Unified Patents Inc. v. Uniloc USA, Inc., IPR2016-01271, Paper 1 (June 29, 2016) (Petition)

7/25/2019 Unified Patents Inc. v. Uniloc USA, Inc., IPR2016-01271, Paper 1 (June 29, 2016) (Petition)

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IPR2016-01271 Petition

Patent 8,566,960

Filed on behalf of Unified Patents Inc.

By: Vincent J. Galluzzo, Reg. No. 67,830

Teresa Stanek Rea, Reg. No. 30,427

CROWELL & MORING LLP

1001 Pennsylvania Avenue, N.W.

Washington, D.C. 20004

Tel: (202) 624-2781

Email: [email protected]

Jonathan Stroud, Reg. No. 72,518

Unified Patents Inc.

1875 Connecticut Avenue, N.W., Floor 10

Washington, D.C. 20009

Tel: (202) 805-8931

Email: [email protected]

UNITED STATES PATENT AND TRADEMARK OFFICE

____________________________________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________________________________________

UNIFIED PATENTS INC.

Petitioner

v.

UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.

Patent Owners

IPR2016-01271

Patent 8,566,960

PETITION FORINTER PARTESREVIEW OFU.S. PATENT 8,566,960

CHALLENGING CLAIMS 125

UNDER 35 U.S.C. 312 AND 37 C.F.R. 42.104


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TABLE OF CONTENTS

I. MANDATORY NOTICES......................................................................................... 1

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

B. Related Matters.......................................................................................................... 1

C. Counsel......................................................................................................................... 2

D. Service Information, Email, Hand Delivery, and Postal.................................. 3

II. CERTIFICATION OF GROUNDS FOR STANDING....................................... 3

III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED....................... 3

A. Prior Art Patents and Printed Publications.......................................................... 3

B. Grounds for Challenge............................................................................................. 4

IV. INTRODUCTION......................................................................................................... 4

V. TECHNOLOGY BACKGROUND........................................................................... 6

A. License Management and DRM in General........................................................ 6

B. Validation of License Requests.............................................................................. 7

C. Enforcement of License Consumption Rules..................................................... 8

D. Transmission, Validation, and Registration of Device Identity................... 11

VI. OVERVIEW OF THE 960 PATENT................................................................... 13

A. Summary of the Alleged Invention..................................................................... 13

B. Level of Ordinary Skill in the Art....................................................................... 16

C. Prosecution History................................................................................................. 16

VII. CLAIM CONSTRUCTION...................................................................................... 17

VIII. SPECIFIC GROUNDS FOR PETITION.............................................................. 20

A. Ground I: Claims 1, 35, 8, 1822, and 25 are anticipated

byAbburi................................................................................................................... 21

1. Overview of Abburi.............................................................................................. 21

2. Claims 1, 22, and 25 are anticipated by Abburi........................................... 24

3. Claim 3 is anticipated by Abburi...................................................................... 35




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7. Claim 18 is anticipated by Abburi................................................................... 37

8. Claim 19 is anticipated by Abburi................................................................... 37

9. Claim 21 is anticipated by Abburi................................................................... 3810. Claim 20 is anticipated by Abburi................................................................... 38

B. Ground II: Claims 119 and 2225 are obvious over Gilder

in view ofHu and Goringe.................................................................................... 39

1. Overview of Gilder............................................................................................... 39

2. Overview of Hu..................................................................................................... 42

3. Overview of Goringe............................................................................................ 43

4. Claims 1, 22, and 25 are obvious over Gilderin view of Hu.................... 45

5. Claim 2 is obvious over Gilderin view of Hu............................................... 53







12. Claim 18 is obvious over Gilderin view of Hu............................................. 59

13. Claim 19 is obvious over Gilderin view of Hu............................................. 61

14. Claims 9 and 23 are obvious over Gilder in view of

Hu and Goringe..................................................................................................... 61


Hu and Goringe..................................................................................................... 64

16. Claims 10, 11, and 15 are obvious over Gilder in view of

Hu and Goringe..................................................................................................... 6617. Claims 12 and 16 are obvious over Gilder in view of

Hu and Goringe..................................................................................................... 67


Hu and Goringe..................................................................................................... 68

IX. CONCLUSION............................................................................................................ 68


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I. MANDATORY NOTICES

A. Real Party-in-Interest

Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. (Unified or

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. In this regard, Unified has submitted voluntary discovery. See

EX1046 (Petitioners Voluntary Interrogatory Responses).

B.

Related Matters

U.S. Patent 8,566,960 (the 960 Patent (EX1001)) is owned by Uniloc

Luxembourg S.A. and exclusively licensed to Uniloc USA, Inc. (collectively,

Uniloc or Patent Owners). See EX1047 (Complaint), at 7.

On May 30, 2016, Uniloc filed multiple lawsuits in the Eastern District of

Texas:

Uniloc USA, Inc., et al v. Amazon.com, Inc. et al,No. 2:16-cv-00570 (E.D.

Tex. filed May 30, 2016);

Uniloc USA, Inc., et al v. Google Inc., No. 2:16-cv-00571 (E.D. Tex. Filed

May 30, 2016);

Uniloc USA, Inc., et al v. Home Box Office, Inc.,No. 2:16-cv-00572 (E.D.

