license data,” as recited in independent claim 1;
(2) commensurate limitations recited in claims 67, 107, and 108; and
(3) “wherein the licensing medium comprises a memory installed in a
cellular telephone,” as recited in claims 21 and 22. PO Resp. 25–35.
Upon consideration of the parties’ contentions and supporting
evidence, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 1, 20, 30, 31, 67, 107, and
108 are anticipated by Deluca, but has not demonstrated by a
preponderance of the evidence that claims 21 and 22 are anticipated
by Deluca.
Deluca (Exhibit 1004)
Deluca describes a method and apparatus for controlling
utilization of software added to a portable communication device. Ex.
1004, Title, 1:12–15. Figure 1 of Deluca is reproduced below:
IPR2013-00391
Patent 6,857,067 B2

21

Figure 1 of Deluca depicts a communication system comprising fixed
portion 102 (i.e., controller 112 and base stations 116) and portable
portion 104 (i.e., portable communication devices 122). Ex. 1004,
2:3–11. One portable communication device 122 receives a request
for utilization of software. Ex. 1004, Abstract. In response, portable
communication device 122 seeks authorization for utilizing the
software by generating an external authorization request that includes
at least one of a size of the software, a software name, a secure
checksum, and an address identifying the portable communication
device. Id. Portable communication device 122 then communicates
the external authorization request to the fixed portion of the wireless
communication system. Id. The authorization request is received by
controller 112.
Controller 112 is comprised of processor 210, database of
portable device records 216, and database of processes 226. Ex. 1004,
FIG. 2, 3:35–40. Database of portable device records 216 contains a
list of process records 220 for each portable communication device
IPR2013-00391
Patent 6,857,067 B2

22
122. Ex. 1004, 3:40–43. List of process records 220 specifies the
software and hardware processes that are authorized for use by
portable communication device 122 having portable device address
218. Ex. 1004, 3:47–50. Database of processes 226 comprises binary
executables (machine code) of many of the authorized software
processes available for use by portable communication devices 122.
Ex. 1004, 3:58–61.
Authorization requests from portable communication device
122 are received by request receiver element 236 in ROM 228 of
controller 112. Ex. 1004, 5:6–11, 20–45. Processor 210 searches
database of portable device records 216 to find the list of process
records 220 for that portable communication device. Ex. 1004, 5:48–
53. If a match is found, authorization is given to portable
communication device 122 for using the requested software or
hardware process. Ex. 1004, 5:56–58.
Petitioner’s Contentions
We are persuaded that the following limitations of independent
claim 1 are met by the following elements of Deluca:
Independent Claim 1 Deluca
a portable licensing medium RAM 378
license data authorization records 380
a registration authority controller 112
verification data database of portable device records 216
database of process records 226
We also are persuaded that the limitations of independent
method claim 67, and of independent claims 107 and 108, which
IPR2013-00391
Patent 6,857,067 B2

23
recite substantially the same limitations as claim 67, are also met by
Deluca. For example, Deluca discloses storing license data (“RAM
387 further comprises authorization records 380”), determining
whether to allow access to electronic data based on license data
(“When a user requests utilization of a hardware or software process .
. . the processor 308 calls on the authorization element 316 to process
the request.”), verifying the license data stored on the licensing
medium (“In step 616 the encrypted external authorization request is
transmitted to the base stations 116.”), and providing updated license
data to the licensing medium (“In response to obtaining an external
authorization allowing utilization of a process, the processor 308
accesses the creator element 344 to create an internal authorization
record 382.”). Pet. 42–25 (citing Ex. 1004, 7:31–8:5, 9:52–10:39,
15:5–45, and 10:30–11:60).
We also are persuaded that the limitations of dependent claims
20, 30, and 31 are met by Deluca. For example, with respect to the
“random access memory” recited in claim 20, Petitioner cites
Deluca’s disclosure of RAM 378. Pet. 40 (citing Ex. 1004, 7:55–62;
Fig. 3).
Patent Owner’s Arguments
Patent Owner argues that Deluca does not disclose “wherein the
registration authority provides updated license data for the licensing
medium,” as recited in claim 1, because it does not disclose “updated
license data,” as Patent Owner construes that term. PO Resp. 26–31.
Patent Owner argues that Deluca fails to disclose claims 67, 107, and
108, which recite limitations of commensurate scope.
IPR2013-00391
Patent 6,857,067 B2

