Unified Patents v. Grecia, IPR2016-00600

IPR2016-00600 Petition
U.S. Patent 8,533,860

DOCKET NO.: 098173-0966641
Filed on behalf of Unified Patents Inc.
By: Paul C. Haughey, Reg. No. 31,836
Scott Kolassa, Reg. No. 55,337
Kilpatrick Townsend & Stockton LLP
Two Embarcadero Center, Eighth Floor
San Francisco, CA 94111-3834
Tel: (415) 576-0200
Email: phaughey@kilpatricktownsend.com
Jonathan Stroud, Reg. No. 72,518
Unified Patents Inc.
1875 Connecticut Av. NW, Floor 10
Washington D.C., 20009
Tel: (202) 805-8931
Email: jonathan@unifiedpatents.com
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
UNIFIED PATENTS INC.

Petitioner
v.
WILLIAM GRECIA
Patent Owner
IPR 2016-00600
Patent 8,533,860
PETITION FOR INTER PARTES REVIEW OF
U.S. PATENT NO. 8,533,860
CHALLENGING CLAIMS 130
UNDER 35 U.S.C. 312 AND 37 C.F.R. 42.104
i
U.S. Patent 8,533,860
TABLE OF CONTENTS
I.
MANDATORY NOTICES ........................................................................ - 1 A.
Real Party-in-Interest ....................................................................... - 1 -
B.
Related Matters................................................................................. - 1 -
C.
Counsels ........................................................................................... - 2 -
D.
Service Information, Email, Hand Delivery, and Postal .................. - 2 -
II.
CERTIFICATION OF GROUNDS FOR STANDING ............................. - 2 -
III.
OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ............... - 2 A.
B.
IV.
Prior Art Patents and Printed Publications ....................................... - 3 1.
U.S. Patent No. 6,891,953 (filed on June 27, 2000 and

issued on May 10, 2005) (DeMello (EX1006)), which
is prior art under 35 U.S.C. 102(b). .................................... - 3 -
2.
U.S. Pub. No. 2008/0313264 (filed on Jun. 12, 2007 and

published on Dec. 18, 2008) (Pestoni (EX1007)),
which is prior art under 35 U.S.C. 102(b). ......................... - 3 -
3.
U.S. Pat. 6,385,596 (filed Feb. 6, 1998 and issued May 7,

2002) (Wiser (EX1008)), which is prior art under 35
U.S.C. 102(b). Wiser is cited for the customization
module of claims 2130 and the royalty scheme of
claim 26. ................................................................................. - 3 -
4.
U.S. Pub. No. 20090037388 (filed Aug. 1, 2008 and was

published Feb. 5, 2009) (Cooper (EX1009)), which is
prior art under 35 U.S.C. 102(b). Cooper is cited for the
remote operation of claim 17. ................................................ - 3 -
Grounds for Challenge ..................................................................... - 4 -
OVERVIEW OF THE 860 PATENT ....................................................... - 4 A.
Priority Date of the 860 Patent........................................................ - 4 -
U.S. Patent 8,533,860
V.
VI.
B.
Summary of the 860 Patent ............................................................. - 5 -
C.
Summary of Relevant Prosecution File History ............................ - 10 -
D.
Person of Ordinary Skill in the Art ................................................ - 11 -
CLAIM CONSTRUCTION ..................................................................... - 11 A.
verified web service .................................................................... - 12 -
B.
metadata of the digital content .................................................... - 13 -
C.
two way data exchange session .................................................. - 13 -
D.
a verification token corresponding to the digital content ..... - 14 -
PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A

REASONABLE LIKELIHOOD OF PREVAILING ............................... - 15 A.
Ground 1: Claims 120 are unpatentable as obvious over

DeMello (EX1006) in view of the admitted prior art..................... - 15 -
B.
Ground 2: Claims 120 are unpatentable as obvious over

Pestoni (EX1007) in view of the admitted prior art....................... - 15 -
C.
Ground 3: Claims 21-30 are unpatentable over DeMello

(EX1006) in combination with Wiser (EX1008). .......................... - 48 -
D.
Ground 4: Claims 21-30 are unpatentable over Pestoni in

combination with Wiser (EX1008). ............................................... - 48 -
E.
Ground 5: Claims 17 and 30 are unpatentable over DeMello

(EX1006) in combination with Wiser (EX1008) and Cooper
(EX1009). ....................................................................................... - 58 -
VII. CONCLUSION......................................................................................... - 60 -
ii
U.S. Patent 8,533,860
EXHIBIT LIST
Exhibit No.
Description
1001
U.S. Patent No. 8,533,860 to Grecia.
1002
1003
1004
Grecia v. Amazon.com, No. 2:14-cv-00530 (W.D. Wash. Dec.

22, 2014) (Joint claim construction statement by Patent Owner
and Amazon), and Ex. C
1005
Sony Network Entertainment Intl v. Grecia, IPR2015-00422,

Preliminary Response (PTAB Mar. 11, 2015)
1006
U.S. Patent No. 6,891,953 to DeMello et al., Prior Art under 35

U.S.C. 102(b)
1007
U.S. Pub. No. 20080313264 to Pestoni, Prior Art under 35

U.S.C. 102(b)
1008
U.S. Pat. 6,385,596 to Wiser, Prior Art under 35 U.S.C. 102(b)
1009
U.S. Pub. No. 20090037388 to Cooper, Prior Art under 35

U.S.C. 102(b)
1010
Declaration of Ravi S. Cherukuri & Exhibits AD
1011
Unified Patents Inc. Voluntary Interrogatories
iii
U.S. Patent 8,533,860
I.
MANDATORY NOTICES
A.
Real Party-in-Interest
Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified is the real
party-in-interest, and further certifies that no other party exercised control or could
exercise control over Unifieds participation in this proceeding, the filing of this
petition, or the conduct of any ensuing trial. See Unified Patents Inc. Voluntary
Interrogatories (EX1011).
B.
Related Matters
U.S. Patent No. 8,533,860 ( 860 Patent (EX1001)) has a parent U.S.
Patent No. 8,402,555 ( 555 Patent (EX1002)) and a continuation U.S. Patent No.
8,887,308 ( 308 Patent (EX1003). On Dec. 6, 2013 Grecia sued Microsoft,
Google, Sony Network Entertainment International and Apple for infringement of
the 860 Patent. Between Feb. 20, 2014 and Nov. 30, 2015, Grecia has sued the
following for infringement of different combinations of the three patents: Adobe
Systems, American Express, Visa, MasterCard, Charter Communications, Time
Warner Cable, AT&T Services, DirecTV, WideOpenWest Finance, RCN Telecom
Services, Network L.C.C., Charter Communications, Time Warner Cable,
Comcast, DISH Network, Amazon.com, Samsung Telecommunications America
and Vudu.
-1-
U.S. Patent 8,533,860
A petition for inter partes review was filed by Sony Network Entertainment
International LLC, IPR2015-00422, on December 14, 2014, but was dismissed
prior to institution at the request of the parties.
C.
Counsels
Lead Counsel for Petitioner is Paul C. Haughey (Reg. No. 31,836), of
Kilpatrick Townsend & Stockton LLP. Back-up Counsel is Jonathan Stroud (Reg.
No. 72,518), of Unified, and Scott E. Kolassa (Reg. No. 55,337), of Kilpatrick
Townsend & Stockton LLP.
D.
Service Information, Email, Hand Delivery, and Postal

Unified
consents
phaughey@kilpatricktownsend.com,
to
electronic
service
at
jonathan@unifiedpatents.com,
and
SKolassa@kilpatricktownsend.com.
II.
CERTIFICATION OF GROUNDS FOR STANDING

Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
review is sought is available for inter partes review and that Petitioner is not
barred or estopped from requesting and inter partes review challenging the patent
claims on the grounds identified in this Petition.
III.
OVERVIEW OF CHALLENGE AND RELIEF REQUESTED

Pursuant to Rules 42.22(a)(1) and 42.104(b(1)-(2), Petitioner challenges
claims 1-30 of the 860 Patent.

-2-
U.S. Patent 8,533,860
A.
Prior Art Patents and Printed Publications

The following references are pertinent to the grounds of unpatentability
explained below:1
1.
U.S. Patent No. 6,891,953 (filed on June 27, 2000 and issued on May 10,
2005) (DeMello (EX1006)), which is prior art under 35 U.S.C. 102(b).
2.
U.S. Pub. No. 2008/0313264 (filed on Jun. 12, 2007 and published on Dec.
18, 2008) (Pestoni (EX1007)), which is prior art under 35 U.S.C.
102(b).
3.
U.S. Pat. 6,385,596 (filed Feb. 6, 1998 and issued May 7, 2002) (Wiser
(EX1008)), which is prior art under 35 U.S.C. 102(b). Wiser is cited for
the customization module of claims 2130 and the royalty scheme of
claim 26.
4.
U.S. Pub. No. 20090037388 (filed Aug. 1, 2008 and was published Feb. 5,
2009) (Cooper (EX1009)), which is prior art under 35 U.S.C. 102(b).
Cooper is cited for the remote operation of claim 17.
The 860 Patent issued from a patent application filed prior to enactment of
the America Invents Act (AIA). Accordingly, pre-AIA statutory framework

applies.
-3-
U.S. Patent 8,533,860
B.
Grounds for Challenge

This Petition, supported by the declaration of Ravi S. Cherukuri (Cherukuri
Decl.) (EX1010) requests cancellation of challenged claims 130 of the 860

Patent as unpatentable under 35 U.S.C. 103. Two main references are used, with
additional references for dependent claims.
IV.
OVERVIEW OF THE 860 PATENT
A.
Priority Date of the 860 Patent

The 860 Patent is a continuation of Application No. 13/397,517, filed on
February 15, 2012, now Patent 8,402,555 (the 555 Patent), which is a
continuation of Application Number 12/985,351, filed on January 6, 2011, which is
a continuation of Application Number 12/728,218, filed on March 21, 2010, which
is now abandoned.
Although not listed on the 860 Patent or Certificate of
Correction, in the November 27, 2012 response in the prosecution history of the
555 Patent, the Patent Owner claimed priority to his Provisional Application
Number 61/303,292 (filed Feb. 10, 2010) to swear behind U.S. Pre-Grant
Publication Number 2011/0288946 to Baiya. Petitioner does not believe the 860
Patent is entitled to the February 10, 2010 priority date, but assumes that is the
effective date for the purposes of this petition, since all the prior art presented here
has an effective date of more than a year earlier than this date.
-4-
U.S. Patent 8,533,860
B.
Summary of the 860 Patent