Tex. May 30, 2016);


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Uniloc USA, Inc., et al v. Hulu, LLC, No. 2:16-cv-00573 (E.D. Tex. Filed

May 30, 2016);

Uniloc USA, Inc., et al v. Netflix, Inc., No. 2:16-cv-00574 (E.D. Tex. Filed

May 30, 2016); and

Uniloc USA, Inc., et al v. Valve Corp., No. 2:16-cv-00575 (E.D. Tex. Filed

May 30, 2016).

Uniloc filed against, inter alia, Amazon.com, Inc., Google Inc., Home Box

Office, Inc., Hulu, LLC, Netflix, Inc., and Valve Corporation, claiming that certain

of these companies products or services infringe the 960 Patent. It is the sole

patent raised. The cases are in their early stages and no schedule or trial date has

been set. Uniloc also filed an earlier lawsuit on November 20, 2015 against

Electronic Arts Inc. related to the 960 Patent in Uniloc USA, Inc., et al v.

Electronic Arts Inc., No. 6:15-cv-01009 (E.D. Tex. Nov. 20, 2015). That lawsuit

was dismissed with prejudice on January 12, 2016.

C. Counsel

Vincent J. Galluzzo (Reg. No. 67,830) will act as lead counsel; Teresa

Stanek Rea (Reg. No. 30,427) and Jonathan Stroud (Reg. No. 72,518) will act as

back-up counsel.


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D. Service Information, Email, Hand Delivery, and Postal

Unified consents to electronic service at [email protected] and

[email protected]. Petitioner can be reached at Crowell & Moring

LLP, 1001 Pennsylvania Avenue, N.W., Washington, DC 20004, Tel.: (202) 624-

2781, Fax: (202) 628-8844 and Unified Patents Inc., 1875 Connecticut Avenue,

N.W., Floor 10, Washington, D.C. 20009, Tel.: (650) 999-0899.

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 an 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 125 of the 960 Patent.

A.

Prior Art Patents and Printed Publications

The following references are pertinent to the grounds of unpatentability

explained below:1

1The 960 Patent issued from a patent application filed prior to enactment of the

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


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1. U.S. Patent 7,203,966 (filed on June 27, 2001; published on April 10,

2007) (Abburi) (EX1002), which is prior art under 35 U.S.C.

102(a) and 102(e).

2.

U.S. Patent Application Publication 2008/0148363 (filed on

December 15, 2006; published on June 19, 2008) (Gilder)

(EX1003), which is prior art under 35 U.S.C. 102(e).

3.

U.S. Patent 7,752,139 (filed on December 27, 2005; published on July

6, 2010) (Hu) (EX1004), which is prior art under 35 U.S.C.

102(e).

4.

U.S. 7,707,115 (filed on July 25, 2002; published on April 27, 2010)

(Goringe) (EX1005), which is prior art under 35 U.S.C. 102(e).

B. Grounds for Challenge

This Petition, supported by the Declaration of Ivan Zatkovich (Zatkovich

Declaration (EX1031)), requests cancellation of challenged claims 125 as

unpatentable under 35 U.S.C. 102 or 103. See 35 U.S.C. 314(a)

IV.

INTRODUCTION

The inventor of the 960 Patent suggests that he invented DRM license

limitations in 2007, but DRM had been a well-researched and widely implemented

technology, both here and abroad, well before 2007. That was particularly true for

early versions of commercially available software. Early software companies


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like Microsoft, IBM, and Hewlett-Packardneeded to figure out how to limit the

number of people who could copy a purchased software program. See EX1002

(Abburi); EX1021 (Baratti); EX1024 (Harter); EX1025 (Cox); EX1010 (May);

EX1011 (Herington). That was also true for music, video, and text files, articles,

and many other forms of digital content, and was well understood by the

companies selling that digital contentlike Sony Pictures Entertainment. See

EX1014 (Singer); EX1015 (Singer Assignments Data).

As companies worked to manage and monetize digital content while

restricting or limiting piracy, they began to exercise simple rules-based limits on

the number of authorized devices on which software or content was available, well

before the critical date. See, e.g.,EX1021 (Baratti) at 1:1033 (discussing how the

advent of wide spread computer networks disrupted the traditional software

licensing model, and discussing the IBM License Use Management product

available in 1996).

One of the more widely known examples was implemented in Microsoft

Windows XP at least as early as 2001. See EX1059 (Technical Details on

Microsoft Product Activation), at 1. At the time, when a user desired to activate a

retail boxed copy of Windows XP, the user needed to provide two things: a

product ID and a hardware hash. Id. at 2. The product ID should be familiar to

anyone who installed software in the 2000s, taking the form, for example, 12345-


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123-1234567-12345. Id. The hardware hash was an 8-byte value automatically

created by running 10 different pieces of information from the [users] PCs

hardware components through a one-way mathematical transformation. Id. The

Microsoft servers then used these two values to process the users activation

request. Id.at 23. Other Microsoft examples prior to 2007 include copy-limited

licenses in, for example, Microsoft Windows Vista. See EX1060 (Volume

Activation 2.0 Guide), at 12.

