Ex Parte Millar et al

Patent Trial and Appeal Board

Dec 15, 2015

12224749 (P.T.A.B. Dec. 15, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/224,749 10/10/2008
133732 7590
Hahn Loeser & Parks, LLP
Cisco Technology INC.
125 South Wacker Drive
Suite 2900
Chicago, IL 60606
12/17/2015
FIRST NAMED INVENTOR
Keith Millar
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
72511102747 2748
EXAMINER
LANIER, BENJAMINE
ART UNIT PAPER NUMBER
2437
NOTIFICATION DATE DELIVERY MODE
12/17/2015 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Patents@hahnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH MILLAR and COLIN HARVEY
Appeal2013-004830
Application 12/224,749
Technology Center 2400
Before HUNG H. BUI, LINZY T. McCARTNEY, and
JOHN A. HUDALLA, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 36-40, 50, and 51. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE. 2
1 According to Appellants, the Real Party in Interest is NDS Ltd. App. Br.
2.
2 Our Decision refers to Appellants' Appeal Brief filed October 3, 2012
("App. Br."); Reply Brief filed February 11, 2013 ("Reply Br."); Examiner's
Answer mailed December 14, 2012 ("Ans."); Final Office Action mailed
April 17, 2012 ("Final Act."); and original Specification filed September 5,
2008 ("Spec.").
Appeal2013-004830
Application 12/224,749
STATEMENT OF THE CASE
Appellants 'Invention
IPTV (Internet Protocol Television) video content is typically
compressed, encrypted, and then sent in a transport stream delivered via IP
Multicast in case of live TV video content or via IP Unicast in case of Video
on Demand (VOD) content. Spec. 1:11-17. Control words (keys) used to
encrypt or decrypt the video are typically inserted into entitlement control
message (ECM) packets and these ECMs are delivered to a set top box
(STB) as part of the video transport stream or on a separate port within the
same multicast on which the transport stream is delivered. Id. at 2:3-8.
However, there are alleged problems associated with (1) video content
recording equipment storing such ECMs, and (2) an IPTV system where the
bandwidth from a TV operator to a subscriber is limited and does not allow
for the simultaneous delivery of two A/V streams to a subscriber. Id. at
2:27-3:6.
Appellants' invention seeks to address these problems and recites a
method of decrypting content at a client (receiver end) in which: (1) actual
control messages that include information for generating control words used
to scramble content (digital data) are received and stored independently of
the scrambled content (digital data); (2) a portion of the content (scrambled
digital data) is received via a multicast or a broadcast where the user has
requested "rewinding past the tune point"; and (3) the content (scrambled
digital data) received via unicast is decrypted using the actual control
messages associated with the previous portion of the content (prior to the
tune point) and the actual control messages stored at the client. Id. at 9:21-
10:6.
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Application 12/224,749
Illustrative Claim
Claims 36 and 50 are independent. Illustrative claim 36 is reproduced
below with disputed limitations in italics:
3 6. A method of decrypting a scrambled digital data item at a
client, said method comprising:
receiving a request at said client from a user to tune to a
channel;
receiving via a multicast or a broadcast television
network, actual control messages at said client, wherein each
actual control message comprises control word generating
information for generating a control word associated with
the actual control message;
storing said actual control messages at said client;
receiving, via a multicast or a broadcast television
network, at said client, a portion of said scrambled digital data
item after a tune point in said scrambled digital data item at
which said user tuned to said channel, wherein said portion of
said scrambled digital data item is received independently of
said actual control messages;
receiving a further request at said client from said user to
re\~1ind past the tune point;
stopping the receiving of said portion of said scrambled
digital data item while continuing to receive and store actual
control messages;
receiving, via a unicast, actual control messages
associated with a previous portion of said scrambled digital data
item prior to the tune point;
receiving, via a unicast, said scrambled digital data item;
and
decrypting said scrambled digital data item received via
unicast using said actual control messages associated with said
previous portion and said actual control messages stored at said
client;
wherein said scrambled digital data item comprises a
plurality of segments of scrambled digital data, each segment of
scrambled digital data being associated with one of said actual
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Application 12/224,749
control messages and being scrambled with the control word
associated with said one of said actual control messages, and
wherein said scrambled digital data item further
comprises a plurality of reference control messages, each
segment of scrambled digital data comprising one of said
reference control messages, each of said reference control
messages comprising a control message reference value
identifying the actual control message associated with the
segment of scrambled digital data.
App. Br. 15-18 (Claims Appendix).