The 860 Patent is directed to Digital Rights Management (DRM). The prior
art was alleged to tie media to a particular user or limited number of devices:
The current metadata writable DRM measures do not offer a
way to provide unlimited interoperability between different
machines. Therefore, a solution is needed to give consumers the
unlimited interoperability between devices . . . .
860 Patent (EX1001) at 2:13:7.
DRM schemes for e-books include embedding credit card
information and other personal information inside the metadata
area of a delivered file format and restricting the compatibility
of the file with a limited number of reader devices and
computer applications.
Id. at 2:1822.
The alleged innovation of the 860 Patent is to obtain a
membership identification reference (e.g., Facebook ID) from a website providing

membership and write it into the metadata of the media. This allows anyone with
the membership reference ID to access the media on any device. The claim
elements of claim 1 and the other challenged claims correspond to the steps of
Figure 6 of the 860 Patent, copied below:
-5-
U.S. Patent 8,533,860
Claim 1 of the 860 Patent includes many alternative limitations, and is

summarized below with the letters corresponding to the elements in the claim
charts below, and the numbers corresponding to Fig. 6 above:
[A] Preamble: Authorizing access to plural data processing devices (multiple
user devices) using a cloud (Internet).
[B] (602) Receive user request, with verification token, for content access.
[C] (604) The verification token is authenticated. The claims of the parent 555
-6-
U.S. Patent 8,533,860
Patent limited step 604 to a membership verification token (e.g., Amazon
password), while the claims of the 860 Patent list a variety of tokens. Patent
Owner admits that steps B and C are in the prior art (as discussed below).
[D] (606) Establish a connection with user communication module (module
is a GUI and API related to a web service)
[E] (608) An identification reference (e.g., Facebook login) is requested
from the user.
[F] (610) The identification reference is received.
[G] (612) The verification token or identification reference is written into the
content metadata. Patent Owner admits this step is in the prior art.
Patent Owner has suggested that the particular order set forth above is
required, and that all corresponding 6 modules of Figure 1 must be present and
separate. See Sony Network Entertainment Intl v. Grecia, IPR2015-00422 at 34,
1718 (PTAB Mar. 11, 2015) (Preliminary Response) (Sony v. Grecia
Preliminary Response (EX1005)). However, the Provisional Application never
mentioned the word module as used in the claims, and did not have the module
diagram of Fig. 1. The module term was added to described method steps in
claim 9, and the order of the method steps (claim 1) is described in the 860 Patent
as not limiting:
-7-
U.S. Patent 8,533,860
In this document, relational terms such as `first` and
second`, and the like may be used solely to distinguish
one entity or action from another entity or action without
necessarily requiring or implying any actual such
relationship or order between such entities or actions.
860 Patent (EX1001), at 4:6064. Figure 3 of the 860 Patent, copied below,
shows an embodiment where a user obtains content using GUI 301 on the left,
using a verification token that is authenticated (a membership verification
token in the 555 Patent claims, but a list of options in the 860 Patent claims).
This corresponds to the first two steps, 602 and 603, which are admitted prior art.
Note the same described system performs both steps. Then, the user uses GUI 307
on the right to contact a verified web service (e.g., Facebook) to verify the user
using an electronic ID (e.g., Facebook login). The same system performs the last
three steps.
-8-
U.S. Patent 8,533,860
Petitioner notes that the term excelsior enabler as used in the specification
simply means user. Patent Owner characterized it as follows: authorized users
(excelsior enablers). June 12, 2012 response to office action. The term enabler
was also originally in the parent 555 Patent claims, but was replaced with user.
Excelsior refers to the main, or first user: [T]he excelsior enabler and secondary
enablers defined comprises human beings or computerized mechanisms
programmed to process steps of the invention as would normally be done manually
by a human being. 860 Patent (EX1001), at 5:1216.
-9-
U.S. Patent 8,533,860
C.
Summary of Relevant Prosecution File History

The claims in the parent 555 Patent were originally rejected as obvious
under 103 over U.S. Pre-Grant Publication Number 2011/0288946 to Baiya

(Baiya) in view of U.S. Patent 7,526,650 to Wimmer (Wimmer).
The
Examiners reasons for allowance noted that Baiya and Wimmer taught the first
two elements of the claims, which correspond to the first two elements of the 860
Patent claims. The 860 Patent was allowed after an Examiners Amendment and
no rejection, and the reasons for allowance listed Baiya and Wimmer as the closest
prior art. Neither of the references show a users membership used to brand digital
content so it could be used on multiple devices.
Baiya describes a content
management system for a group or a business, where libraries for documents and
other media are established and authorized users are given keys to access those
libraries. Wimmer describes branding video content with an end user's personal
identity information as a deterrent against unauthorized redistribution. Thus, the
Examiner found no reference where a users membership was used to brand digital
content so it could be used on multiple devices. The prior art references discussed
herein, however, clearly teach this feature.
In the Certificate of Correction, the claim language obtained from a verified
web service was changed to related to a verified web service.
- 10 -
U.S. Patent 8,533,860
D.
Person of Ordinary Skill in the Art

One of ordinary skill in the art at time of the earliest claimed effective filing
date of the 860 Patent (Feb. 10, 2010) would possess at least a university degree
or have equivalent professional experience related to electronics and/or software,
with some experience in digital rights management such as two years of work
experience. See Cherukuri Decl. (EX1010), at 2832, 5859. The claims of the
860 Patent are directed to a DRM system used with standard computers
communicating over known network means. Thus, one of ordinary skill in the art
requires knowledge of DRM programs, generally. Id. at 22.
V.
CLAIM CONSTRUCTION
Claim terms of a patent in inter partes review are normally given the
broadest reasonable construction in light of the specification. See 37 C.F.R.

42.100(b): see also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1279-81
(Fed. Cir. 2015).
The following discussion proposes constructions and support for those
constructions. Any claim terms not included in the following discussion should be
given their ordinary meaning in light of the specification, as commonly understood
by those of ordinary skill in the art. The broadest reasonable interpretation of a
claim term may be the same as or broader than the construction under the standard
set forth in Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005), but it cannot be
- 11 -
U.S. Patent 8,533,860
narrower. See Facebook, Inc. v. Pramatus AV LLC, 2014 U.S. App. LEXIS 17678,
*11 (Fed. Cir. 2014). The constructions proposed below should be applied
regardless of whether the terms are interpreted under the Phillips standard or the
broadest reasonable interpretation standard.
There have been no claim construction orders yet in the District Court
litigations involving the 860 Patent. There has been a joint claim construction
statement by Patent Owner and Amazon. See Grecia v. Amazon.com, No. 2:14-cv00530 (W.D. Wash. Dec. 22, 2014) (Joint claim construction statement by Patent
Owner and Amazon), and Ex. C (EX1004); see also 37 C.F.R. 42.62 and F.R.E.
801(d)(2). See also See Cherukuri Decl. (EX1010) at 4254.
A.
verified web service

Outside the claims, this term only appears once in the 860 patent:
The web service equipped with the API is usually a well-known
membership themed application in which the users must use an
authentic identification. Some example includes Facebook .
Other verified web services in which real member names are
required such as the LinkedIn API and the PayPal API
860 Patent (EX1001) at 10:4151 (emphasis added). In the Grecia v. Amazon

litigation, Patent Owner proposed a web service accessible with an authenticated
credential and Amazon proposed a web service that is used to authenticate the
- 12 -
U.S. Patent 8,533,860
identity of a user or device. Grecia v. Amazon.com, Ex. C at 16 (EX1004). The
Patent Owner term of an authenticated credential does not appear in the 860
Patent, and the example is a Facebook login name and password to authenticate the
user, not authenticate the credential. Thus, the Amazon proposal is correct: the
proper construction is any web service that is used to authenticate the identity of a
user or a device.
B.
metadata of the digital content

In the Grecia v. Amazon litigation, Patent Owner proposed data about the
digital content and Amazon proposed data that describes the digital content, in
the same media file as the digital content. Id. (EX1004), Ex. C at 16. Petitioner
submits it is well known that metadata doesnt just describe the digital content, and
thus Amazons construction is too narrow. Also, meta data is not necessarily in the
same media file. See Cherukuri Decl. (EX1010) at 4748. Petitioner, for the
purposes of this petition, submits the construction is data about the digital content.
C.
two way data exchange session

In the Grecia v. Amazon litigation, Patent Owner proposed requesting the at
least one identification reference from the at least one communications console and
receiving the at least one identification reference from the at least one
communications console. Amazon proposed transfer of information from a
device to a server and from the server to the device. Grecia v. Amazon.com
- 13 -
U.S. Patent 8,533,860
(EX1004), Ex. C at 19. The Patent Owner proposal adds in other limitations from
the claim and is thus too detailed, and Amazon adds a server and device limitation.
Petitioner submits the construction is session enabling an exchange of data.
D.
a verification token corresponding to the digital content

In the Grecia v. Amazon litigation, Patent Owner proposed the list of items
in the claim, and Amazon agreed, but added assigned to the digital content to
identify the content or access rights the user has to that content. Grecia v.
Amazon.com (EX1004), Ex. C at 12. The additions appear unnecessary, as the
term is defined in the claim. The password and email address options in the claim
list are discussed in the 860 Patent:
Examples of the token include, and are not limited to, a structured or
random
password,
e-mail
address
associated
with
an
e-commerce payment system used to make an authorization payment,

or other redeemable instruments of trade for access rights of digital
media. Examples of e-commerce systems are PayPal, Amazon
Payments, and other credit card services.
See 8:4551. Petitioner submits the construction is the list in the claim: one or
more of a password, e-mail address, payment system, credit card, authorize ready
device, rights token, or one or more redeemable instruments of trade.
- 14 -
U.S. Patent 8,533,860
VI.
PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A

REASONABLE LIKELIHOOD OF PREVAILING
The references addressed below anticipate and/or render obvious the claimed
subject matter, and are corroborated by the opinion in the Cherukuri Declaration
(EX1010).
A.
Ground 1: Claims 120 are unpatentable as obvious over DeMello

(EX1006) in view of the admitted prior art.
Grounds 1 and 2 are discussed together below for claims 2-20 in order use
the same claim charts and fit within the allowed page limits. Only independent
claim 1 is separately discussed.
B.
Ground 2: Claims 120 are unpatentable as obvious over Pestoni