Myriad other DRM and license management schemes resulted, many of

which included the basic abstract concepts claimed by the 960 Patent, both alone

and in combination. The 960 Patent was not novel, and was obvious in November

2007, in light of at least these myriad schemes. Claims 125 of the 960 Patent are

unpatentable in light of at least the grounds presented herein.

V.

TECHNOLOGY BACKGROUND

A. License Management and DRM in General

The technology discussed in this Petition generally relates to systems and

methods to enable the monitoring and adjusting of software usage under a software

license. EX1001 (960 Patent), at 1:1620. This is known as digital rights

management, or DRM, representing simple, abstract rules governing who can

access certain digital content. More specifically, the Petition discusses the

concepts of digital product license systems and how those systems (a) validate a


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license authorization request from a user and (b) control the number of devices

allowed to be used with a given product license at any given time.

DRM in its most general sense is a collection of technologies that enable

technically enforced licensing of digital information. EX1006 (Koenen), at 883.

At a minimum, a well-designed DRM system at the filing date of the 960 Patent

included three things: (1) control, or governance, via the use of programming

language methods executed in a secure environment; (2) secure association of

usage rules with the digital content throughout the lifecycle of the content; and (3)

persistent protection of the digital content throughout the contents commercial

lifecycle. Id. In laymans terms, that meant computer-coded rules limiting who

could use the product, in a secure environment, lasting the life of the product.

B. Validation of License Requests

In a general DRM scheme well before the 2007 filing date of the 960

Patent, license servers managed and distributed licenses for digital content to users

who requested them. Id. These license severs had to process license requests,

validate credentials from the requesting party, associate or bind the licenses

accordingly, deliver associated licenses to the requesting entities, and manage and

enforce license usage and subscription data. Id. Part of the validation of

credentials from the requesting party included validating information about the

requesting system environment and user contextincluding possibly


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personalization data, locale, system capabilities, security level or evidence of

current certification, and information about the content. Id.

A DRM scheme at that time would also generally validate the identity of

the requesting system (e.g., using a fingerprint based on characteristic attributes of

the specific system, or an indelible identifier or key). Id. Other information that

could be used for validation included device information such as a unique

identity, the unique identity of any removable secure memory or media associated

with it, . . . other functional and/or security-related capabilities of the device, as

well as device or removable storage hardware IDs. Id.at 889.

C.

Enforcement of License Consumption Rules

The license server would also enforce any consumption rules, such as

limitations on the number of plays or time-based usage or expiration. Id. at

888. To do this, a DRM system must support device interfaces and nonvolatile

state (such as copy and check-in/check-out counts) used to maintain compliance

with the rules. Id. DRM systems with such license consumption rules, including

count limits, were well-known in the art much earlier than 2007.

For instance, OConnor discloses a flexible licensing arrangement from

2001 that uses tokens to track the uses of a licensed software product. EX1007

(OConnor), at [0005], [0008]. A user has a maximum number of tokens that

the user can consume, which corresponds to the users license consumption. Id.at


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[0008]. When a user requests authorization to use a software product, a

monitoring system grants or denies permission based on the remaining available

tokens. Id.at [0009], [0021][0023], [0032]. If there are sufficient tokens, the

balance is reduced by the number of tokens consumed and permission is granted.

Id.at [0022]. If there are insufficient tokens remaining, permission is denied. Id.

The monitoring process also logs the user, computer, time, and other defining

characteristics for later use by the system. Id.at [0009].

Even earlier examples of count- or time-limited DRM systems developed

and patented by practicing entities include one from the Hewlett-Packard Company

in 1996, more than a decade before the filing date of the 960 Patent. EX1010

(May), at 9:5811:30. Hewlett-Packard developed another count-limited DRM

system roughly a decade laterstill prior to the date in question. EX1011

(Herington). Fuji Xerox Co., Ltd. also developed a count-limited DRM system at

least as early as 2006. EX1012 (Saito); see EX1013 (Saito Assignments Data).

Sony Pictures Entertainment Inc. developed a similar system at least as early as

2003. EX1014 (Singer); see EX1015 (Singer Assignments Data). A plethora of

other count- and time-limited DRM systems are disclosed in Andersson(EX1016),

Kley (EX1009), Lenard (EX1017), Muller (EX1018), Bourdev (EX1019), and

Takahashi (EX1020). In short, most modern systems are atavistic in their


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reversion to simple, abstract, long-practiced rules governing use and time limits

like a contract limiting resale.

It was also known in the art well before the 960 Patent was filed to have

flexible time- and count-limited consumption rules in DRM systems. Johnson

discloses one such solution from 2001 wherein a license monitoring and

authorization system allots a certain number of excess licenses to a user that is

used as needed. EX1008 (Johnson), at Abstract. The system ofJohnson includes

a License Allowance Component that maintains a count of the number of

available licenses compared to the number of purchased licenses, the allowance of

excess licenses permitted, and the number of licenses used from the allowance. Id.

at [0015].

