Takeaway: Petitioner was unable to prove unpatentability relying solely on anticipation that relied on inherent or implicit disclosures within the cited reference. The Board was not persuaded that certain elements of the claims were necessarily present in the reference.

In its Final Written Decision, the Board found that Petitioner did not prove claims 18-21, 25-28, and 31-36 of the ’576 Patent were unpatentable. The ’576 Patent relates to the distribution of digitally encoded works and the enforcement of usage rights.

The Board noted that the only ground instituted for trial was alleged anticipation of claims 18-21, 25-28, and 31-36 by EP ’139. The Board began its analysis with claim construction. The Board maintained the same interpretation for “repository” that it gave in its decision to institute. Petitioner did not provide an explicit construction for the term, and Patent Owner proposed “a trusted system for supporting usage rights” as the interpretation. The Board noted that the Specification provides a glossary which states that “[a] repository is a trusted system in that it maintains physical, communications and behavioral integrity.” The Board determined that by setting forth the term in a glossary and using the verb “is” following “repository,” the Specification sets forth an explicit definition, which the Board adopted. The Board further determined interpretations of the terms “a trusted system,” “physical integrity,” “communications integrity,” and “behavioral integrity” in the explicit definition of “repository.” These terms were described with the permissive terms “may” and “can,” and thus the Specification did not provide an explicit definition. Therefore, the Board reviewed the Specification and dictionaries to determine the most appropriate interpretation in light of all of the evidence.

Patent Owner argued that the Board’s interpretation of “repository” is too broad in one respect and too narrow in another. The Board determined that both arguments by Patent Owner were not adequately supported by the Specification. First, Patent Owner alleged that “behavioral integrity” should be limited to software referred to in the Specification as “repository software.” The Board determined that the portion of the Specification that the Patent Owner was relying on for its contention was only a single explanation of “repository,” and that other portions of the Specification referred to other uses of the repository that did not require the “repository software.” Specifically, those additional portions of the Specification described the repository as performing, running or executing digital content, and not merely as alleged by Patent Owner that it only manages the use and distribution of digital content. Thus, the Board determined that “behavioral integrity” should not be limited to software that only manages usage rights. Further, the Board did not credit testimony of Patent Owner’s expert, because the testimony did not account for the disclosure of the Specification discussed above.

Patent Owner also argued that “behavioral integrity” does not require the inclusion of a “digital certificate” to ensure integrity, and that it is only necessary that the repository is able to do what it is supposed to do. The Board determined that “behavioral integrity” was limited to the inclusion of a “digital certificate” because of the restrictive language used in the Specification, because no other means was described even though other means are known, and because if Patent Owner’s interpretation were used, the scope of the claims would be uncertain and indeterminable.

The Board then moved on to the proposed anticipation grounds of unpatentability. The Board determined that EP ’139 does not disclose the claimed “repository,” which was construed as discussed above based, at least partially, on the glossary of the Specification, because its disclosed system does not exhibit “behavioral integrity,” as that term was interpreted by the Board. Specifically, the Board agreed with Patent Owner that software decryption key AK in EP ’139 is not a digital certificate that authenticates the source of the software. Petitioner’s expert testified that the fact that a source coprocessor in EP ’139 must encrypt a right-to-execute and transmit that encrypted right to execute to a sink coprocessor means that the software must include a digital certificate to be installed in a repository. The Board found that the reasoning for this opinion was tenuous, because the question is not whether a decryption key under certain overall operating conditions can “serve as” or substitute for a digital certificate authenticating the source of a software, but whether a decryption key itself “is” a digital certificate.

The Board further determined that EP ’139 does not disclose “receiving the authorization object when it is determined that the request should be granted,” as recited in the independent claim. Based on its expert’s testimony, Patent Owner argues that Petitioner relies on the coprocessor of EP ’139 as the repository, and because temporary memory of coprocessor is a part of the coprocessor, software decryption key AK is already contained within coprocessor as the repository prior to determining whether token data is valid, and thus the “receiving” step is not satisfied. The Board agreed with Patent Owner’s argument.

ZTE Corp. and ZTE (USA) Inc. v. ContentGuard Holdings, Inc., IPR2013-00139
Paper 57: Final Written Decision
Dated: June 26, 2014
Patent 7,269,576 B2
Before: Jameson Lee, Michael W. Kim, and Michael R. Zecher
Written by: Lee
Related Proceedings: ContentGuard Holdings Inc. v. ZTE Corp. et al., No. 3:12-cv-01226 (S.D. Cal.); IPR2013-00133; IPR2013-0134; IPR2013-00136; IPR2013-00137; and IPR2013-00138