(EX1007) in view of the admitted prior art.
Claim 1DeMello. DeMello describes a system for delivery of electronic books

or other media. Id. at 4:4149. A purchaser can link a book to a persona so that
it can be read on multiple user devices (readers) or shared with others associated
with the same persona. The user provides PASSPORT credentials (a user ID and a
passwordPASSPORT is Microsofts single sign-on service).
An activation
server authenticates the user using the PASSPORT credentials in communication

with the PASSPORT servers. The PASSPORT ID is associated with the
- 15 -
U.S. Patent 8,533,860
purchasers persona and written to an activation certificate. Id. at 13: 2135.
As shown in Fig. 4 of DeMello above, the user requests content at a retail

site 71 on the left, and there is user authentication, as noted below box 72. As
described below, user authentication can be performed by establishing a
membership
using
authentication
credentials
(e.g.,
Amazon.com
log-on
credentials), which is a verification token. A separate HTTPS connection 70 on

the right is used to establish a connection with an Activation Site 75, where a
users PASSPORT ID is used to verify the user and brand the metadata of the
content.
[A] Preamble. DeMello discloses a DRM system which authorizes access
to content and contains the other limitations of the preamble, using a cloud
- 16 -
U.S. Patent 8,533,860
system (defined in claim 25 as the Internet), with content encrypted (since the
claim says or not, this is not a limitation), and with access for a plurality of
processing devices. The claim chart below shows the specific language from
DeMello for these limitations.
860 Patent
(emphasis added)
[A] 1. A method for
authorizing access to
digital content using
a cloud system, the
cloud system
comprising connected
modules in operation
as one or more of a
cloud computing or a
cloud storage in
connection with
devices and users,
wherein the digital
content is at least
one of encrypted or
not encrypted, the
method facilitating
access rights
between a plurality
of data processing
devices, the method
comprising:
DeMello (EX1006) (emphasis added)

A server architecture for a digital rights management
system that distributes and protects rights in content. Id.
at Abstract at ll. 12.
The digital content is at least one of encrypted or not
encrypted: source sealed and individually sealed
content is encrypted. Id. at 2:610.
using a cloud system : communications over the wide
area network 52, such as the Internet. Id. at 8:2425.
[Internet=cloud]
Facilitating access rights between a plurality of data
processing devices: The PASSPORT object 96 provides
the required interfaces into the PASSPORT.TM. servers
that authenticate the end-users using, for example, their
hotmail accounts (or other PASSPORT credentials). In
accordance with aspects of the present invention, this
object advantageously associates the activation
certificate with a persona, instead of a single PC, thus
allowing each persona to utilize multiple readers to
read level 5 titles. Id. at 13:1724.
[B] This element (chart below) requires an access request (which eventually
results in a metadata read/write) along with a verification token from a
- 17 -
U.S. Patent 8,533,860
communications console (the user device). Patent Owner admits this element, and
the following element [C] are shown in the prior art:
. . . communicating access rights over the Internet to a
license server-the first and second steps of method claim
1 in the 860 patent-was well known in the digital rights
management field.
Sony v. Grecia Preliminary Response (EX1005) at 14. See also id. at 6, ll. 67
(Clearly, many prior art systems taught the verification of a token through a GUI
interface.)
Claim 1 of the parent 555 Patent describes a verification token as a
membership verification token [this was alleged vs. the Amazon Kindle logon, for
example]. The 860 Patent claim 1 recites a list of possible verification tokens
including a password and an email address, which can correspond to a
membership, but also a credit card, a rights token, etc. DeMello teaches user
authentication and establishing a membership relationship with a retailer (left of
Figure 4), which inherently would include providing a token, such as a retailer
password and/or email (e.g., Amazon log-on credentials). User authentication and
establishing a membership are obvious in view of the admitted prior art. The
admitted prior art steps are described in the parent 555 Patent as verifying
membership for site to buy content, and DeMello recites establishing such a
- 18 -
U.S. Patent 8,533,860
membership relationship. It would be obvious to use the verification token of the
admitted prior art to establish a membership relationship. See also Cherukuri Decl.
(EX1010) at 6169.
Other embodiments. DeMello describes a variety of DRM options, such as
individualized or fully individualized, and obtaining content before or after
activation (PASSBOOK verification). These DRM options contain various other
verifications or authentications that also meet various ones of the list of
verification token options in the claim. The list of options for the verification and
authentications could read on, for example, the fulfilment site 73 of Figure 4 and
other variations set forth in the Cherukuri Declaration (EX1010) at Ex. C, such as
the BookID, which is verified and written as metadata of content, similar to the
content code entered in the KODEKEY GUI of Figure 3 of the 860 Patent. As
described above in the Summary of the 860 Patent, the 860 Patent specifies that
other orders of steps are intended to be covered, and thus various combinations of
embodiments meet the claim. For example, activation (obtaining PASSPORT ID)
could be done, and is described as being done, before or after buying the content.
As described above, cloud is a synonym for Internet and the servers in
DeMello are accessed over the Internet, thus the cloud system combination is
shown. See also Cherukuri Decl. (EX1010) at Ex. C.
- 19 -
U.S. Patent 8,533,860
[B] receiving a digital content access
request from at least one
communications console of the
plurality of data processing devices,
the access request being a read or
write request of metadata of the digital
content, wherein the read or write
request of metadata is performed in
connection with a combination of at
least one device and the cloud system,
the request comprising a verification
token provided by a first user
corresponding to the digital content,
wherein the verification token is one
or more of a password, e-mail
address, payment system, credit
card, authorize ready device, rights
token, or one or more redeemable
instruments of trade;
This element is admitted prior art

DeMello (EX1006) - Retail site (Fig. 4)
Bookstore servers 72 may communicate
with users via web browsing software
(e.g., by providing web pages for viewing
with a MICROSOFT INTERNET
EXPLORER browser or a NETSCAPE
NAVIGATOR browser). Through this
communication
[access
request],
bookstore servers 72 may allow users to
shop for eBook titles, establish their
membership relationship with the
retailer [verification token], pay for their
transactions, and access proof-of purchase
pages (serve-side receipts). Id. at 9:9-16.
[C] As described above, this element was also admitted by Patent Owner to
be in the prior art.
DeMello shows authenticating the username and other
credentials (verification token) of this element as described in the chart below, and
also in a variety of embodiments. Since various options for the authentication
token are claimed and shown in DeMello, various options for authentication of the
token are also shown. The authentication can be of the credit card or membership
information by the retail site (e.g., Amazon log-on). For devices already activated,
there can be authentication of the PASSPORT ID or other information as described
in more detail in the Cherukuri Declaration (EX1010) at Ex. C, Element C. Also,
- 20 -
U.S. Patent 8,533,860
the Book ID can be the verification token. These all correspond to the admitted
prior art.
[C]
authenticating
DeMello (EX1006) - Retail site authentication:
the
verification
After the buying customer has selected the titles he/she wishes to
token;
purchase and decides to complete an order, the merchant will
process the order according to their existing methods (e.g., credit
card validation, billing, etc.). This may include requiring the
users to authenticate themselves (for those which require a
membership record from their customers) id. at 40:23-29.]
[D] This element is establishing a connection with user communication
module which has a GUI and an API related to a verified web service (e.g.,
Facebook). Patent Owner admitted that such GUIs and APIs for verified web
services are known in the prior art:
The web service equipped with the API is usually a wellknown membership themed application in which the
users must use an authentic identification. Some example
includes Facebook in which as a rule, members are
required to use their legal name identities. A reference
number or name with the Facebook Platform API
represents this information. Other verified web services
in which real member names are required such as the
LinkedIn API and the PayPal API and even others could
be used . . .
- 21 -
U.S. Patent 8,533,860
308 Patent (EX1003), at 10:4151. DeMello discloses the communications
console of this element as the reader. The reader provides access to a bookstore
feature, which is the required GUI. The user is prompted at the reader (e.g., a
prompt in a GUI) to login using PASSPORT credentials to authenticate the user at
the PASSPORT server.
The reader then sends the login credentials to the
PASSPORT server via the API of the PASSPORT server to authenticate the user at
the PASSPORT server. See id. at 9:614; 23:610, 23:1923. It is obvious that
the reader in DeMello would formulate its request according to the protocol
specified by the API of the verified web service (the PASSPORT server). The
PASSPORT server meets the claim construction definition of a verified web
service that authenticates the identity of a user:
The PASSPORT object 96 provides the required
interfaces
into
the
PASSPORT.TM.
servers
that
authenticate the end-users using, for example, their

hotmail accounts (or other PASSPORT credentials).
DeMello (EX1006) at 13:3135, 13:5461.
The PASSPORT web service
facilitates a two-way data exchange session to complete a verification process. See

id. at 23:610, 23:1923; 24:3335. The data exchange can include the activation
certificate, which contains the PASSPORT ID, and which corresponds to the
- 22 -
U.S. Patent 8,533,860
account identifier in the list of options for the identification reference in
element [E].
In addition to being admitted prior art, it is obvious that the browser of the
reader mentioned in DeMello includes a GUI, since browsers provide a GUI (see
Cherukuri Decl. (EX1010), at Ex. C), and the 860 Patent acknowledges the tie of
a browser to a GUI: a web browser interact with the API of a remote Internet
server system as desired. A Graphic User Interface (GUI) can be installed for
human interaction . 860 Patent (EX1001) at 10:3037 (emphasis added).
The PASSPORT API mentioned in DeMello facilitates communication of
PASSPORT credentials for authentication between the reader and the PASSPORT
server via the activation server.
The data exchange session is shown by the
exchange of the user name and password for the activation certificate.
Alternate DeMello embodiments show the identification reference, such as
a hardware ID, which is a serial number or a manufacturer identification in the
list of possible identification references of element [E], and which is exchanged
along with the activation certificate (with the PASSPORT ID) based on exchange
of the PASSPORT credentials). See Cherukuri Decl. (EX1010) at Ex. C, Element
D.
[D] establishing a DeMello (EX1006)
connection with
- 23 -
U.S. Patent 8,533,860
the at least one
communications
console, wherein
the
communications
console is a
combination of a
graphic user
interface (GUI)
and an Application
Programmable
Interface (API)
wherein the API is
related to a
verified web
service, the web
service capable of
facilitating a two
way data exchange
session to
complete a
verification
process, wherein
the data exchange
session comprises
at least one
identification
reference;
Establishing a connection: At step 150, the reader client

opens into the integrated bookstore feature and connects, via
secure sockets layer (SSL), to the activation servers 94,
where users are prompted to login using, in this example, their
PASSPORT credentials (step 152). Id. at 23:517.
The API is related to a verified web service [PASSPORT],