Examiner's Rejections
(1) Claims 36-40 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wald (U.S. Publication No. 2007 /0124602 Al; May 31,
2007), Li (U.S. Publication No. 2007/0101012 Al; May 3, 2007), and
Nishimoto (U.S. Publication No. 2006/0155989 Al; July 13, 2006). Final
Act. 4---6.
(2) Claims 50 and 51 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chen (U.S. Publication No. 2004/0083177 Al;
April 29, 2004), Nishimoto, and Baran (U.S. Publication No. 2003/0200548
Al; October 23, 2003). Final Act. 6-8.
ANALYSIS
§ 103(a) Rejection of Claims 36-40 based on Wald, Li, and Nishimoto
With respect to claim 3 6, the Examiner finds Wald discloses a
conditional access system wherein a user receives multicast/broadcast
television content at a set-top box having most of Appellants' claimed steps,
including, for example:
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Application 12/224,749
(1) "receiving via a multicast or a broadcast television
network, actual control messages at said client, wherein each
actual control message comprises control word generating
information for generating a control word associated with the
actual control message;"
(2) "storing said actual control messages at said client;"
(3) "receiving, via a multicast or a broadcast television
network, at said client, a portion of said scrambled digital data
item after a tune point in said scrambled digital data item at
which said user tuned to said channel," for subsequent
( 4) "decrypting said scrambled digital data item received via
unicast using [i] said actual control messages associated with
said previous portion [prior to the tune point that are received
via a multicast] and [ii] said actual control messages stored at
said client [associated with the post-tune point of the content
that continue to be received via the multicast or the broadcast]"
( 5) "wherein said scrambled digital data item comprises a
plurality of segments of scrambled digital data, each segment of
scrambled digital data being associated with one of said actual
control messages and being scrambled with the control word
associated with said one of said actual control messages."
Final Act. 4--5 (citing Wald i-fi-137, 265).
The Examiner then acknowledges Wald does not disclose, but finds
Li teaches "the client requesting to rewind pas [sic] the tune point" and
Nishimoto teaches "the encrypted content and ECMs are transmitted
separately" in order to support the conclusion of obviousness, i.e.,
[i]t would have been obvious ... for the conditional access
system of Wald to provide users with the ability [ 1] to rewind
live television in the manner described in Li ... [and] [2] 1QJry
transmitting the encrypted content and ECMs separately
because Nishimoto discloses that separate transmission of
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Application 12/224,749
content and ECMs is one a finite number of possible solutions
that could be implemented by a skilled artisan with a reasonable
expectation of success.
Id. at 5---6 (emphasis and brackets added) (internal citation omitted) (citing
Li i-f 17; and Nishimoto i-fi-186, 88).
Appellants present several arguments against the Examiner's
combination of Wald, Li, and Nishimoto. App. Br. 5-13; Reply Br. 2--4. In
particular, Appellants argue Nishimoto does not teach or suggest "separate
transmission of content and ECMs" (Appellants' claimed "actual control
messages"). App. Br. 8 (citing Nishimoto i-fi-1 86 and 88). According to
Appellants, paragraphs 86 and 88 of Nishimoto describe "the second
encryption-key related information" as being "transmitted separately from
the encrypted content" and that "Nishimoto['s] second encryption-key
related information includes a purchase flag and an expiration date." App.
Br. 8 (citing Nishimoto i-fi-1 66 and 87); Reply Br. 2. As such, Appellants
argue: ( 1) "Nishimoto [' s] second encryption-key related information" cannot
be characterized as Appellants' claimed "actual control messages"; (2)
"Nishimoto cannot be characterized as suggesting separate transmission of a
plurality of data segments and their respective associated actual control
messages" "for decryption where the user has requested rewind past the tune
point" as recited in claim 36; and consequently (3) the Examiner's
combination of Wald, Li, and Nishimoto does not teach or suggest
"receiving a portion of the scrambled digital data items independently of the
actual control messages" as recited in claim 36. App. Br. 10-11; Reply Br.
2-3.
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In response, the Examiner reiterates: (1) "Nishimoto discloses that the
ECMs can be transmitted separately from the content that is encrypted using
control words contained within the ECMs" (Ans. 3 (citing Nishimoto i-f 88));
and (2) "Li discloses the user of a settop box requesting a rewind operation
that is received by the stream server that establishes a unicast session with
the requesting settop box and transmits the requested content" (id. at 4
(citing Li i-f 1 7)).