When a user exceeds the license count, the License Allowance Component

sends a warning notification to the user and permits an additional number of

temporary licenses up to a second specified maximum license count. Id. at

[0019]. If a user meets that second specified maximum of temporary licenses,

the License Allowance Component refuses to grant any further licenses to the user.

Id. at [0020]. These temporary licenses are time-limited. If a user does not

submit payment for these temporary licenses before a specified period of time

ends, the License Allowance Component revokes allowance of those temporary


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licenses through a time bomb and suspends all temporary licenses. Id. at

[0023].

Still other DRM systems with flexible consumption rules were developed by

IBM Corp. at least as early as 1999, EX1021 (Baratti), and Avaya Inc. at least as

early as 2002, EX1005 (Goringe). Additional disclosures includeZunke(EX1022)

andFerrante(EX1023).

D.

Transmission, Validation, and Registration of Device Identity

When the 960 Patent was filed, it was known to transmit unique device

identification information, including physical parameters, to a license authority

as part of a user request for license authorization. Two of these solutions were

developed by IBM Corp. at least as early as 1998. See EX1024 (Harter), at 3:59

4:6; EX1025 (Cox), at Abstract, 5:814, 7:4965, 13:2414:4.

Kley, another such solution, discloses an automated system for upgrading a

hardware device and recovering a software license already registered with the

users previous hardware device. EX1009 (Kley), at Abstract. When a user

requests license authorization, the user provides license registration information

and identification, which is recorded for future use. Id.at 2:717, 3:5859. Part of

the identification information that the user provides is device-specific data unique

to the device such as a device fingerprint that is unique to a particular device.

Id. at 3:37, 3:3841. Kley provides several other examples of such device-


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specific data: a unique processor identification code; properties of the device

such as active ports and microprocessor type number; or any other types of

device-specific data. Id.at 3:822. The user then receives an unlock code that is

generated using that device-specific data. Id.at 1:5961.

Still other solutions in the art well before the 2007 filing date of the 960

Patent involved activating a user software license based on a globally unique

identifier generated from arbitrary pieces of the computers hardware (called a

hardware hash). EX1004 (Hu), at 1:2435. It was also well known to register

this hardware hash in combination with a software ID on a DRM server and to

compare future requests for license authorization to that software ID/hardware

hash unique combination to combat piracy. Id. at 1:2437. Some proposed

solutions similarly involved verification of an accessing users devices

microprocessor serial number, EX1026 (Cohen), at [0079], Media Access

Control (MAC) address, EX1014 (Singer), at [0078], or unique computer

serial number that is specific only to that computer, EX1023 (Ferrante), at 1:51

57.

Yet other relevant DRM and license management methods include Endoh

(EX1027) andNusser(EX1028).


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VI. OVERVIEW OF THE 960 PATENT

A. Summary of the Alleged Invention

The 960 Patent recognizes that digital product license systems commonly

control how many devices are allowed to be used according to the product license

sold to an individual customer or company. EX1001 (960 Patent), at 1:2225.

The 960 Patent also recognizes that various prior art solutions existed in

November 2007 for allocating a relatively high device to license ratio and

requiring users to turn off license rights on certain devices to free up licenses rights

for other devices. Id. at 1:4960. The 960 Patent states that these solutions

allegedly do not take in to consideration the normal attrition that occurs with the

purchase and upgrade of personal computing devices or the like. Id.at 1:6165.

The 960 Patent further discounts these solutions as plac[ing] an expectation on

the user to go through a number of involved steps to retain their rights to use the

software. Id.at 1:6567.

To address this purported problem, the 960 Patent describes a method for

allowing for a changing number of device installations on a per license basis over

time. Id. at 1:672:2. This method combines no more than the steps of (1)

verifying a license based on a device identity associated with the given device

and (2) setting a maximum number of devices authorized for use with the digital

product, otherwise known as a copy count or a device count. Id.at 2:1542.


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These steps, however, were already well known in the prior art, both separately

and in combination.

The 960 Patent describes a process where a device requesting license

authorization collects and sends unique device identifying information to an

authorization authority that checks that the license information is valid. Id. at

4:5662. If the license information is valid, the authorization authority determines

if the device exists in a database of prior authorizations. Id.at 5:15. If the device

identity exists in the database, the authorization authority authorizes the software

to run on the requesting device. Id. at 5:513. Figure 2 of the 960 Patent

illustrates this decision tree:

The 960 Patent consults a copy count when a device identity does not

exist in the database of prior authorizations. There, the authorization authority

queries how many successful authorizations for new devices have been allowed.

Id.at 5:1423. If the returned count is less than the maximum number of devices


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allowed, the authorization authority authorizes the software to run on the

requesting device. Id.at 5:2325. If the returned count is more than the maximum

number of devices allowed, the authorization authority denies authorization. Id.at

3335. Figure 2 of the 960 Patent illustrates this decision tree, which supplements

the decision tree depicted above:

As the prior art repeatedly demonstrates, however, the purported problems

solved by the 960 Patent were well known and studied, and the solutions to that

problem recited in the claims of the 960 Patent were well-known prior to the 960

Patent, including the concepts of DRM rules based on device identity and device

count, both individually and in combination.