which is capable of facilitating a two way data exchange
session to complete a verification process [authentication of
PASSPORT credentials]:
Activation Server 94 includes a PASSPORT object 96 and
an activation server ISAPI Extension DLL 98. The
PASSPORT object 96 provides the required interfaces into
the PASSPORT.TM. servers that authenticate the endusers using, for example, their hotmail accounts (or other
PASSPORT credentials). Id. at 13:3035.
Once user's PASSPORT.TM. credentials are authenticated
(step 156), a PASSPORT.TM. API is queried for the user
alias and e-mail address (step 158). Id. at 23:1821.
The secure repository executable and activation certificate
are then downloaded to the client (steps 188 and 190). Id. at
24:3335. [the upload and download shows the two-way
data exchange]
Two-way data exchange session for PASSPORT ID:
Moreover, the activation server arrangement preferably
provides a given activation certificate (that is, an activation
certificate having a particular key pair) only after
authenticating credentials (e.g., a username and password)
associated with a persona. Id. at 2:50-54.
the PASSPORT ID is contained in the activation
certificate, Id. at 16:4344.
- 24 -
U.S. Patent 8,533,860
[E] DeMello shows the identification reference of this element is
communicated by the reader (also client or user computing devicethe
communications console). As described above, DeMello shows two options for
the identification references listed in element [D], a password or an account
identifier, and a serial number. For example, the identification reference is
shown in the form of both a hardware ID and an activation certificate (which
includes the account identifier PASSPORT ID and other identifiers) by the
activation server. The data exchange is both explicitly described and is inherent,
since the activation certificate would not be communicated unless it was requested
or understood to be requested. See Cherukuri Decl. (EX1010) at Ex. C, Element E.
[E] requesting the at least
one identification reference
from the at least one
communications console,
wherein the identification
reference comprises one or
more of a verified web
service account identifier,
letter, number, rights token,
e-mail, password, access
time, serial number,
address, manufacturer
identification, checksum,
operating system version,
browser version, credential,
cookie, or key;
DeMello (EX1006)
The identification reference is requested from the
communications console, and comprises at least a
password or a serial number:
At step 150, the reader client opens into the
integrated bookstore feature and connects, via
secure sockets layer (SSL), to the activation servers
94, where users are prompted to login [requesting]
using, in this example, their PASSPORT.TM.
credentials (step 152). Id. at 23:610.
the activation servers 94 will request that the
client (via the ActiveX control) upload a unique
hardware ID.. Id. at 23:1826.
The user provides the activation certificate to the
content server:
- 25 -
U.S. Patent 8,533,860
For fully individualized copies (level 5), a clientside script will populate the body of the POST
with the activation certificate, preferably using
COM object implemented by the reader which
obtains the necessary activation certificate or
relevant information therefrom. Id. at 26:1015.
[F] The identification reference (PASSPORT ID in activation certificate or
hardware ID) is received from the communications console (the reader). This
element is part of element [E], since a requested element is clearly received.
Receiving an identification reference is also shown in the quoted sections below.
[F] receiving the
at least one
identification
reference from
the at least one
communications
console; and
DeMello (EX1006)
the client (via the ActiveX control) upload a unique
hardware ID.. Id. at 23:2122.
a client-side script will populate [receiving from user] the
body of the POST with the activation certificate [identification
reference], preferably using COM object implemented by the
reader which obtains the necessary activation certificate or
relevant information therefrom. Id. at 26:1015.
[G] This element requires that the verification token or identification

reference be written into the metadata. Patent Owner admits this was shown in the
prior art for the verification token:
This disclosure corresponds to, for example, the first,
second, and sixth steps of claim 1 of the 860 patent as
illustrated in Figure 3 at 301, 303, and 305 (i.e., receiving
a write request and authentication) and 302 (i.e., writing
the verification token into the metadata). Wimmer stops
- 26 -
U.S. Patent 8,533,860
there, however, and critically lacks the third, fourth, and
fifth steps of claim 1 of the 860 patent .
Sony v. Grecia Preliminary Response (EX1005) at p. 13. See also Cherukuri Decl.
(EX1010) at 27.
DeMello discloses this element in two different ways. The PASSPORT ID
(an identification reference) is part of the activation certificate, as described above,
and the public key of the user's activation certificate is cryptographic hashed with
meta-data. The PASSPORT ID is also written into (stores into) a registry, id. at
16:4849, which constitutes additional metadata because it is associated with the
content. See Cherukuri Decl. (EX1010) at 63 and Ex. C, Element G.
In other embodiments, the hardware ID is written to metadata and the
purchaser credit card and name (a verification token) are written into the eBook
title metadata. Id. at 5:4548.
See Cherukuri Decl. (EX1010) at 67 and Ex. C,
Element G.
- 27 -
U.S. Patent 8,533,860
[G] writing
at least one
of the
verification
token or the
identification
reference
into the
metadata.

DeMello (EX1006)
PASSPORT ID as verification token written to metadata
stores the PASSPORT ID in the registry [metadata] on the
user's computing device, Id. at 16:4849.
[T]he PASSPORT ID is contained in the activation certificate,
Id. at 16:43-44. the key is a symmetric key 14A that is sealed
with a cryptographic hash of meta-data 12 or, in the case of level 5
titles, with the public key of the user's activation certificate. Id. at
6:42-45.
Purchaser name as verification token written to metadata:
An "individually sealed" title is an eBook whose meta-data
includes information related to the legitimate purchaser (e.g., the
user's name or credit card number, the transaction ID .. Id.
at 5:4548.
Claim 1Pestoni (EX1007). Pestoni discloses a networked system where

a user can obtain content from a content provider, which may refer the user to a
license server for a content license that is bound to the users domain membership
ID. Id. at Abstract, [0002], [0012]. A separate domain administrator authenticates
the user, with a password, and provides the users device, as well as any another
other of the users devices, with a domain membership license to allow access to
the content based on the users domain membership. Id. The content license is
metadata with a domain membership ID. Id. Patent Owner admits that elements
[A] and [B] are in the prior art (as discussed above).
- 28 -
U.S. Patent 8,533,860
[A]Preamble.
Pestoni discloses a system of Internet-connected
components for authorizing and facilitating digital-media access rights between

multiple user devices [0013].
860 Patent
(emphasis added)
[A] 1. A method for
authorizing access to
digital content using
a cloud system, the
cloud system
comprising connected
modules in operation
as one or more of a
cloud computing or a
cloud storage in
connection with
devices and users,
wherein the digital
content is at least
one of encrypted or
not encrypted, the
method facilitating
access rights
between a plurality
of data processing
devices, the method
comprising:
Pestoni (EX1007) (emphasis added)

Using a cloud system: [0013] FIG. 1 illustrates an
example system 100 in which the domain management for
digital media can he employed. System 100 includes . . .
domain administrators 102, . . . content providers 104, . . .
license servers 106, [and] multiple (x) domains 108(1), . . .
, 108(x) . . .. Each of these components 102, 104, 106,
108, and 120 can communicate with one another over
network 110 . . . such as the Internet.
Encrypted digital content: [0018] . . . The pieces of
content provided to devices 112, 114 are typically
protected . . . through encryption.
Facilitating access rights: [0017] . . . Management of a
domain refers to . . . imposing restrictions on members of
the domain, including adding devices to the domain,
removing devices from the domain . . .. When a device
112, 114 joins a domain, the device 112, 114 is given a
domain membership license . . . [that] allows the device
to access and play back any protected content that has
been bound to that domain, as discussed in more detail
below.
[B] As noted, Patent Owner has admitted as prior art this element, which
requires an access request (which eventually results in a metadata read/write) along
with a verification token from a communications console (the user device). See
Sony v. Grecia Preliminary Response (EX1005) at 6. Pestoni discloses a domain
- 29 -
U.S. Patent 8,533,860
membership license obtained with a join-domain request 220 which includes user
credentials such as a user id and password. Id. at [0041].
[B] receiving a digital content
access request from at least
one communications console
of the plurality of data
processing devices, the access
request being a read or
write request of metadata of
the digital content, wherein
the read or write request of
metadata is performed in
connection with a
combination of at least one
device and the cloud system,
the request comprising a
verification token provided
by a first user corresponding
to the digital content, wherein
the verification token is one
or more of a password, email address, payment
system, credit card, authorize
ready device, rights token, or
one or more redeemable
instruments of trade;

Pestoni (EX1007) - Receiving access request:
Device 202 communicates with content provider
104 to obtain pieces of protected content [content
access request]. Protected content can be obtained
by device 202 before it joins a domain, after it
joins a domain, or concurrently with joining a
domain. Id. at 0067.
[0038] . . . To join a domain, [user] device 202
issues a join-domain request 220 to domain
administrator 102.
[0044] Domain request approval module 224 [of
domain administrator 102] receives join-domain
request 220.
Verification token that is password, etc.: [0039]
The join-domain request includes various
parameters . . . [such as] a device certificate, user
credentials, and optionally a device description.
[0041] . . . The user credentials can take any of a
variety of different forms, such as a user id and
password, a digital certificate attesting to the
users identity and digitally signed by a trust
authority, and so forth.
[C] As noted, this element was admitted by Patent Owner to be in the prior
art. Pestoni shows verifying that the domain that device 202 is requesting to join
- 30 -
U.S. Patent 8,533,860
is the domain of the user of device 202, as identified by the user credentials in the
request. Id. at [0044].
[C]
authenticating
the
verification
token;

Pestoni (EX1007)
[0045] Domain request approval module 224 . . . verifies that
the user credentials from request 220 are correct. This
verification can take different forms, such as comparing a
password (or hash thereof) against a stored password (or hash
thereof), accessing a remote service (not shown) to verify that the
received password matches the received user id, . . . and so forth.
Elements [D][F], as described under Ground 1 above, set forth using a GUI
and an API to communicate with a verified web service to request [E] and receive
[F] an identification reference. As described above, the use of a GUI and an API
to access a verified web service is admitted prior art. In addition, since both
DeMello and Pestoni were assigned to Microsoft, and both relate to very similar
digital rights systems, the use of a GUI and API discussed in DeMello above is
evidence of the common practice of Microsoft programmers in implementing these
systems. See Cherukuri Decl. (EX1010) at 80 and Ex. D, Element D.
Element [D] requires a two-way data exchange session with a verified web
service to complete a verification process using an identification reference. Pestoni
describes completing the verification process by establishing a connection with
license server 106. To do so, the user device sends to the license server a
content license request 252 that includes a domain certificate, which is an
- 31 -
U.S. Patent 8,533,860
identification reference. Pestoni teaches that the license server 106 is a verified
web service because the license server 106 is accessible only if the domain
certificate is authenticated and, once authenticated, the domain certificate
authenticates the identity of the domain and its associated user and device. ([0075],
[0094]). This meets the verified web service claim construction above of any web
service accessible with an authenticated credential that authenticates the identity
of a user or a device.
[D] establishing a
connection with the at
least one communications
console, wherein the
communications console
is a combination of a
graphic user interface
(GUI) and an Application
Programmable Interface
(API) wherein the API is
related to a verified web
service, the web service
capable of facilitating a
two way data exchange
session to complete a
verification process
wherein the data
exchange session
comprises at least one
identification reference;
Use of GUI & API are admitted prior art.

