Ex Parte 7343414 et al

Patent Trial and Appeal Board

Nov 22, 2013

95001143 (P.T.A.B. Nov. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,143 02/11/2009 7343414 4292.01REX01 4158
24113 7590 11/22/2013
PATTERSON THUENTE PEDERSEN, P.A.
4800 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS, MN 55402-2100
EXAMINER
FERRIS III, FRED O
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/22/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

APPLE INC.
Requester and Respondent

v.

ZAPMEDIA SERVICES, INC.
Patent Owner and Appellant
____________________

Appeal 2013-007872
Reexamination Control 95/001,143
Patent No. US 7,343,414 B1
Technology Center 3900
____________________

Before MARC S. HOFF, JOSEPH A. FISCHETTI,
and STEPHEN C. SIU, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Patent Owner ZapMedia Services, Inc. appeals under 35 U.S.C. §§
134(b) and 315(a) (2002) from the rejection of claims 1-15 as set forth in the
Right of Appeal Notice (RAN) mailed October 20, 2010. Requester Apple,
Inc. filed a respondent brief on February 28, 2011. The Examiner mailed an
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Examiner’s answer on February 20, 2013 which incorporated the RAN by
reference. We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm.
The ‘414 patent issued to Kenneth O. Lipscomb et al. (March 11,
2008), and is assigned to ZapMedia Services, Inc. The ‘414 patent is a
system and method for distributing digital media assets. A portal executes a
media library database server application that manages access to a master
library of media assets that can be accessed by users via one or more
communications networks. A plurality of media player devices (MPDs)
communicate with the portal to access media assets for use. Each MPD may
comprise a processor that executes a database client application that
manages media assets licensed for use by a user (‘414 patent, Abstract).
Claim 1 is exemplary of the claims on appeal:

A method of managing access to a plurality of media assets
comprising the steps of:
providing a user with a user account;
storing references to a plurality of media assets which the user
has a license to use; and
authorizing over a network a plurality of media player devices
with the user account,
wherein the plurality of referenced media assets can be
accessed by anyone of the authorized plurality of media player
devices.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Stefik US 5,715,403 Feb. 3, 1998
Saigh US 7,734,823 Mar. 31, 1998
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Griswold US 5,940,504 Aug. 17, 1999
Downs US 6,226,618 May 1, 2001
Ginter WO 96/27155 Sep. 6, 1996
Mark Stefik, Letting Loose the Light: Igniting Commerce in
Electronic Publication, originally published in From Internet Dreams:
Archetypes, Myths, and Metaphors (MIT Press 1996) (hereinafter “Stefik
article”)
Throughout this decision, we make reference to Appellant’s Brief
(“App. Br.,” filed January 26, 2011) and Third Party Requester’s
Respondent Brief (“Resp. Br.,” ) for their respective details.
REJECTIONS
Patent Owner appeals the Examiner’s rejections as follows:
1. Claims 1-15, rejected under 35 U.S.C. § 102(e) as being anticipated
by Downs.
2. Claims 1-15, rejected under 35 U.S.C. § 102(b) as being anticipated
by Ginter.
3. Claims 1-15, rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stefik in view of the Stefik article.
4. Claims 1-15, rejected under 35 U.S.C. § 103(a) as being
unpatentable over Saigh in view of Ginter.
5. Claims 1-6 and 10-12, rejected under 35 U.S.C. § 102(e) as being
anticipated by Griswold.
6. Claims 7-9 and 13-15, rejected under 35 U.S.C. § 103(a) as being
unpatentable over Griswold in view of Ginter.