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B. Level of Ordinary Skill in the Art

A person of ordinary skill in the art (POSA) for the 960 Patent would

have at least a bachelors degree in computer engineering, computer science, or a

related subject, and at least three years of experience working with digital rights

management, the access and distribution of licensed digital content, or the

equivalent. EX1031 (Zatkovich Declaration), at 23.

C.

Prosecution History

The960 Patent issued from U.S. Patent Application 12/272,570, which was

filed on November 17, 2008, EX1032 (File History, Application (11/17/2008)),

and claims priority to U.S. Provisional Application 60/988,778, which was filed on

November 17, 2007, EX1001 (960 Patent), at 1:711. The Examiner allowed the

claims in light of applicants arguments and amendment[2]

filed 11/16/2012.

EX1045 (File History, Notice of Allowability (9/3/2013)), at 3. The Examiner

appeared persuaded by the four arguments that the applicant presented in that

November 16, 2012 filing.3 EX1042 (File History, Response to Final Office

2 The applicant did not file any amendment on November 16, 2012. Petitioner

assumes this reference to amendment was a typo.

3 Petitioner notes that only the first of these arguments relates to a limitation

included in the independent claims of the 960 Patent. See EX1042 (File History,

(Continued...)


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Action (11/16/2012)), at 9. But as described in detail below, each of these

arguments relates to limitations (and indeed entire claims) that were well known at

the time that the 960 Patent was filed.

VII. CLAIM CONSTRUCTION

Claim terms of a patent in inter partes review are normally given the

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

42.100(b); Cuozzo Speed Techs., LLC v. Lee, 579 S. Ct. ____, 2016 WL

3369425, at *10 (June 20, 2016). 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.

physical parameters

The phrase physical parameters should be interpreted to mean identifying

characteristics of the machine or its component parts. The phrase physical

________________________

Response to Final Office Action (11/16/2012)), at 27. The other three arguments

made by the applicant relate to limitations in dependent claims 9 and 23, dependent

claim 20, and dependent claim 21, respectively. Id.


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parameters was not included in the specification4or claims as originally filed, but

was introduced by an amendment to claims 1, 22, and 25 to overcome a rejection

that the claim was obvious over Ahmad (EX1029) in view of Takano (EX1030).

EX1040 (File History, Amendment (8/5/2011)), at 2, 59.

The 960 Patent does not define the term physical parameters, but

describes that generating the device identity may also be described as generating a

device fingerprint and may entail the sampling of physical, non-user configurable

properties. EX1001 (960 Patent), at 9:3234. The 960 Patent then goes on to

provide non-limiting examples of such physical, non-user configurable

properties, including unique manufacturer characteristics, carbon and silicone

degradation and small device failures, chip benchmarking, degradation

measurements, physical, non-user-configurable characteristics of disk drives and

solid state memory devices, [d]evice parameter sampling, and damage

4 The terms used in the specification are physical, non-user configurable

properties, physical device parameters, physical, non-user configurable

characteristics, device parameter[s], machine or device parameters, and

machine parameters. EX1001 (960 Patent), at 9:3434, 3637, 5657, 63,

10:35, 11, 16, 21, 25, 31, 36, 41, 45, 49, 53, 57, 61, 65.


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measurement. Id. at 9:3639, 5457, 63; see id. at 9:3637 (Physical device

parameters available for sampling may include. . . . (emphasis added)).

The 960 Patent describes that those examples make up just a part of device

fingerprinting technologies described herein and provides a plethora of examples

of physical parameters, which the 960 patent describes in those examples as

machine or device parameters. Id. at 10:367. These examples range from

machine details to memory details to chassis serial number, among others.

Id. The proposed construction is consistent with the specification and the ordinary

use of the term physical parameters.

It would be improper to narrowly limit the term physical parameters to

require that the physical parameters be unique device identifying information

or non-user configurable. Claim 1 recites a device identity generated by

sampling physical parameters of the given device. Id. at 12:24. Claim 18

depends from claim 1 and recites where the device identity comprises unique

device identifying information. Id.at 13:1819.

The principle of claim differentiation presumes that a construction of

physical parameters requiring unique device identifying information is

improper. See Enzo Biochem Inc. v. Applera Corp., 780 F.3d 1149, 115657 (Fed.

Cir. 2015); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir.

2004);see also HM Elecs., Inc. v. 3M Innovative Properties Co., IPR2015-00491,


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Paper 35, at 19 (April 18, 2016) (routine). This presumption is not overcome here,

because there is no contrary construction dictated by the specification or

prosecution history, and the proposed construction is reasonable. See Seachange

Intl, Inc. v. C-COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005). The prosecution

history discussion of the phrase physical parameters is limited to the applicants

argument that a random number generated by a server cannot produce a device

identity generated by sampling physical parameters of the given device.

EX1040 (File History, Amendment (8/5/2011)), at 10.

Similarly, claim 19 depends from claim 18 and recites wherein the unique

device identifying information comprises . . . at least one non-user-configurable

parameter of the given device. EX1001 (960 Patent), at 13:2023. For similar

reasons, due to principles of claim differentiation, it is presumed that limiting the

physical parameters of claim 1 to non-user-configurable parameters would be

improper, and the presumption is not overcome here by the specification or

prosecution history. See Seachange, 413 F.3d at 1369.