We agree with Appellants only in part and do not agree with the
Examiner's findings regarding Wald and Nishimoto. At the outset, we note
Appellants' claim 3 6 does not require "separate transmission of content and
ECMs" (Appellants' claimed "actual control messages") as characterized by
the Examiner and argued by Appellants. Final Act. 6; App. Br. 8-10.
Instead, Appellants' claim 3 6 recites independent reception of content and
Appellants' claimed "actual control messages." Specifically, Appellants'
claim 3 6 recites, inter alia: (1) "receiving via a multicast or a broadcast
television network, actual control messages at said client"; (2) "storing said
actual control messages at said client;" and then (3) "receiving, via a
multicast or a broadcast television network, at said client, a portion of said
scrambled digital data item after a tune point in said scrambled digital data
item at which said user tuned to said channel, wherein said portion of said
scrambled digital data item is received independently of said actual control
messages" for subsequent (4) "decrypting said scrambled digital data item
received via unicast using [i] said actual control messages associated with
said previous portion [prior to the tune point that are received via a
multicast] and [ii] said actual control messages stored at said client
[associated with the post-tune point of the content that continue to be
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Application 12/224,749
received via the multicast or the broadcast]" (emphasis added). As such, the
Examiner's reliance on Nishimoto for teachings related to separate
transmission is misplaced.
Moreover, we see no evidence in the record to support the Examiner's
findings that Wald discloses the independent reception of content and
Appellants' claimed "actual control messages" or the decryption of content
received via unicast using ( 1) the actual control messages associated with a
previous portion of content [prior to the tune point that are received via a
multicast] and (2) the actual control messages stored at the client [associated
with the post-tune point of the content that continue to be received via the
multicast or the broadcast] in the manner recited in claim 3 6. Contrary to
the Examiner's findings, the cited paragraphs 37 and 265 of Wald only refer
to the use of "a secure content license having ... a Baseline Entitlement
Control Message (BL-ECM) including an indication of a control word for
decrypting the unit of content" and "[ t ]he content is encrypted in accordance
with the control words contained in the BL-ECM." See Wald i-fi-137 and 265.
Neither paragraph 37 nor paragraph 265 of Wald teaches or suggests the
steps of Appellants' claim 36 relied on by the Examiner. Ans. 3--4.
"[O]bviousness requires a suggestion of all limitations in a claim."
CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
(citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). Because the
Examiner has not shown the combination of Wald, Li, and Nishimoto
discloses or suggests all the limitations of independent claim 3 6, we do not
sustain the Examiner's obviousness rejection of claim 36 and its dependent
claims 37--40 based on Wald, Li, and Nishimoto.
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Application 12/224,749
§ 103(a) Rejection of Claims 50 and 51 based on
Chen, Nishimoto, and Baran
With respect to claim 50, Appellants argue: (1) the Examiner's
reliance on Nishimoto for the "separate processing of content and ECMs" is
misplaced because "Nishimoto second encryption-key related information
cannot fairly be characterized as the claimed actual control messages"; and
(2) the combination of Chen, Nishimoto, and Baran does not suggest
Appellants' claimed "storing the actual control message at the client without
storing the further portion of the scrambled digital data item" as recited in
claim 50. App. Br. 13.
The Examiner responds: (1) "Chen discloses that the received content
can be processed and viewed without storing"; and (2) "Nishimoto discloses
that the ECMs can be transmitted separately from the encrypted content
([0088]) and stored in a storage unit ([0091])." Ans. 5-6 (citing Chen i-f 3;
Nishimoto i-fi-188 and 91).
We do not agree with the Examiner. Again, claim 50 does not require
"separate transmission of content and ECMs" (Appellants' claimed "actual
control messages") as characterized by the Examiner. Final Act. 8. Instead,
claim 50 recites steps similar to those of claim 36, including: "receiving
actual control messages at said client," "storing said actual control messages
at said client" and then "receiving a further portion of said scrambled digital
data item at said client" for subsequent "decrypting said further portion of
said scrambled digital data item using said plurality of actual control
messages without storing said further portion of said scrambled digital data
item at said client." These steps are neither disclosed nor suggested by Chen
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Application 12/224,749
or Nishimoto. Accordingly, we do not sustain the Examiner's obviousness
rejection of claim 50 and its dependent claim 51 based on Chen, Nishimoto,
and Baran.
CONCLUSION
On the record before us, we conclude Appellants have demonstrated
the Examiner erred in rejecting claims 36-40, 50, and 51under35 U.S.C.
§ 103(a).
DECISION
As such, we REVERSE the Examiner's final rejection of claims 36-
40, 50, and 51.
REVERSED
msc
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