Pestoni (EX1007)
Establishing a connection having two-way exchange
comprising identification reference to complete
verification:
[0072] Device 202 communicates with license server
106 to obtain content licenses for pieces of protected
content . . . Device 202 sends a content license
request 252 . . . [that] includes various parameters . . .
[such as] a key ID, a domain ID, and a domain
certificate [identification reference].
[0075] In response to content license request 252,
license server 106 validates the domain certificate
included in request 252.
[0084] The content license 254, bound to domain
204, is returned to device 202. Once device 202 has
the content license for a piece of protected content,
content playback module 214 is able to access the
protected content.
- 32 -
U.S. Patent 8,533,860
Element [E] sets forth requesting the at least one identification reference
from the at least one communications console, while Pestoni describes the device
202 sending a domain ID in content license request 252. Varying which side
initiates the request for the identification reference is an obvious matter of design
choice. One of skill in the art would recognize that the License Server could
request the domain ID in response to a license request, or the device could simply
supply the domain ID as part of the request. See Cherukuri Decl. (EX1010) at 84
and Ex. D, Element E.
[E] requesting the at least one identification
reference from the at least one communications
console, wherein the identification reference
comprises one or more of a verified web service
account identifier, letter, number, rights token,
e-mail, password, access time, serial number,
address, manufacturer identification, checksum,
operating system version, browser version,
credential, cookie, or key;
Pestoni (EX1007)
[0072]
Device
202
communicates with license
server 106 to obtain content
licenses for pieces of protected
content . . . Device 202 sends a
content license request 252 . . .
[that]
includes
various
parameters . . . [such as] a key
ID, a domain ID, and a
domain certificate.
[F] The license server 106 receives from device 202 a content license
request 252, which includes various identification references, including a key ID, a
domain ID, and a domain certificate. This element is part of element [E], since a
requested element is clearly received.
[F] receiving the at
least one identification
Pestoni (EX1007)
[0072] Device 202 communicates with license server
- 33 -
U.S. Patent 8,533,860
reference from the at
least one
communications
console; and
106 to obtain content licenses for pieces of protected

content . . . [License server 106 receives from device
202] . . . a content license request 252 . . . [that] includes
various parameters . . . [such as] a key ID, a domain ID,
and a domain certificate.
Element [G] is shown.
As noted above with respect to DeMello, this
element is admitted prior art. Pestoni shows the verified web service as License
Server 106, which requests and receives Domain ID and domain certificate.
See Pestoni (EX1007), at [0072][0074]. A content license is generated, and
bound to the domain associated with the Domain ID. See id. at [0079][0082].
The content license 254, bound to domain 204, is returned to device 202, which
stores the license in content license store 210. Once device 202 has the content
license, it is able to access the protected content. See id. at [0084]. The content
license 254, bound to domain 204 and stored in content license store 210 of device
202, obviously constitutes metadata, since this is data is about the content stored in
device content store 208 of the device 202. See Cherukuri Decl. (EX1010) at 76
and Ex. D, Element G. Additionally, Pestoni refers to the content metadata,
Pestoni [0071], as including a key ID which identifies the content, which
associates the content license, which contains the domain ID, as set forth in the
below claim chart.
- 34 -
U.S. Patent 8,533,860
Other embodiments.
The verification token is also shown by user
credentials, such as a user id and password, a digital certificate and other

parameters in Pestoni, with the identification reference being shown by the
Domain ID, Domain Certificate or other parameters as set forth in the Cherukuri
Declaration (EX1010) at Ex. D, Element G. Not only does the 860 Patent say the
order of steps can be different, as noted above, but Pestoni says the same in
paragraph [0097].
[G] writing at
least one of the
verification
token or the
identification
reference into
the metadata.

Pestoni (EX1007)
[0082] Domain binding encryption module 258 binds [writes
to metadata] the content license generated by content license
generator 260 to the domain identified in request 252.
[0084] The content license 254, bound to domain 204, is
returned to device 202. Once device 202 has the content license
for a piece of protected content, content playback module 214
is able to access the protected content and play back the
protected content in decrypted form.
Claims 25. Claim 2 is directed to a second user, who is validated by a

membership web service. This is shown by DeMellos PASSPORT membership
service and Pestonis domain membership, which both provide for validating
multiple members. See also Cherukuri Decl. (EX1010) at Exs. C & D.
Claim 3 requires software or webpage content in the metadata. The 860
Patent does not describe any software as metadata, and the only reference to
webpage data is Web pages often include metadata in the form of Meta tags. Id.
- 35 -
U.S. Patent 8,533,860
at 13:2831.
DeMello shows the book title and related information in the
metadata, which is also listed on the webpage where the book is sold. Thus, the
book title from the retailer web page of DeMello, which is also in the meta tag, is
webpage content which satisfies this element. The content license of Pestoni is
specified as containing constraints which are from a web site, and are thus
webpage content.
Claim 4 merely recites the verification function of the verification token (the
function of representing verification). Thus, it doesnt add anything to claim 1 and
is invalid over DeMello and Pestoni as shown in claim 1[C] above.
Claim 5 says the content is shared among multiple users with membership
status, similar to claim 2, but depending from claim 3, and is also shown by
DeMello and Pestoni. The validation is done in DeMello by authenticating the
user. Pestoni similarly shows a validated domain. Thus, claims 25 are separately
invalid as obvious over both DeMello and Pestoni.
860 Patent
2. The method
according to claim 1,
wherein the access
request being a request
from the first user
through a data
processing device of the
plurality of data
processing devices;
Prior Art (Emphasis added)

DeMello (EX1006)
Thus, a user is unlikely to share his PASSPORT ID
and password with a large group of people, thereby
ensuring that the persona to which a reader is
activated is genuinely associated with a particular user
(or, possibly, a family that shares a single
PASSPORT account). Id. at 13:4954.
The PASSPORT object 96 authenticate the end-
- 36 -
U.S. Patent 8,533,860
users using, for example, their hotmail accounts (or
other PASSPORT credentials. Id. at 13:1724.
or wherein the access

request being a request
from one or more
Pestoni (EX1007)
[0016] Each domain 108 is associated with a
secondary users in
network to the first user; particular user or group of users [secondary users].
[0041] The user can have each device that he or she
owns join his or her domain . Alternatively, domain
wherein the secondary
users are validated by a administrator could employ a domain policy that allows
multiple users [secondary users]to share a domain
membership web
.
service.
3. The method
DeMello (EX1006)
these servers host the commercial web site that
allow users to perform actions such as shopping for
wherein the metadata
eBook titles . Id. at 11:24.
comprises one or more
of a software or contents
the download server 76 adds the consumer's name to
of a web page.
the title meta-data Id. at 26:1920.
Pestoni (EX1007)
[0029] The constraints on the use of the content are
typically as part of a content license.
Alternatively, the constraints could be made known in
other manners, such as separate notification being
given of the constraints (e.g., obtaining the
constraints from a web site, etc.), and so forth.
Claims 68. Claim 6 sets forth that the users can be humans or
computerized mechanisms in a network, which is met by the user of DeMello
and Pestoni. The 860 Patent doesnt describe any separate network of users, just
the cloud/internet, which is also shown in the below quoted sections of DeMello &
Pestoni.
- 37 -
U.S. Patent 8,533,860
Claim 7 says the user device is a computer or phone (with OS), which
DeMello & Pestoni show in the below quoted sections.
Claim 8 says the verification token represents a purchase, rental or
membership permission, as indicated by any one of the laundry list of a letter,
number, etc. The DeMello BookID is a purchase permission, which is verified and
written to metadata as described above under claim 1 [B]. This is similar to the
content code entered in the KODEKEY GUI of Fig. 3 of the 860 Patent. DeMello
also shows establishing a membership relationship, which is a membership
permission (see claim 1 [B] discussion). This is also shown by the Pestoni user
credentials for joining a domain with a domain membership license, which allows
access (e.g., purchase) of content. See Cherukuri Decl. (EX1010) at Exs. C and D.
860 Patent
6. The method according
to claim 5, wherein the
one or more users are a
network of recognized
human beings using
machines or recognized
automated computerized
mechanisms programmed
by human beings, the
recognition of the one or
more users being
validated by the
membership status of the
membership web service.
7. The method according
Prior Art (emphasis added)