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ISSUES
With respect to all the rejections under appeal, Appellant argues that
the Examiner did not properly construe the terms “user account” and
“authorized” media player devices (MPDs). Appellant urges that the Board
should not apply the broadest reasonable interpretation standard for claim
construction in an inter partes reexamination (App. Br. 7-14).
With respect to the § 102 rejection over Downs, Appellant argues that
because Milsted is a continuation-in-part of Downs, Downs was effectively
considered during the original prosecution of the ‘414 patent and cannot
present a substantial new question of patentability (App. Br. 25-26).
Appellant further asserts that the credit card account taught in Downs is not
a “user account” as recited in the claims (App. Br. 27-28). Appellant
contends that Downs does not authorize media player devices with a user
account, as is claimed (App. Br. 28-29). With particular reference to claims
8 and 14, Appellant argues that Downs does not limit a maximum number of
authorized MPDs with the user account (App. Br. 30-31).
With respect to the § 102 rejection over Ginter, Appellant argues that
Ginter’s permissions record (PERC) is not a “user account” as claimed and
does not authorize a media player device (MPD) with a user account as
claimed (App. Br. 31-32). Appellant contends that Ginter authenticates
users, but does not authenticate (sic, authorize) any MPD with a user
account as claimed (App. Br. 34). Appellant similarly asserts that the
“move” operation disclosed by Ginter does not authorize any MPD with the
user account (App. Br. 35). Last, Appellant argues that the “move”
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operation does not limit a maximum number of authorized MPDs with the
user account, as recited in claims 8 and 14 (App. Br. 37).
With respect to the § 103 rejection over Saigh in view of Ginter,
Appellant argues that the Examiner admits that Saigh does not disclose “the
plurality of referenced media assets can be accessed by any one of the
authorized plurality of media player devices” but fails to establish that
Ginter supplies this missing limitation (App. Br. 44-45). Appellant further
contends that the combination of Saigh and Ginter lacks a user account, and
authorizing an MPD with the user account, as the claims require (App. Br.
45-46). Appellant asserts that the combination of Saigh and Ginter does
limit a maximum number of authorized MPDs with the user account, as
claims 8 and 14 recite (App. Br. 46-47).
Appellant’s contentions present us with the following issues:
1. Is “broadest reasonable interpretation” the proper claim
construction standard in inter partes reexamination proceedings?
2. Is the Director’s finding of a substantial new question of
patentability appealable?
3. Does Downs teach a user account?
4. Does Downs teach authorizing MPDs with a user account?
5. Does Downs teach that the number of authorized MPDs is limited
to a maximum number?
6. Does Ginter teach a user account?
7. Does Ginter teach authorizing MPDs with a user account?
8. Does Ginter teach that the number of authorized MPDs is limited to
a maximum number?
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9. Does the combination of Saigh and Ginter teach or fairly suggest a
user account?
10. Does the combination of Saigh and Ginter teach or fairly suggest
authorizing MPDs with a user account?
11. Does the combination of Saigh and Ginter teach or fairly suggest
that “the plurality of referenced media assets can be accessed by any one of
the authorized plurality of media player devices,” as recited in claim 1?
12. Does the combination of Saigh and Ginter teach or fairly suggest
that the number of authorized MPDs is limited to a maximum number?

PRINCIPLES OF LAW
“During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
2010). “Construing claims broadly during prosecution is not unfair to the
applicant (or, in this case, the patentee), because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage.” In
re American Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed.
Cir. 2004) (appeal from reexamination proceeding).
An issue that has been determined by the Director not to raise a
substantial new question of patentability with respect to certain other prior
art cannot later be considered by the examiner and ultimately the Board.
Instead, if a requester disagrees with the Director's determination that no
substantial new question of patentability with respect to certain prior art has
been raised, 37 C.F.R. § 1.927 permits the requester only to file a petition to
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the Director for review of that decision. Belkin Int’l Inc. v. Kappos, 696 F.3d
1379, 1382-83 (Fed. Cir. 2012).
ANALYSIS
CLAIM CONSTRUCTION OF “USER ACCOUNT” AND “AUTHORIZED” MPDS
Appellant concedes that claim construction by a district court is not
binding on the USPTO (App. Br. 10). In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d at 1364; In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed.
Cir. 2007). Appellant nonetheless argues that the Examiner should utilize
prosecution history to properly construe the claims in an inter partes
reexamination proceeding because “the doctrine of prosecution disclaimer
protects the public’s reliance on definitive statements made during
prosecution by precluding patentees from recapturing through claim
interpretation specific meanings clearly and unmistakably disclaimed during
prosecution,” citing Computer Docking Station Corp. v. Dell, Inc., 519 F.3d
1366, 1375 (Fed. Cir. 2008) (App. Br. 19).
We are not persuaded by Appellant’s argument. Computer Docking
Station Corp. is not directly relevant to this proceeding, as it involved an
action for patent infringement, not an inter partes reexamination. In contrast
to the infringement context, where patent prosecution has closed, applicant
has the opportunity during prosecution to amend the claims to obtain more
precise claim coverage. Amer. Acad. Of Sci. Tech Ctr., 367 F.3d at 1364.
We decline to adopt the District Court’s claim construction, as urged by
Appellants (App. Br. 22). Rather, we will follow the holding of our
reviewing court that “[d]uring reexamination, as with original examination,
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the PTO must give claims their broadest reasonable construction consistent
with the specification.” Suitco Surface, Inc., 603 F.3d at 1259.