VIII. SPECIFIC GROUNDS FOR PETITION

Pursuant to Rule 42.104(b)(4)(5), the following sections detail the grounds

of unpatentability, the limitations of the challenged claims of the 960 Patent, and

how these claims were therefore anticipated or obvious in view of the prior art.


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A. Ground I: Claims 1, 35, 8, 1822, and 25 are anticipated byAbburi

1. Overview of Abburi

Abburi discloses a DRM system developed by Microsoft Corp. at least as

early as 2001 that includes an enforcement architecture and method for

implementing roaming digital rights management. EX1002 (Abburi), at Abstract.

Figure 6 ofAbburi illustrates the basic concepts of that DRM system:


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In the Abburi DRM scheme, a user must request a digital content license

from a license server. Id. at 2:633:3, 3:3842; id. at 20:1721:6. The license

server only issues a license to a trusted machine, i.e., one that can authenticate

itself. Id.at 3:1719. The license server will thereafter issue a license to the user

only if the user provides a valid license signature. Id.at 3:3842; id.at 21:722.

The user must also provide other validating information by a Digital Rights

License, or DRL. Idat 22:6023:2, Fig. 8.

The license server uses the information in the DRL to validate the license

and allow or disallow access to the digital content by the user based on the given

license terms. Id. at 22:6023:2, 27:3947. This includes information about the

user and the users device, including computer and personal information and

identifiers. Id. at 30:4066. With this information, the license is

cryptographically bound to the requesting device by the license server. Id. at

3:674:3, 58:1215.

The DRM system of Abburi also includes a roaming service that allows a

license holder to access digital content across a number of computers. A user

enrolls with a license synchronization server and provides the synchronization

server with device identification for the desired roaming devices. Id.at 3:614:10.

The license synchronization server then provides copies of the users licenses to

the users registered devices and cryptographically binds those copy/replacement


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licenses to the users respective devices. Id.at 4:310. But there are limits on the

number of devices that can be licensed at any given time. Id. at 4:1115. The

DRM system ofAbburi also limits those copy/replacement licenses by setting a

relatively short-term expiration date that is different from the original

expiration date. Id.at 4:1928. Abburicalls this a decay. Id.

Many of the features disclosed inAbburiwere implemented in, for instance,

the 2006 licensing program Windows Vista Volume Activation 2.0 related to the

Microsoft Windows Vista product. SeeEX1060 (Volume Activation 2.0 Guide).

LikeAbburi, that licensing scheme allowed licenses limited to a specific number

of computers, mapped authorized computers to a specific licensing scheme and

activation, added a client machine ID (CMID) to a protected table upon

activation, included a first 180-day period wherein license renewal was required,

and included a second 30-day period wherein not renewing the license caused the

client machine ID to be removed from the protected table. Id.at 4, 8, 23.

On November 17, 2008, the applicant of the 960 Patent filed an Information

Disclosure Statement, which disclosed 22 prior art references, one of which was

Abburi. EX1033 (File History, Information Disclosure Statement (11/17/2008)), at

3. The applicant thereafter filed five Information Disclosure Statements,

disclosing 73 additional prior art references, before the Examiner acknowledged

receipt and consideration of Abburi. See EX1034EX1038. The Examiner


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acknowledged receipt and consideration of every one of these 95 prior art

references on the same day, April 20, 2011. EX1039 (File History, List of

References Cited and Considered (4/20/2011)). The applicant thereafter submitted

three more Information Disclosure Statements, disclosing an additional 148

references. See EX1041, EX1043, EX1044.

2. Claims 1, 22, and 25 are anticipated by Abburi

Independent claims 1, 22, and 25 of the 960 Patent recite essentially the

same invention. Claim 1 of the960 Patent recites an apparatus claim (a system

for adjusting a license) while claim 22 recites a method claim (a method for

adjusting a license). Claim 1 also contains additional limitations directed to the

communications module, processor, and memory of the apparatus. These

are not substantive differences in claim scope. Therefore, Petitioner considers the

patentability of claims 1 and 22 together for purposes of this Petition, except where

noted for those additional limitations.

Likewise, claim 25 recites a computer program for implementing the

apparatus and method recited in claims 1 and 22. Claim 25 simply adds the

limitation after an initial authorization of the digital product in the fourth clause

after the preamble. EX1001 (960 Patent), at 14:3541 (emphasis added). Apart

from that limitation, there are no substantive differences in claim scope.

Accordingly, Petitioner considers the patentability of claim 25 together with claims


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1 and 22 for purposes of this Petition, except where noted for that additional

limitation.

a)

A system[/method] for adjusting a license for a digital product over time

Abburi discloses a DRM system and method for implementing roaming

DRM whereby a license is distributed to a user but may be rebound to other

devices of the user. EX1002 (Abburi), at Abstract. Those copy/replacement

licenses are distributed by a synchronization server that sets the license to decay

over time. Id.at 4:1928.