DeMello (EX1006)
The personal computer or network server 20 may
operate in a networked environment Such
networking environments are commonplace in offices,
enterprise-wide computer networks, Intranets and the
Internet. Id. at 8:518.
Pestoni (EX1007)
[0041] The user credentials are various credentials
that identify the user of device.
[0013]Network 110 can be any of a variety of
networks, such as the Internet, a local area network, a
cellular phone network, other public and/or proprietary
networks, combinations thereof, and so forth.
DeMello (EX1006)
- 38 -
U.S. Patent 8,533,860
to claim 6, wherein the
digital content access
request is from a user
using at least one of a
computer or a phone
hosting an operating
system running an
application.
a "reader" (which, as more particularly discussed

below, is a user application that enables the reading
of eBooks on a computing device, such as a PC, a
laptop, a Personal Digital Assistant (PDA), PocketPC,
or a purpose-built reading device). Id. at 5: 5963.
wherein the at least one of

purchase permission,
rental permission, and
membership permission is
represented by one or
more of a letter, number,
combination of letters and
numbers, rights token,
successful payment
reference, phrase, name,
membership credentials,
image, logo, tag, service
name, authorization, list,
interface button,
downloadable program,
or an instrument of trade.
As used herein, a "persona" is a unique identifier that

can be tied to a user and can be securely authenticated
by an out-of-band process--e.g., a username and
password form on a web browser for use over a
secure socket layer (SSL) is an example embodiment
of such a process. Id. at 2: 4550.
Pestoni (EX1007)
[0001] Examples of such digital media playback
devices include portable music players, desktop and
laptop computers, cellular phones, and so forth.
8. The method of claim 7, DeMello (EX1006)
Verification token:
wherein the verification
Through this communication, bookstore servers 72
token comprises at least
may allow users to shop for eBook titles, establish
one token selected from
the group consisting of a their membership relationship with the retailer
[verification token], pay for their transactions, and
purchase permission, a
access proof-of purchase pages (serve-side receipts).
rental permission, and a
membership permission; Id. at 9:916.
It is also preferable that activation servers 94 rely on

the
MICROSOFT.RTM.
PASSPORT.TM.
membership system for associating activation
certificates to end-user personas, as will be described
below (although PASSPORT is merely exemplary of a
namespace authority that may be used for this
purpose). Id. at 10: 5863.
Pestoni (EX1007)
Verification token that is password, etc.: [0039] The
join-domain request includes various parameters . . .
[such as] a device certificate, user credentials, and
- 39 -
U.S. Patent 8,533,860
optionally a device description.
[0041] . . . The user credentials can take any of a
variety of different forms, such as a user id and
password, a digital certificate attesting to the users
identity and digitally signed by a trust authority, and
so forth.
Claim 9. This claim is nearly identical to claim 1, converting method
references to a system, and using synonyms for claim 1 limitations (The cloud is
the Internet, which is known to be a worldwide cloud; computing over the
cloud is known to be done by a server, and storage is known to mean a
database; a system is understood to be infrastructure.). The one addition is
that the system works as a front-end agent. The term front-end agent only
appears in claims 9 and 27. There is one relevant use of front-end in the body of
the 860 Patent: As explained earlier, the system we will discuss will work as a
front-end to encrypted files as an authorization agent for decrypted access. Id. at
5:3739. The term front-end is also used to describe the user GUI, which is a
different use. Id. at 11:1011. DeMello describes the activation process being on
front-end activation servers, and thus shows this.
Pestoni also shows a system accessed over the Internet, and Pestoni
discloses that the devices can interact with the domain management system
- 40 -
U.S. Patent 8,533,860
directly; that is, as a front-end agent. See Cherukuri Decl. (EX1010) at 81 & Exs.
C and D, Cl. 9.
860 Patent
Marked to show additions and
[deletions] compared to claim 1.
[A] [1]9. A system [method] for
authorizing access to digital
content using a worldwide cloud
system infrastructure, the
worldwide cloud system
infrastructure comprising
connected modules in operation as
[one or more of a cloud]
computing [or] and [cloud] storage
[in connection with], the
computing and storage comprising
a server, a database, devices and
users, wherein the digital content
is at least one of encrypted or not
encrypted, the [method] system
facilitating access rights between a
plurality of data processing
devices,
Prior Art (Emphasis added)

See claim 1, element [A] above.
[A1] the system working as a

front-end agent for access rights
authentication between the
plurality of data processing
devices, the system further
comprising:
Pestoni (EX1007)
[0003] In accordance with one or more
aspects, a device accesses a domain
administrator in order to obtain a domain
membership license.
[A1] DeMello (EX1006)

The activation server ISAPI Extension DLL
98 carries out tasks associated with the
activation process on the front-end
activation servers, . Id. at 13:6264.
Fully individualized content cannot be
accessed in the absence of a "activation
certificate," which are issued by the activation
server. Id. at 2:2228.
Moreover,
the
activation
server
arrangement preferably provides a given
activation certificate (that is, an activation
certificate having a particular key pair) only
after authenticating credentials (e.g., a
username and password) associated with a
persona. Id. at 2:5054.
Element [B] is the same as claim 1, except saying the step is performed by a
module, and adding the software/webpage metadata limit already discussed under
- 41 -
U.S. Patent 8,533,860
dependent claim 3 above. The substance of elements [C][G] is the same as claim
1.
[B] a first receipt module, the first receipt module receiving a
digital content access request .. wherein the read or write
request of metadata is performed in connection with a
combination of a device, the server, the database and the cloud
system, the metadata further comprises one or more of a
software or contents of a web page, the request comprising a
verification token provided by a [first] user ;
[C] an authentication module, the authentication module
authenticating the verification token;
See claim 1,
element [B]
above and claim
3 (for the
metadata as
software/webpage
contents).
See claim 1,
element [C]
above.
[D] a connection module, the connection module establishing a See claim 1,
connection ;
element [D]
above.
[E] a request module, the request module requesting the at
See claim 1,
least one identification reference ;
element [E]
above.
[F] a secondary receipt module, the secondary receipt module See claim 1,
receiving the at least one identification reference from the at
element [F]
least one communications console; and
above.
[G] a branding module, the branding module writing at least
See claim 1,
one of the verification token or the identification reference into element [G]
the metadata.
above.
Claim 10. This claim is nearly identical to claim 8, converting method
references to a system, and is invalid for the same reasons.
860 Patent
Marked to show additions and [deletions] compared to claim 8.
[8] 10. The system [method] of claim 9 [7], wherein the verification
token comprises .
- 42 -
Prior Art
See claim 8.
U.S. Patent 8,533,860
Claim 11. This is a program code claim corresponding to method claim 1,
with the addition that the code is either (1) part of an operating system or (2) is
downloaded in sections from a web server. Other than claim 11, the only mention
of sections in the 890 Patent is copied below, which equates sections with an
API or script:
A program apparatus, scripts, often calls these APIs or
sections of code residing on user computerized devices.
For example, a web browser running on a user computer,
cell phone, or other device can download a section of
JavaScript or other code from a web server, and then use
this code to in turn interact with the API of a remote
Internet server system as desired.
Id. at 10:2430. DeMello describes both an operating system as well as the
common technique of using scripts (sections) previously downloaded to a client
reader. Pestoni describes downloading modules, which are the claimed sections or
would form part of an operating system. See Cherukuri Decl. (EX1010) at 64
77 & Ex. D, Cl. 11.
860 Patent
[A] [1] 11. [A method for
authorizing access to digital content
using a cloud system, the cloud
system comprising connected

DeMello (EX1006)
A number of program modules may be
stored on the hard disk, magnetic disk 29,
optical disk 31, ROM 24 or RAM 25,
including an operating system 35 (e.g.,
- 43 -
U.S. Patent 8,533,860
modules in operation as one or more
of a cloud computing or a cloud
storage in connection with devices
and users, wherein the digital content
encrypted, the method] A nontransitory computer medium
comprising a program code, the
program code being a part of an
operating system software or
downloaded in sections from a web
server, the operating system software
program coupled with a user
executing a method for authorizing
access to digital content wherein the
program code, when executed in a
processor for facilitating access
rights between a plurality of data
processing devices, performs the
following steps of:
request , wherein the read or write
request of metadata is performed in
connection with a combination of [at
least one device] the operating
system software program and [the] a
cloud system, the request comprising
a verification token provided by [a
first] the user corresponding to the
digital content,;
[C] authenticating the verification
token;
[D] establishing a connection ;
[E] requesting the at least one
identification reference from the at
least one communications console,
wherein the identification reference
[comprises] is one or more of ;
Windows.RTM.
2000,
Windows
NT.RTM., or Windows 95/98), one or
more application programs 36, other
program modules 37 and program data 38.
Id. at 7:5257.
Using a browser or the "bookstore pages"
or reader 90 or 92, user chooses book(s) via
mechanisms that the retail site implements
(step 200). For fully individualized
copies (level 5), a client-side script will
populate the body of the POST with the
activation certificate . Id. at 26:1-15.
Pestoni (EX1007)
[0109] Generally, software includes
routines, programs, objects, components,
data structures,. An implementation of
these modules may be transmitted
.
See claim 1, element [B] above.
See claim 1, element [C] above.

See claim 1, element [D] above.
See claim 1, element [E] above.
- 44 -
U.S. Patent 8,533,860
[F] receiving the at least one
identification reference from the at
least one communications console;
and
[G] writing at least one of the
verification token or the
identification reference into the
metadata.
See claim 1, element [F] above.
See claim 1, element [G] above.
Claims 1215. These claims correspond to claims 4-6 and 8, discussed

above, and are invalid for the same reasons.
860 Patent - Marked to show additions and [deletions]
12. The non-transitory computer medium according to claim 11,
wherein the access request is a request from the user providing a
credential to a membership web service through a data processing
device of the plurality of data processing devices, the user being a
human user establishing a permission to the digital content.
[8] 13. The [method] non-transitory computer medium of claim [7]
12, wherein the verification token comprises at least one [token
selected from the group consisting] of , logo, [tag] service name,
authorization, list, key, file, .
14. The non-transitory computer medium according to claim 13,
wherein the verification token represents verification from a
provider that a product was acquired.
[5] 15. The [method] non-transitory computer medium according to
claim [3] 13, wherein the digital content is accessed [shared among
one or more users] according to a membership status.
See claim 6.
See claim 8.
See claim 4.
See claim 5.
Claim 16. DeMello shows the membership status connected to an API as in

