iTakeaway: In an anticipation ground of unpatentability, it may be insufficient that the prior art discloses a feature that could “serve as” a claim limitation, as opposed to disclosing a feature that is that limitation.
In its Final Written Decision, the Board found that Petitioner had not shown by a preponderance of the evidence that claims 1-25 of the ‘072 patent are unpatentable.
The ’072 patent generally relates to “distributing and enforcing usage rights for digital works.” Specifically, the ‘072 patent seeks to prove “(1) . . . the owner of a digital work the flexibility to distribute the digital work as desired; and (2) a distribution system that transports a means for billing with the digital work.” The Board had instituted trial upon one ground of anticipation of claims 1-25 based on the EP ‘139 reference.
Turning to claim construction, the Board noted that the claims of an unexpired patent are to be interpreted according to their broadest reasonable interpretation in light of the specification. The Board analyzed the construction for the term “repository,” which appears in each independent claim of the ‘072 patent (claims 1, 10, and 18). Patent Owner proposed construing the term as “a trusted system for supporting usage rights.” In its Decision on Institution, the Board instead construed the term as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.” In the Final Written Decision, the Board adhered to the same interpretation set forth in the Decision on Institution.
In construing “repository,” the Board noted that the ‘072 patent provides an explicit definition for the term, but that some of the terms appearing in the definition, namely “physical, communications and behavioral integrity,” needed additional construction. Relying upon the specification, the Board provided the following constructions for the different “integrity” terms: “physical integrity” defined as “preventing access to information by a non-trusted system;” “communications integrity” as “only communicates with other devices that are able to present proof that they are trusted systems, e.g., by using security measures such as encryption, exchange of digital certificates, and nonces;” and “behavioral integrity” as “requiring software to include a digital certificate in order to be installed in the repository.”
The Board acknowledged that other portions of the specification were not entirely consistent with the construction, but stated that its construction was appropriate based on the totality of the evidence.
The Board then addressed Patent Owner’s objections to the Board’s interpretation of “repository” as being “too broad in one respect and too narrow in another.” On the one hand, Patent Owner argued that “behavioral integrity” was construed too broadly because it should be limited to “software that makes the repository operative.” The Board found Patent Owner’s arguments unsupported by the specification of the ‘072 patent and did not credit its expert’s testimony because it also did not account for disclosures in the specification that were contrary to Patent Owner’s position.
On the other hand, Patent Owner argued that “behavioral integrity” was construed too narrowly because the construction unnecessarily required a digital certificate. The Board was not persuaded for several reasons. The Board stated that the breadth of scope argued by Patent Owner was unsupported by the specification, noting that while the broadest reasonable interpretation is to be applied, “the construction must be reasonable in light of the specification.” Also, the Board found that Patent Owner’s proposed construction would render the claim scope uncertain and indeterminable because it was not “accompanied by any well-defined or otherwise recognized standard for making an objective determination.” Finally, the Board did not credit Patent Owner’s expert’s testimony because it was unexplained, conclusory, and did not account for the factors discussed by the Board.
Finally turning to the instituted ground of anticipation, the Board focused on the “document repository” limitation of independent claims 1, 10, and 18. In particular, the Board focused on the source computing system 10, 20 of EP ‘139 as allegedly constituting the claimed “document repository.” Patent Owner argued that the source computing system 10, 20 does not maintain “behavioral integrity” and therefore does not meet the claim limitation.
The Board dismissed two of Patent Owner’s arguments as relying upon Patent Owner’s unpersuasive contentions that “behavioral integrity” should be construed either more narrowly or more broadly.
The third argument related to an alleged lack of disclosure in EP ‘139 of a digital certificate. The Board found that while the EP ‘139 reference may disclose a feature that could “serve as” the required digital certificate, the reference nevertheless did not disclose that the feature itself was a digital certificate.
Thus, the Board found that independent claims 1, 10, and 18 are not anticipated by EP ‘139, and the remaining dependent claims were found not unpatentable for the same reasons.
ZTE Corporation and ZTE (USA), Inc., IPR2013-00133
Paper 61: Final Written Decision
Dated: July 1, 2014
Patent 7,523,072 B2
Before: Jameson Lee, Michael W. Kim, and Michael R. Zecher
Written by: Zecher
Related Proceeding: ContentGuard Holdings Inc. v. ZTE Corp., No. 1:12-cv-0206-CMH-TCB (E.D. Va.) (transferred to S.D. Cal.); IPR2013-00134 (U.S. Patent No. 7,225,160); IPR2013-00136 (U.S. Patent No. 7,359,884); IPR2013-00137 (U.S. Patent No. 6,963,859); IPR2013-00138 (U.S. Patent No. 7,139,736); and IPR2013-00139 (U.S. Patent No. 7,269,576)
