Takeaway: The Board will tend to disfavor a claim interpretation that would render a claim term or phrase superfluous.

In its Decision, the Board concluded that a reasonable likelihood had not been shown that Petitioner would prevail as to at least one of the claims challenged in the Petition. Consequently, no trial was instituted. The Petition was denied.

Petitioner had sought inter partes review of claims 1-5, 8, 11-16, 19, 22, 24-28, 31, and 34 of the ‘280 patent. The ‘280 patent purportedly relates to “transferring rights associated with an item—presumably a digital work—from a supplier to a consumer.” The asserted ground of unpatentability were: (1) obviousness of claims 1-5, 8, 11-16, 19, 22, 24-28, 31, and 34 under 35 U.S.C. § 103(a) in view of England; (2) obviousness of claims 1-5, 8, 11-16, 19, 22, 24-28, 31, and 34 under 35 U.S.C. § 103(a) in view of England and Gruse; (3) obviousness of claims 1-5, 8, 11-16, 19, 22, 24-28, 31, and 34 under 35 U.S.C. § 103(a) in view of England and Wiggins; and (4) obviousness of claims 1-5, 8, 9, 15-19, 22, 23, 26-30, 33, and 34 in view of England, Gruse, and Wiggins.

The Board proceeded with claim construction under the broadest reasonable interpretation (BRI) standard. Among the claim terms construed by the Board were “repository,” “means for obtaining,” “means for determining,” and “means for exercising.” In this regard, the Board construed the claim term “repository” to mean “a trusted system which maintains physical, communications, and behavioral integrity, and supports usage rights.” The Board “[declined] to adopt the language in Petitioner’s proposed construction pertaining to ‘using information that enables it to enforce both ‘meta-rights’ and ‘usage rights’ associated with a particular digital work” because, if it were to adopt this language, “it would render the claim phrase a ‘meta-right . . . enforceable by a repository,’ explicitly recited in independent claims 1, 12, and 24, superfluous.”

Regarding the means-plus-function limitations, the Board found that “Petitioner only addresses the recited functions of the mean-plus-function limitations, but does not identify any structure in the ‘280 specification that corresponds to the limitations.” This, in turn, led the Board to conclude that “[it was] not persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to independent claims 12 and 24, or dependent claims 13-16, 19, 22, 25-28, 31, and 34, on any of the challenged grounds.”

As for the proposed obviousness grounds, the Board concluded that Petitioner had not “presented sufficient evidence to support a finding that England teaches the claimed ‘repository’ that exhibits ‘communications integrity.’” In particular, the Board concluded that “England’s subscriber computer 200 running DRMOS operating system 205 does not constitute a claimed ‘repository’ that exhibits ‘communications integrity’ because England does not teach a mechanism for the subscriber computer to verify that content provider server computer 220 is a trusted system.” Moreover, “[i]n each of these asserted grounds based on obviousness, [Petitioner] does not apply the teachings of Gruse or Wiggins in such a way that remedies the deficiencies regarding a repository in England[.]”

Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00353

Paper 9: Decision Denying Institution of Inter Partes Review

Dated: June 25, 2015

Patent: 7,774,280 B2

Before: Michael R. Zecher, Benjamin D. M. Wood, and Georgianna W. Braden

Written by: Braden

Related Proceedings: ContentGuard Holdings, Inc. v. Amazon.com Inc., et al., No. 2:13-cv-01112-JRG (E.D. Tex.); Google Inc. v. ContentGuard Holdings, Inc., No. 3:14-cv-00498-WHA (N.D. Cal.); ContentGuard Holdings, Inc. v. Google Inc., No. 2:14-cv-00061-JRG-RSP (E.D. Tex); IPR2015-00351; IPR2015-00352; IPR2015-00354); IPR2015-00355; IPR2015-00356; IPR2015-00357; and IPR2015-00358