claim 16. In Pestoni, it is inherent that the device uses the API associated with
joining the domain. For example, according to [0041] and [0058] of Pestoni, the
domain administrator server 102, after verifying the users credentials, establishes
- 45 -
U.S. Patent 8,533,860
secure connection by employing the secure key exchange protocol [i.e.,
application programmable interface (API) protocol] that the user device can access
to securely obtain the domain membership license 222/300. See Cherukuri Decl.
(EX1010) at 72 & Ex. D, Cl. 16.
16. The nontransitory
computer
medium
according to
claim 15,
wherein the
membership
status is
connected to
an application
programmable
interface.
DeMello (EX1006)
It is also preferable that activation servers 94 rely on the
MICROSOFT.RTM. PASSPORT.TM. membership system for
associating activation certificates to end-user personas, as will be
described below (although PASSPORT is merely exemplary of a
namespace authority that may be used for this purpose). Id. at
10:5863.
Once user's PASSPORT.TM. credentials are authenticated (step
156), a PASSPORT.TM. API is queried for the user alias and email address (step 158). Id. at 23:1821.
Pestoni (EX1007)
See claim 1 [D] above.
Claim 17. Claim 17 simply says wherein a remote control operation exist
[sic]. The term remote control only appears in the claims. The term remote is
used to refer to a remote server (accessed over a network, such as the Internet) and
a remote procedure call. Id. at 10:2234. Thus, accessing a remote device,
through a remote procedure call or otherwise, satisfies this element. DeMello
describes such a remote API interaction for both IS and PASSPORT APIs, which
use calls (remote procedure call) just like the 860 Patent. Pestoni also shows
using remote communications, which would be understood by a person of ordinary
- 46 -
U.S. Patent 8,533,860
skill in the art (POSA) to involve remote procedure calls. See Cherukuri Decl.
(EX1010) at Ex. D, Cl. 17.
17. The
nontransitory
computer
medium
according
to claim
15,
wherein a
remote
control
operation
exist.
DeMello (EX1006)
A download server ISAPI Extension 78 is provided, which is an IIS
extension DLL that preferably handles the incoming requests to the
content servers 76. Id. at 9:6710:3.
Once user's PASSPORT.TM. credentials are authenticated (step 156),
a PASSPORT.TM. API is queried for the user alias and e-mail address
(step 158). Id. at 13:1724.
At step 7 the LIT file is downloaded by IIS to the end-user via HTTP.
When the download is complete, IIS will call back into the ISAPI DLL
78 to notify that the pending request was fulfilled and the connection
closed. The ISAPI 78 will then purge all temporary memory used
during step 5. Id. at 27:45-48.
Pestoni (EX1007)
[0032] . Content provider 104 is typically a remote device or
service from which protected (e.g., encrypted) content can be
obtained.
[0045] Domain request approval module 224 obtains and verifies that
the user credentials [by]accessing a remote service .
Claims 1820. Claim 18 says the API is connected to the GUI. As noted
above, Patent Owner admits the use of a GUI and API to access a web service is
well known. Also, DeMello teaches a reader that provides a prompt [a GUI] to
receive login credentials to authenticate the user with the PASSPORT server via an
API of the PASSPORT server (a verified web service). See Cherukuri Decl.
(EX1010) at Ex/ C. Pestoni also inherently uses a GUI, which would interface
with an API. See Cherukuri Decl. (EX1010) at 80. Thus, the API is connected to
- 47 -
U.S. Patent 8,533,860
a GUI as claimed. Claim 19 is the same limitation (secondary users) as claim 2
and is invalid for the same reasons.
Claim 20 adds wherein the digital content is shared with the secondary user
according to a period of time. DeMello shows a limit on activations tied to a
period of time. Id. at 23:4855. Pestoni shows rights restrictions on the amount
of time for playing content, and the validity of the license. [0080]. Since a
secondary user would require an additional activation, the sharing of content with
the secondary user is according to a period of time.
See Cherukuri Decl.
(EX1010) at Exs. C and D, claim 20.

C.
Ground 3: Claims 21-30 are unpatentable over DeMello (EX1006) in

combination with Wiser (EX1008).
D.
Ground 4: Claims 21-30 are unpatentable over Pestoni in combination

with Wiser (EX1008).
Grounds 3 and 4 are discussed together so that the same claim charts can be
used and fit within the page limits.
Claim 21. Claim 21 is a computer media claim similar to method claim 1,

with the differences marked in the claim chart below.
Claim 21 adds a
customization module which dependent claims 23 & 24 say allow the tagging of
content. Also, claim 21 limits the content to one of an application, a video, or a
video game.
- 48 -
U.S. Patent 8,533,860
Element [B] of claim 21 also differs from claim 1 by substituting the list of
verification tokens from claim 8 for the list of claim 1, and adding that the
verification token is handled by a user as a redeemable instrument. A redeemable
instrument includes a password or email for an e-commerce payment system (e.g.,
Amazon or iTunes):
Examples of the token include, and are not limited to, a
structured or random password, e-mail address associated
with an e-commerce payment system used to make an
authorization
payment,
or
other
redeemable
instruments of trade for access rights of digital media.

Examples of e-commerce systems are PayPal, Amazon
Payments, and other credit card services.
860 Patent (EX1001) at 8:45-51 (emphases added). A customization module is
described as follows in the 860 Patent:
According to an embodiment of the present invention, the
customization module 206 facilitates adding one or more of a
banner, a logo, an image, an advertisement, a tag line, a
header message and textual information to the user access
panel of the encrypted digital media.
Id. at 6:2633 (emphases added). From the context of allowing adding a logo or
advertisement, it is clear the user access panel is intended for the content provider
as the user, not the end-user.
- 49 -
U.S. Patent 8,533,860
Customization is a well-known concept for DRM distribution, and
applications and video are common types of content. DeMello, Pestoni and Wiser
all show these elements. DeMello, Pestoni and Wiser are all directed to digital
media content. All propose tagging the metadata of the digital media. A person of
ordinary skill in the art (POSA) looking to do additional tagging in DeMello or
Pestoni would look to Wiser, and vice versa. See also Cherukuri Decl. (EX1010)
at 95.
A user access panel (claim 24) simply means any software or interface
that allows modification of software or media by a user. This is inherent if a user
is able to modify the media by adding a tag.
Wiser discloses an online music distribution system with media player
related details and a voucher ID provided as part of a purchase request, similar to
DeMello & Pestoni. Also similarly, there is authentication and payment, and a
transaction ID is added to the media data file (metadata) that is delivered to the
purchaser. The media data file (metadata) also includes descriptive data such as
cover art image and a promotional graphics image (the image and
advertisement described in the 860 Patent customization, above. Wiser
customizes the media descriptive data (metadata) using an authoring tool and
database access module, which constitute the claimed customization module.
- 50 -
U.S. Patent 8,533,860
860 Patent

DeMello (EX1006)
[A] [1] 21. [A method for

content using a cloud system, the
cloud system comprising
connected modules in operation as
one or more of a cloud computing
or a cloud storage in connection
with devices and users] A
computer product comprising a
memory, a CPU, a
communications console and a
non-transitory computer usable
medium, the computer usable
medium having an operating
system stored therein, the
computer product further
comprising a customization
module, the computer product
content, wherein the digital
content is at least one of an
application, a video, or a video
game, wherein the digital content
encrypted, the computer product
[method comprising] configured to
perform the steps of:
DeMello describes customizing with an image

(copyright tag), and thus has a customization
module:
the meta-data 12 may include a copyright tag
. Whenever such tag is present, the client
(e.g., device 90 or 92 shown in FIG. 4) may
display to a user the text included in the tag.
Id. at 7:38.
Pestoni (EX1007): See claim 1[A].
A preferred embodiment of the invention is
described, which is directed to the processing
and delivery of electronic books, however, the
invention is not limited to electronic books
and may include all digital content such as
video, audio, software executables, data,
etc. Id. at 4:4349.
A customizing module allowing a user to tag
media is well-known. An example is:
Wiser (EX1008)
Media descriptive data 204 is text and
image data associated with the audio files.
These data include descriptive text, such as
title, artist, lyrics, and liner notes,
promotional art image data, and cover art
image data. Id. at 6:5962.
The authoring tool 102 [customization
module] is also used by the artist to enter the
media descriptive data 204, such as the artist's
- 51 -
U.S. Patent 8,533,860
name, song title, lyrics, and the like, as
previously described. Id. at 12:911.

access request from [at least one]
the communications console [of
the plurality of data processing
devices], the access request being
a read or write request of metadata
of the digital content, [wherein the
read or write request of metadata
is performed in connection with a
combination of at least one device
and the cloud system,] the
metadata of the digital content
being one or more of a database or
storage in connection to the
computer product, the request
comprising a verification token
[provided by a first user]
corresponding to the digital
content, [wherein the verification
token is one or more of a
password, e-mail address, payment
system, credit card, authorize
ready device, rights token, or one
or more redeemable instruments of
trade] the verification token is
handled by a user as a redeemable
instrument,
Database access module 1002: This module

manages all requests for data from the master
media file 120 and media information
database 106. The various other modules
interface with this module to retrieve, update,
create, or delete media data file 200, media
descriptive data 204. Id. at 20:5761.
See claim 11, element [B] above. The
metadata being storage is described, since
data is stored.
DeMello (EX1006)
In a preferred embodiment, the key is a
symmetric key 14A that is sealed with a
cryptographic hash of meta-data 12 or, in the
case of level 5 titles, with the public key of
the user's activation certificate. This key is
stored either as a separate stream in a substorage section of the eBook file (DRM
Storage 14 in the diagram) or, in the case of
level 5 titles, in the license. Id. at 6:4248.
the activation process, in addition to inserting
the PASSPORT ID into the activation
certificate,
also
storesstores
the
PASSPORT ID in the registry on the user's
computing device, Id. at 16:4649.
Pestoni (EX1007)
This element is shown above. See claim 1[B].
- 52 -
U.S. Patent 8,533,860
[B1] wherein the verification token comprises at least one of a
purchase permission, a rental permission, or a membership
permission, wherein the at least one of purchase permission, rental
permission, or membership permission being represented by one or
more of a tag, a letter, a number, a combination of letters and
numbers, a successful payment, a rights token, a phrase, a name, a
membership credential, an image, a logo, a service name, an
authorization, a list, an interface button, a downloadable program, or
the redeemable instrument;
[C] authenticating the verification token;
[B1] See
claim 8,
which
added this
element to
claim 1.
[D] establishing a connection with the communications

console ;
See claim 11,

element [C] above.
See claim 11,
element [D] above.
[E] requesting the at least one identification reference

credential, cookie, or key, or ID;
See claim 11,

element [E] above.
[F] receiving the at least one identification reference from

the communications console; and
[G] writing at least one of the verification token or the
identification reference into the said metadata.
See claim 11,

element [F] above.
See claim 11,
element [G] above.
Claims 2225. Claims 22 and 25 correspond to claims 2 and 9 above. The

elements of claims 23 and 24 were shown in claim 21 above. Thus, these claims
are invalid for the same reasons.
- 53 -
U.S. Patent 8,533,860
860 Patent
22. The computer product according to claim 21, wherein
the access request is a request from a first user, the first
user is a human user in operation of the computer product
and establishes first access to the digital content; and
wherein the access request is a request from a
secondary user, the secondary user is a human user in
operation of the computer product and establishes
secondary access to the same digital content as first
established for access by the first user.
the customization module customizes the tag.
the customization module customizes a user access panel.

the digital content is monitored for access using a
worldwide cloud system infrastructure, the worldwide
cloud system infrastructure comprising internet connected
modules in operation as computing and storage services in
connection to the computer product.
Prior Art
See claim 2 above.
See claim 21, element

