iTakeaway: By setting forth a term in a glossary and using the verb “is” following the term, the specification sets forth an explication definition of that term.
In its Final Written Decision, the Board did not find any of challenged claims 1-5, 9-11, 15-17, 19, 21-33, 37, 38, 42-44, 46, 48-62, 66, 67, 71-73, 75, and 77-84 to be unpatentable. The ’859 patent relates to “distribution of and usage rights enforcement for digitally encoded networks” and, more particularly, to prevention of “the unauthorized and unaccounted distribution or usage of electronically published materials.”
Claim 1 (system), claim 29 (method), and claim 58 (computer readable medium) were the challenged independent claims. The remaining challenged claims were dependent claims. All of the challenged claims were alleged to be anticipated under 35 U.S.C. § 102(e) in view of Leroux.
As for claim construction, Patent Owner asserted that the term “repository” should be interpreted to mean “a trusted system for supporting usage rights.” Ultimately, the Board construed “repository” to mean “a trusted system which maintains physical, communications, and behavioral integrity, and supports usage rights.” The Board adopted this construction based on: the definition of this term in a glossary section of the specification; other related disclosure in the specification; a definition set forth in the ENCYCLOPEDIA OF CRYPTOGRAPHY 197 (1997); and the description of the acknowledged prior art. As summarized by the Board, “even applying the rule of broadest reasonable construction consistent with the specification, the weight of the evidence supports the definition provided in the glossary.”
Patent Owner, in reply, argued that the Board’s construction of “repository” was too broad in one aspect and too narrow in another. The Board disagreed, indicating that that Patent Owner’s argument overlooks and fails to discuss the portions of the specification that did not support Patent Owner’s interpretation, and not crediting the testimony of Patent Owner’s expert witness, because such testimony does not account for the disclosure in the specification inconsistent with Patent Owner’s proposed interpretation.
As for the anticipation position, the Board found that the combination of Leroux’s microcomputer 2 and removable carrier 4 did not correspond to the claimed “distributed repository.” According to the Board, and with reference to the Board’s construction for “repository” requiring “behavioral integrity,” “service center 1 [of Leroux] does not exhibit ‘behavioral integrity,’ and, thus, cannot correspond properly to the recited ‘another distributed repository.’” The Board also indicated that it was not persuaded that “the identification and authentication procedures used to interrogate the right of access associated with the software stored on removable carrier 4 necessarily includes a digital certificate that authenticates the source of the software.” The Board also found that “Leroux’s database service center 1 does not constitute the ‘another distributed repository,’ as recited by each of independent claims 1, 29, and 58,” because it was not persuaded that “a digital certificate is required necessarily to upload software from a software vendor into database service center 1.”
ZTE Corporation and ZTE (USA) Inc. v. ContentGuard Holdings, Inc., IPR2013-00137
Paper 58: Final Written Decision (FWD)
Dated: July 1, 2014
Patent 6,963,859
Before: Jameson Lee, Michael W. Kim, and Michael R. Zecher
Written by: Kim
Related Proceedings: ContentGuard Holdings Inc. v. ZTE Corp., No. 3:12-cv-01226 (S.D. Cal.); IPR2013-00133 (involving ContentGuard U.S. Patent No. 7,523,072); IPR2013-00134 (involving ContentGuard U.S. Patent No. 7,225,160); IPR2013-00136 (involving ContentGuard U.S. Patent No. 7,359,884); IPR2013-00138 (involving ContentGuard U.S. Patent No. 7,139,736); and IPR2013-00139 (involving ContentGuard U.S. Patent No. 7,269,576)