REVIEW OF FINDING OF SUBSTANTIAL NEW QUESTION OF PATENTABILITY
Appellant argues that Downs fails to present a substantial new
question of patentability, because “Downs was effectively considered during
the original prosecution of the ‘414 Patent . . . . Because Milsted is a
continuation-in-part of Downs, Milsted necessarily discloses everything that
was disclosed in Downs, and more” (App. Br. 26).
Appellant’s argument is moot because the Director’s determination as
to whether a substantial new question of patentability affecting any claim of
the patent is raised by a request for reexamination is not appealable to this
Board. 35 U.S.C. § 312(c); See Belkin Intl Inc. v. 696 F.3d at 1382-83.

ADOPTED GROUND 2, DOWNS, § 102
We are not persuaded by Appellant’s arguments that Downs does not
teach a user account, or authorizing MPDs with a user account (App. Br. 27-
29). Rather, we agree with Respondent that Downs discloses the ability to
authorize, over a network, a plurality of media player devices with a user
account. Downs teaches a user conducting a transaction for the purchase of
rights to certain content (see, e.g., Downs cols. 18-19, steps 136-148). A
user’s credit card account is billed for the purchase (col. 19, steps 137-138).
Downs teaches that, ultimately, “content 113 is sent to the end-user
Device(s) 109” (col. 19, step 148). Downs’s use of “device(s)” indicates
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that one or more devices are to receive the purchased content. The content
will be playable on any device(s) to which it is downloaded.
We do not agree with Appellant that the credit card and billing
accounts referenced in Downs are “merely financial records that have
nothing to do with implementing a media management system” (App. Br.
28). Rather, we agree with Respondent that the credit card account in
Downs corresponds to the claimed user account (Resp. Br. 11). We find that
the credit card account of Downs uniquely identifies a user, and payment via
said credit card enables a user to obtain rights to desired content.
We agree with Respondent that Downs anticipates the subject matter
of claims 8 and 14, which require that “the number of authorized media
player devices are limited to a maximum number.” Downs discloses a
content usage control layer and usage conditions that limit the number of
content copies that can be accessed by authorized devices (Resp. Br. 11;
Downs col. 21, 59). We agree with Respondent that limiting the number of
content copies also functions to limit the number of media player devices
authorized to play the content to a maximum number, as is claimed.