[A1], above.
[A1], above. User
access panel is
inherent.
[A] above, also
describing a
worldwide cloud
infrastructure with
the same language.
Claim 26. Claim 26 describes connecting to a royalty scheme, which only

appears in this claim, but column 9 line 48 to column 10 line 2 of the 860 Patent
describes automatic royalty billing. Tracking royalties is a basic, well-known
concept for DRM distribution. DeMello and Wiser both show these elements.
DeMello describes paying royalties, and including a verification token
(purchaser name, PASSPORT ID) in metadata.
Pestoni describes a content
license, which is dependent on paying for the content, and the content provider
would obviously pay any royalties. Providing the ability to track purchases of
- 54 -
U.S. Patent 8,533,860
media for royalties is notoriously well known, and identifying the media with a
unique identifier is the obvious way to do this.
Wiser shows a royalty scheme tied to a DRM system, and in particular to a
certificate ID and voucher ID in a log file (metadata) associated with the content.
Wiser (EX1008) at 20:946. Wiser also customizes the media descriptive data
(metadata) using an authoring tool and database access module, which constitute
the claimed customization module. See id. at 6:5962; 12:911; 20:5761.
It would be obvious to combine DeMello or Pestoni and Wiser because both
relate to copyright-protected digital content data with metadata, and both refer to
royalties for such content data. A POSA looking to implement the royalty fees
referred to in DeMello would thus look to Wiser for the details of such a system.
Pestoni only describes a portion of a commercial system, and it would be obvious
to look to the royalty scheme of Wiser to add the needed royalty tracking. It would
be obvious to combine because both relate to DRM systems, and both use metadata
for permission information. See Cherukuri Decl. (EX1010) at Exs. C and D, claim
26.
- 55 -
U.S. Patent 8,533,860
860
Patent
26. The
computer
product
according
to claim 22,
wherein the
verification
token is
connected
to a royalty
scheme.

DeMello (EX1006). Royalties are described as a common payment
in the Background: This type of illicit document distribution may
deprive the author or content provider of royalties and/or income.
Id. at 1:3436.
Pestoni (EX1007). The content license inherently disclose a payment
of royalties:
[0003] . The content license permits the device to play back the
piece of content to the user.
Wiser (EX1008)
Rights Reporting:. This uploaded information describes the
number of times various media data files have been used to allow for
accurate reporting of such usage for the purpose of royalty
payments and other fees to the artists, owners, record labels and so
forth. These mechanisms allow music industry participants to
protect their copyrights [DRM] and could be used by rights
reporting agencies to bill distributors for royalties associated with
the volume of electronic distribution of the media data files. 11:4962.
Rights Reporting .
This logging protocol is used for making entries each time a media
data file is completely downloaded by the media player 116. The log
entry includes a timestamp, the track title, the artist name, the track
authors, the song length, the sale price, the certificate ID from the
media player 116, the voucher ID, the media data file name and a
descriptor for which audio image was downloaded. The logs are
uploaded to the media licensing center 110 on a periodic basis and
validated off-line by a batch process. Once validated, the purchase
information can be processed (e.g., totaled by artist, track, and the
like) to determine proper royalty or other payments based on sales
and previews. 20:9-46
- 56 -
U.S. Patent 8,533,860
Claim 27. Claim 27 describes the frontend agent, and is invalid for the
same reasons as claim 9 above.
860 Patent
27. The computer product according to
claim 25, wherein the access is allowed
according to a permission facilitated by
a web service working as a front-end
agent to the worldwide cloud system
infrastructure.
See claim 9, element [A1] above, which

also describes a front-end agent.
Claim 28. This claim simply says the computer product is one of a
plurality of devices. The computer product is set forth in claim 21 (referenced by
claim 25, from which claim 28 depends) as the web server which writes to the
meta data of the end user device. Even if the term devices was intended to cover
end user devices, both variations are shown in DeMello and Pestoni, as set forth in
the chart below. Since each reader connects to the Internet for sharing purposes,
the network of the user is shown.
860 Patent
28. The
computer
product
according to
claim 25,
wherein the
computer
product is a
device of a
plurality of
devices in a
The multiple user devices (readers) construction is shown:

DeMello (EX1006): In accordance with aspects of the present
invention, this object advantageously associates the activation
certificate with a persona, instead of a single PC, thus allowing each
persona to utilize multiple readers to read level 5 titles. 13: 3539.
Pestoni (EX1007): The domain membership license indicates that
the device is part of a domain that includes multiple devices
associated with a user of the device. Id. at Abstract.
The multiple servers construction is also shown:
DeMello: The personal computer or network server 20 may
- 57 -
U.S. Patent 8,533,860
network of
the user.
operate in a networked environment using another network

server, a router, a network PC, a peer device. Id. at 8:517.
Pestoni: [0013] one or more license servers
Claim 29. This claim corresponds to dependent claim 7 and is invalid for
the same reasons discussed above in Grounds 1 and 2.
Claim 30. This claim corresponds to dependent claim 17 and is invalid for
the same reasons discussed above in Grounds 1 and 2.
E.
Ground 5: Claims 17 and 30 are unpatentable over DeMello (EX1006)

in combination with Wiser (EX1008) and Cooper (EX1009).
Claims 17 and 30 are dependent on claims 15 and 29, respectively, and
simply say wherein a remote control operation exist. As described under claim
17 in ground 1 above, accessing a remote device, through a remote procedure call
or otherwise, satisfies this element. Cooper describes transferring electronic media
information over a public network with copyright [DRM] safeguards. Cooper
provides an explicit reference to the well-known use of remote procedure calls
listed as a method of communication. It would be obvious to combine Cooper
with DeMello because DeMello refers to a call, and both references relate to
network based content distribution. See Cherukuri Dec. (EX1010) at 103. As
described above, claim 15, from which claim 17 depends, is shown by DeMello,
- 58 -
U.S. Patent 8,533,860
and claim 29, from which claim 30 depends, is shown by DeMello combined with
Wiser.
860 Patent
17. The non-transitory
computer medium
wherein a remote
control operation exist.
30. The computer

product according to
claim 29, wherein a
remote control
operation exist.
See claim 15 above.

Cooper (EX1009)
A method and system for transferring electronic media
information over a public network in such a way as to
provide safeguards for inappropriate distribution of
copyright or otherwise protected materials are described.
Id. at Abstract.
[0042] The various components of the system may
advantageously communicate with each other and other
components comprising the respective computers through
mechanisms such as, by way of example, interprocess
communication, remote procedure call, distributed
object interfaces, and other various program interfaces.
See claims 17 and 29, above.
- 59 -

Unified Patents v. Grecia, IPR2016-00600

Hochgeladen von

Dokumentinformationen

Originaltitel

Copyright

Verfügbare Formate

Dieses Dokument teilen

Dokument teilen oder einbetten

Freigabeoptionen

Stufen Sie dieses Dokument als nützlich ein?

Sind diese Inhalte unangemessen?

Copyright:

Verfügbare Formate

Unified Patents v. Grecia, IPR2016-00600

Hochgeladen von

Copyright:

Verfügbare Formate

IPR2016-00600 Petition

U.S. Patent 8,533,860

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS INC.

MANDATORY NOTICES ........................................................................ - 1 A.

Real Party-in-Interest ....................................................................... - 1 -

Service Information, Email, Hand Delivery, and Postal .................. - 2 -

CERTIFICATION OF GROUNDS FOR STANDING ............................. - 2 -

OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ............... - 2 A.

Prior Art Patents and Printed Publications ....................................... - 3 1.

U.S. Patent No. 6,891,953 (filed on June 27, 2000 and

U.S. Pub. No. 2008/0313264 (filed on Jun. 12, 2007 and

U.S. Pat. 6,385,596 (filed Feb. 6, 1998 and issued May 7,

U.S. Pub. No. 20090037388 (filed Aug. 1, 2008 and was

Grounds for Challenge ..................................................................... - 4 -

OVERVIEW OF THE 860 PATENT ....................................................... - 4 A.

Priority Date of the 860 Patent........................................................ - 4 -

Summary of the 860 Patent ............................................................. - 5 -

Summary of Relevant Prosecution File History ............................ - 10 -

Person of Ordinary Skill in the Art ................................................ - 11 -

CLAIM CONSTRUCTION ..................................................................... - 11 A.

verified web service .................................................................... - 12 -

metadata of the digital content .................................................... - 13 -

two way data exchange session .................................................. - 13 -

a verification token corresponding to the digital content ..... - 14 -

PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A

Ground 1: Claims 120 are unpatentable as obvious over

Ground 2: Claims 120 are unpatentable as obvious over

Ground 3: Claims 21-30 are unpatentable over DeMello

Ground 4: Claims 21-30 are unpatentable over Pestoni in

Ground 5: Claims 17 and 30 are unpatentable over DeMello

U.S. Patent No. 8,533,860 to Grecia.

U.S. Patent No. 8,402,555 to Grecia.

U.S. Patent No. 8,887,308 to Grecia.

Grecia v. Amazon.com, No. 2:14-cv-00530 (W.D. Wash. Dec.

Sony Network Entertainment Intl v. Grecia, IPR2015-00422,

U.S. Patent No. 6,891,953 to DeMello et al., Prior Art under 35

U.S. Pub. No. 20080313264 to Pestoni, Prior Art under 35

U.S. Pat. 6,385,596 to Wiser, Prior Art under 35 U.S.C. 102(b)

U.S. Pub. No. 20090037388 to Cooper, Prior Art under 35

Declaration of Ravi S. Cherukuri & Exhibits AD

Unified Patents Inc. Voluntary Interrogatories

Service Information, Email, Hand Delivery, and Postal

CERTIFICATION OF GROUNDS FOR STANDING

OVERVIEW OF CHALLENGE AND RELIEF REQUESTED

claims 1-30 of the 860 Patent.

Prior Art Patents and Printed Publications

the America Invents Act (AIA). Accordingly, pre-AIA statutory framework

Grounds for Challenge

Decl.) (EX1010) requests cancellation of challenged claims 130 of the 860

OVERVIEW OF THE 860 PATENT

Priority Date of the 860 Patent

Although not listed on the 860 Patent or Certificate of

Summary of the 860 Patent

The alleged innovation of the 860 Patent is to obtain a

membership identification reference (e.g., Facebook ID) from a website providing

Claim 1 of the 860 Patent includes many alternative limitations, and is

Summary of Relevant Prosecution File History

under 103 over U.S. Pre-Grant Publication Number 2011/0288946 to Baiya

Baiya describes a content

Person of Ordinary Skill in the Art

broadest reasonable construction in light of the specification. See 37 C.F.R.

verified web service