In other words, each of those copy/replacement licenses has a second,

relatively short-term expiration date. Id. For example, permanent

copy/replacement licenses can expire in 30 days while temporary

copy/replacement licenses can expire in two days. Id.at 63:2430. Any suitable

expiration may be chosen. Id.at 63:3031. Thus,Abburi discloses this limitation.

b) the license comprising at least one allowed copy count corresponding to a

maximum number of devices authorized for use with the digital product

Abburi discloses a limit on the number of devices that may register to

receive copies of the license at any given time. Id.at 4:1113, 63:610. Abburi

also discloses multiple device counts. For example, there can be a maximum

number of temporary devices and a maximum number of permanent devices,

the counts of which may be enforced separately or together. Id. at 63:1123.


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These maximum numbers can be any suitable number of devices. Id.at 60:4649.

Thus,Abburi discloses this limitation.

c)

[a communication module] for receiving a request for authorization to

use the digital product from a given device

Figure 24 ofAbburi illustrates the communications network of the disclosed

DRM system, including the license synchronization server connected to the

communications network:


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Id. at Fig. 24; see also id. at 57:6558:1; 59:1113; Fig. 12. Through this

communications network, the synchronization server receives licensing requests.

Id.at 59:4163:32. Thus,Abburidiscloses this limitation.

d) a processor module in operative communication with the communication

module (claim 1)

Figure 12 of Abburi illustrates the general purpose computing system that

can be used to implement the DRM system disclosed inAbburi:

This general purpose computing system includes a processing unit 121 that

is coupled to the network I/F 153. Id. at 7:1315. Thus, Abburi discloses this

limitation.


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e) a memory module in operative communication with the processor module

and comprising executable code for the processor module (claim 1) / a

computer program product, comprising: a non-transitory computer-

readable medium(claim 25)

Figure 12 of Abburi illustrates the general purpose computing system that

can be used to implement the DRM system disclosed in Abburi. Id. at Fig. 12.

This general purpose computing system includes a system memory unit 122 and

hard drive 127 coupled to processing unit 121. Id.at 7:1318. Abburi discloses

that a number of programs, including application programs, program modules, and

program data for running the disclosed DRM system may be stored on the hard

drive 127 or system memory 122. Id. at 7:5054. Thus, Abburi discloses these

limitations.

f)

verify[ing] that license data associated with the digital product is valid

based at least in part on a device identity generated by sampling physical

parameters of the given device

The license that a user receives in the Abburi DRM system includes a

Digital Rights License, or DRL (red annotation added):


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Id.at Fig. 8;see also id.at 22:6023:2. The DRL includes information about the

users machine, including machine type, machine ID, name, authorization type,

authorization data, and details about the application requesting the license. Id.at

30:4558. The details of the DRL are illustrated in columns 3032 ofAbburi, but

particularly column 30 (red annotations added):

TheAbburi system uses this DRL in conjunction with other parameters, such as the

digital signature, to validate the license. Id.at 23:1526, 27:3947, Fig. 10.


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The DRL is made up of both physical parameters as well as information

that does not qualify as physical parameters. EX1031 (Zatkovich Declaration),

at 44, 45, 47, 48. Machine type is a characteristic of the users machine

because it is inherent in the users machine, the example in the excerpt above is set

to x86Computer. Id.at 48. Similarly, Machine ID is a characteristic of the

users machine because it is a designation of the users machine, the example in the

excerpt above is set to 3939292939d9e939. Id.at 45, 48. Both of these items

thus qualify as physical parameters as claimed in the 960 Patent. Id.at 44,

45, 47, 48. The DRL also contains additional information, such as application

name (set to Windows Media Player in the example above), application ID (set

to 2939495939292 in the example above), user name (set to Arnold Blinn in

the example above), and user ID (set to 39299482010 in the example above).

After initially acquiring the license, and the license being determined valid

by the DRM system ofAbburi, a user can activate a roaming service to allow that

license to be used on machines other than the machine initially authorized for use.

EX1002 (Abburi), at 57:4358:49. This roaming service uses a license

synchronization server that utilizes two databases to verify license requests: a user

account device store and a user account license store. Id.at 58:5658, Fig. 25.

The user account device store tracks a list of devices registered in the

roaming service, each device identified by a unique machine identification number.


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Id.at 58:5963. This is otherwise known as the machine ID, and may include

identifying information concerning each device, whether the device is a permanent

or temporary computing device, and a user-friendly shorthand name such as home

office or laptop. Id.at 59:6167. This machine ID, like the Machine ID in

the DRL, is a characteristic of the users machine because it is a designation of the

users machine. Therefore, this machine ID, like the Machine ID in the DRL,

qualifies as a physical parameter as claimed in the 960 Patent.