ADOPTED GROUND 1, GINTER, § 102
We are not persuaded by Appellant’s argument that Ginter fails to
disclose the concept of a user account (App. Br. 31). We agree with
Respondent that Ginter teaches that a permissions record (PERC) is “stored
only on electronic appliances 600 of registered users (and may themselves
be delivered to the user as part of a registration/initialization process)”
(Resp. Br. 12; Ginter p. 393). We agree with Respondent that Ginter thus
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teaches storing a user account-specific PERC on a media player device
(electronic appliance /VDE 600), which constitutes “an authorization of the
media player device with a user account for which the PERC was created”
(Resp. Br. 12). We further agree with Respondent that Ginter associates
both the term “electronic appliance” and the term “VDE node” with
reference number 600 (Resp. Br. 14-15; Ginter pp. 25-26, 185, 189, 511).
We do not agree with Appellant that Ginter fails to teach authorizing a
plurality of MPDs with a user account (App. Br. 34-35). We agree with
Respondent that in Ginter, a user can authorize a second MPD with a user
account by repeating the registration/initialization process with a second
device (Resp. Br. 12), or by moving a user account-specific PERC to a
second MPD (Resp. Br. 12; Ginter p. 771). As a result, we find that Ginter
teaches authorizing over a network more than one (i.e. “a plurality of”)
media player devices with a user account, as recited in representative claim
1.
We are not persuaded by Appellant that the “move” operation
disclosed by Ginter fails to teach limiting the number of authorized media
player devices to a maximum number, as claims 8 and 14 recite (App. Br.
37). Ginter discloses that a creator may authorize the moving of usage rights
to only 10 VDE nodes (Ginter p. 779). In another example, Ginter discloses
that a user may employ budgets to limit the number of authorized media
player devices to which rights may be transferred (Resp. Br. 15; Ginter p.
767). We agree with Respondent that limiting the number of copies for
distribution functions to limit the number of authorized media player devices
that can access media (Resp. Br. 15).
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Last, we are not persuaded by Appellant’s argument that Requester
has “cherry-picked” citations to Ginter out of context, in violation of the
Federal Circuit’s requirement that elements be arranged as presented in a
claim (App. Br. 38). We have reviewed the teachings of Ginter cited by
Requester, and we agree that Ginter discloses the management, distribution,
and use of media assets on MPDs arranged in the manner recited by the
claims (see Resp. Br. 16).
ADOPTED GROUND 5, § 103, SAIGH IN VIEW OF GINTER
We are not persuaded by Appellant’s argument that the combination
of Saigh and Ginter does not teach or suggest accessing the plurality of
referenced media assets by any one of the authorized plurality of media
player devices (App. Br. 45).
We first note that the Examiner concedes that Saigh by itself does not
teach accessing a plurality of media assets (Non-Final Action mailed April
16, 2009, p. 17). We agree with Respondent that, contrary to Appellant’s
argument (App. Br. 45), Saigh teaches a user account (an account created for
a user) (col. 9, ll. 28-38) that specifies at least one authorized media player
device (a reader with a unique serial number, col. 9, l. 64 – col. 10, l. 1). We
further agree with Respondent that the user-account and device-specific
permission record (PERC) taught in Ginter could be created for more than
one of the user’s reader devices and/or cartridges in Saigh, to manage access
to media across multiple devices (Resp. Br. 20). As discussed supra, Ginter
teaches that a permissions record (PERC) may be delivered to the user as
part of a registration/initialization process (Resp. Br. 12; Ginter p. 393), and
teaches authorizing a second MPD with a user account by repeating the
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registration/initialization process with a second device (Resp. Br. 12), or
moving a user account-specific PERC to a second MPD (Resp. Br. 12;
Ginter p. 771).
We are not persuaded by Appellant’s argument that Saigh lacks a
teaching of “a server application accessible over a network and capable of
recognizing a plurality of MPDs as being authorized with the user account,”
as claim 4 recites (App. Br. 45). As explained supra, we agree with
Respondent that Ginter supplies a teaching of authorizing a plurality of
MPDs with a user account. Thus, we will sustain the rejection of claim 4, for
the same reasons given with respect to claim 1.
With respect to claims 8 and 14, we are not persuaded by Appellant’s
argument that neither Saigh nor Ginter teach that a maximum number of
media player devices are authorized (App. Br. 46). As noted supra, we agree
with Respondent that Ginter may, for example, authorize the moving of
usage rights to only 10 VDE nodes (Resp. Br. 15; Ginter p. 779). Limiting
the number of copies for distribution also functions to limit the number of
authorized media player devices that can access media (Resp. Br. 15).
OTHER GROUNDS NOT REACHED
Affirmance of the rejection of claims 1-15 based on Downs, Ginter,
and Saigh in view of Ginter renders it unnecessary to reach the propriety of
the Examiner’s decision to reject those claims on a different basis. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach
the propriety of the rejection of the claims over Stefik in view of Stefik
article, Griswold, or Griswold in view of Ginter.

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CONCLUSIONS
1. “Broadest reasonable interpretation” is the proper claim
construction standard in inter partes reexamination proceedings.
2. The Director’s finding of a substantial new question of patentability
is not appealable.
3. Downs teaches a user account.
4. Downs teaches authorizing MPDs with a user account.
5. Downs teaches that the number of authorized MPDs is limited to a
maximum number.
6. Ginter teaches a user account.
7. Ginter teaches authorizing MPDs with a user account.
8. Ginter teaches that the number of authorized MPDs is limited to a
maximum number.
9. The combination of Saigh and Ginter teaches a user account.
10. The combination of Saigh and Ginter fairly suggests authorizing
MPDs with a user account.
11. The combination of Saigh and Ginter fairly suggests that “the
plurality of referenced media assets can be accessed by any one of the
authorized plurality of media player devices,” as recited in claim 1.
12. The combination of Saigh and Ginter teaches that the number of
authorized MPDs is limited to a maximum number.
ORDER
The Examiner’s rejection of claims 1-15 is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956.
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AFFIRMED

ack

Patent Owner:
Brad Patterson
Patterson, Thuente, Skaar & Christensen, P.A.
4800 IDS Center
80 South 8th Street
Minneapolis, MN 55402-2100

Third Party Requester
NOVAK DRUCE & QUIGG, LLP
(NDQ REEXAMINATION GROUP)
1000 LOUISIANA STREET, FIFTY-THIRD FLOOR
HOUSTON, TX 77002