Takeaway: Merely suggesting a range of possible implementations without clearly demonstrating specific differences between the art and the claims and how and why one of ordinary skill would have bridged them does not render one implementation obvious in view of another.

In its Decision, the Board denied institution of inter partes review (IPR) of claims 1-5, 8, 9, 15-19, 22, 23, 26-30, 33, and 34 of the ’053 patent. The ’053 patent relates to digital rights management (DRM). In particular, it addresses the problem of downstream distribution by providing “meta-rights” that have the ability to create other user rights.

Under 35 U.S.C. § 312(a)(4), a petition for IPR “may be considered only if,” inter alia, “the petition provides such other information as the Director may require by regulation. One of the mandatory notices required by the Director under 37 C.F.R. § 42.8(b)(2) requires identification of “any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding.” Petitioner identified only a subset of the related matters. The Board noted that Petitioner was aware of at least some of the related matters that it failed to identify in its Petition. While the Petition could have been denied on this basis, the Board declined to make that determination.

Petitioner asserted that the challenged claims are obvious over Gruse and/or the combination of Gruse and Wiggins. Petitioner relied upon the Declaration testimony of Dr. Prakash to support its positions. The Board concluded that Petitioner failed to articulate the differences between Gruse and the claims and to explain how one of ordinary skill in the art would overcome those differences. Rather, Petitioner argued that Gruse suggests a range of possible implementations of its scheme that would have rendered obvious variations of the processes it expressly discloses. Thus, by taking a generalized approach suggesting a range of possible implementations, some of which may fall within the scope of the challenged claims, the Petition fell short of establishing obviousness of the challenged claims.

Patent Owner alleged that Gruse fails to disclose specifying a meta-right in a first license and defining via that meta-right, which is enforceable by a repository, a manner of rights creation for an item. Petitioner alleged that Gruse’s end user device is the claimed repository. The Board concluded that the Petition failed to demonstrate that Gruse’s end user device meets the behavioral integrity and communications integrity of the repository. The Board also noted that Gruse fails to disclose at least one state variable that identifies a location where a state of rights is tracked and associating the at least one state variable with the at least one right in the first location. The Petition relied upon a “MS Computer Dictionary” and the Prakash Declaration to assert that the parameters in Gruse are variables that identify a named storage location. The Board disagreed with Petitioner’s definition of “variable” in rejecting Petitioner’s assertion. The Board also gave no weight to the Declaration because it merely repeated statements made in the Petition.

The Board concluded that Gruse fails to describe how a user device enforces the license watermark on another user device. Thus, Petitioner was unable to establish a reasonable likelihood that it will prevail on the challenged claims. Regarding the combination of Gruse and Wiggins, the Board concluded that Petitioner did not apply the teachings of Wiggins in such a way as to remedy the deficiencies of Gruse.

The Board noted that the Petition included sixty-one exhibits with over thirty-thousand pages. Not all of the exhibits were relied upon in the Petition or cited in the Prakash Declaration. The Board noted that Petitioner is utilizing the Prakash Declaration for eight separate petitions. The Office Patent Trial Practice Guide cautions petitioners to “avoid submitting a repository of all 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.” The Board noted that the Petition “widely misses that mark.”

Apple, Inc. v. ContentGuard Holdings, Inc., IPR2015-00356

Paper 9: Decision Denying Institution of Inter Partes Review

Dated: June 26, 2015

Patents: 8,001,053

Before: Karl D. Easthom, Glenn J. Perry, and Michael J. Fitzpatrick

Written by: Perry

Related proceedings: ContentGuard Holdings, Inc. v. Amazon.com, Inc., Case No. 2:13-cv-01112 (E.D. Tex); IPR2015-00355; IPR2015-00357; IPR2015-00358; IPR2015-00351; IPR2015-00352; IPR2015-00353; IPR2015-00354; Google Inc. v. ContentGuard Holdings, Inc., Case No. 14-cv-0498 (N.D. Cal.); ContentGuard Holdings, Inc. v. Google Inc., Case No. 14-cv-0061 (E.D. Tex.); pending U.S. Application 13/162,826 (continuation of ’053 patent); CBM2015-00040; CBM2015-00043.