24
Petitioner counters that (1) Patent Owner’s proposed
construction is too narrow; and (2) even under that construction,
Deluca discloses updating an authorization record by replacing an
expired authorization record with an authorization record directed to
the same software having a new expiration date. Pet. Reply 13–15.
We decline to adopt Patent Owner’s proposed construction of
“updated license data” for the reasons discussed above. We construe
“updated license data” to encompass providing data reflecting the
addition of, or removal of, a software license. Petitioner relies upon
Deluca’s disclosure of a base station/controller that provides an
external authorization response message that processor 308 uses to
update authorization record 380 by creating an internal authorization
record 382. Pet. 38–40 (citing Ex. 1004, 10:30–11:60). In view of the
foregoing, we conclude that Petitioner has demonstrated sufficiently
that Deluca describes “[provides/providing] updated license data.”
Claims 21 and 22
Claim 21 recites “wherein the licensing medium comprises a
memory installed in a cellular telephone.” Claim 22 recites, “A
system according to claim 21, wherein the licensing medium is not
removable from the cellular telephone.”
Petitioner relies upon Deluca’s disclosure of RAM 378 in
portable communications device 122. Pet. 40–41. Patent Owner
argues that the Deluca’s portable communications device 122 is not a
“cellular telephone” because it is merely a pager that lacks a
microphone to facilitate two-way voice communication. PO Resp.
IPR2013-00391
Patent 6,857,067 B2

25
31–33. Petitioner counters that Deluca discloses voice paging and the
ALOHA protocol. Pet. Reply 15.
As discussed above, we construe “telephone” to require both an
earpiece for use in a telephone system and a microphone for use in a
telephone system. We agree with Patent Owner that Deluca does not
disclose a microphone or other audio input for portable
communications device 122. We are not persuaded that Deluca’s
mention of voice paging in the Background of the Invention (Ex.
1001, 1:18–22) discloses that portable communications device 122
can be a telephone. Likewise, we are not persuaded that the mention
of the ALOHA protocol (Id. at 13:52–55) and “other communication
protocols which support two-way communication” (Id. at 14:3–5)
disclose that portable communications device 122 can be a telephone.
Petitioner relies upon Dr. Tygar’s testimony that “[i]t was generally
known at the time that the ALOHA protocol could be used in two-way
cellular voice communications.” Ex. 1015 ¶ 10. Even assuming that
to be true, though, it does not imply that every device capable of using
the ALOHA protocol, such as portable communications device 122, is
necessarily capable of two-way voice communication.
In view of the foregoing, we conclude that Petitioner has not
demonstrated by a preponderance of the evidence that Deluca
discloses a “cellular telephone,” as required by claims 21 and 22.
Conclusion
For the foregoing reasons, we determine that Petitioner has
established by a preponderance of the evidence that claims 1, 20, 30,
31, 67, 107, and 108 are unpatentable under 35 U.S.C. § 102(b) as
IPR2013-00391
Patent 6,857,067 B2

26
anticipated by Deluca, but has not established by a preponderance of
the evidence that claims 21 and 22 are unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Deluca.
III. CONCLUSION
We have considered the record before us in this inter partes
review proceeding. We conclude that Petitioner has met its burden of
proof by a preponderance of the evidence in showing that claims 1,
20, 30, 31, 67, 107, and 108 of the ’067 patent are unpatentable based
upon the following grounds of unpatentability:
Reference Basis Claims challenged
Cronce § 102 67, 107, and 108
Deluca § 102 1, 20, 30, 31, 67, 107, and 108
We further conclude that Petitioner has not met its burden of proof by
a preponderance of the evidence in showing that claims 21 and 22 are
unpatentable under 35 U.S.C. § 102(b) as anticipated by Deluca.
IV. ORDER
Accordingly, it is
ORDERED that claims 1, 20, 30, 31, 67, 107, and 108 of the
’067 patent are held unpatentable;
FURTHER ORDERED that claims 21 and 22 have not been
shown to be unpatentable; and
FURTHER ORDERED that, because this is a Final Written
Decision, the parties to the proceeding seeking judicial review of the
decision must comply with the notice and service requirements of 37
C.F.R. § 90.2.
IPR2013-00391
Patent 6,857,067 B2

27
For PETITIONER:

Eric A. Buresh, Esq.
Mark C. Lang, Esq.
Erise IP, P.A.
eric.buresh@eriseip.com
mark.lang@eriseip.com

For PATENT OWNER

Gregory S. Cordrey, Esq.
Jeffer Mangels Butler & Mitchell LLP
gcordrey@jmbm.com
gxc@jmbm.com

Sean D. Burdick, Esq.
Uniloc USA, Inc.
sean.burdrick@unilocusa.com