When a user activates the roaming service on a device, the user must provide

this unique identifying information for the computing device to the

synchronization server, whereby the synchronization server processes this

information for authorization. Id. at 59:3367. This unique identifying

information includes a unique machine ID of the device the user is using, id.at

68:1926, as the licenses of the Abburi DRM system are cryptographically

bound to the device for which the license is obtained. Id.at 3:674:3, 58:1215.


g) in response to the device identity already being on a record, allow[ing]

the digital product to be used on the given device

After the synchronization server of Abburi verifies the license data and the

information about the users machine, the synchronization server checks for the

machine ID of the device in the user account device store. Id.at 61:6164; id.at

68:1929. If the user is connecting from a device that has already been registered


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with the synchronization server (and therefore already has a device record in the

user account device store, id. at 58:5963), the synchronization server provides

updated copy/replacement licenses to the users device. Id.at 61:3142. These

copy/replacement licenses can now be used by the users machine. Id.at 60:31

35. Thus,Abburi discloses this limitation.

h)

in response to the device identity not being on the record, set[ting] the

allowed copy count to a first upper limit for a first time period, the allowed

copy count corresponding to a maximum number of devices authorized to

use the digital product (claims 1 and 22)

When the requesting user device has not previously registered with the

synchronization server of Abburi and requests license authorization, the

synchronization server recognizes that this is a new device by checking for the

machine ID of the new device in the user account device store. Id.at 61:4652.

At this point, the synchronization server checks to see if the maximum number of

devices is exceeded. Id. at 61:5253. Abburi discloses doing this by use of a

limit on the number of devices that may register to receive copies of the license at

any given time. Id.at 4:1113, 63:610. Abburi also discloses doing this by using

multiple device counts, id.at 63:1123, any of which can be set to a maximum

number equal to any suitable number of devices. Id.at 60:4649. Thus, Abburi

discloses this limitation.


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i) in response to the device identity not being on the record, set the allowed

copy count to a first upper limit for a first time period after an initial

authorization of the digital product, the allowed copy count corresponding

to a maximum number of devices authorized to use the digital product

(claim 25)

Abburi discloses that a user may initially request a license from a license

server. Id. at 2:633:3, 3:3842; id. at 20:1721:6. After that initial license

authorization, the user may activate the roaming service disclosed by Abburi

whereby the license obtained by the user can be shared among any number of

devices of the user. Id. at 57:4358:49. After activation of the roaming service,

the user can request licenses from the synchronization server of Abburi on new

user devices. Id.at 59:4360:63.

As discussed in the Section immediately above, when the requesting user

device has not previously registered with the synchronization server ofAbburiand

requests license authorization, the synchronization server checks to see if the

maximum number of devices is exceeded based on a device limit in effect at the

time of the license request. Id. at 4:1113, 61:4653, 63:610. Because the

request is through the roaming service, the time of the license request and the given

device limit are necessarily after the initial authorization of the original license. Id.

Thus,Abburidiscloses this limitation.


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j) calculat[e/ing] a device count corresponding to total number of devices

already authorized for use with the digital product

This roaming service of Abburi keeps track of registered devices by a user

account device store. Id. at 58:5658, Fig. 25. Each of these registered devices

has already been authorized to use the licenses activated in the roaming service.

Id.at 59:4363. The user account device store tracks a list of devices registered in

the roaming service, each device identified by a unique machine identification

number. Id.at 58:5963. When the synchronization server needs to calculate the

number of devices that have been registered, it references the user account device

store. Id.at 61:6562:1. Thus,Abburi discloses this limitation.

k)

when the calculated device count is less than the first upper limit,

allow[ing] the digital product to be used on the given device

When the calculated device count of the DRM system of Abburiis less than

the maximum number of devices allowed, the synchronization server adds the

requesting device to the user account device store. Id. at 61:6562:3.

Synchronization then proceeds, id. 61:5758, and the synchronization server

provides licenses and authorization to use the licensees to the requesting device.

Id.at 58:2144, 60:4463. Thus,Abburi discloses this limitation.


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3. Claim 3 is anticipated by Abburi

wherein the license data comprises information that may be used to verify

whether the license for the digital product is valid

The Abburilicense server only issues a license to a trusted machine, i.e.,

one that can authenticate itself. Id.at 3:1719. The license server will thereafter

issue a license to the user only if the user provides a valid license signature. Id.

at 3:3842, 21:722. The user must also provide other validating information by a

DRL. Id at 22:6023:2, Fig. 8. The DRL contains the license terms negotiated

with the user, id., and is used by the DRM system to validate the license and allow

or disallow access to the digital content by the user. Id. at 27:3947, Fig. 10.


4.

Claim 4 is anticipated by Abburi

wherein the record comprises an authorization database

The license synchronization server of the Abburi DRM system utilizes two

databases that the server uses to verify license requests: a user account device

store and a user account license store. Id. at 58:5658, Fig. 25. Thus, Abburi



wherein the first time period comprises a defined number of days after an

initial authorization of the digital product

The DRM system of Abburi allows a user to roam licenses after initial

authorization of those licenses. Id. at 58:1249. These roamed licenses fall into


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one of two categories: permanent device copy/replacement licenses or temporary

device copy/replacement licenses. Id. at 63:2426. Permanent device

copy/replacement licenses are set to expire in 30 days (although any suitable

period of time may be chosen for expiry) and temporary device copy/replacement

licenses are set to expire in two days (although any suitable period of time may be

chosen for expiry). Id.at 63:2630, 64:616. Because these roaming licenses are

granted through the roaming service, the given date of expiry is necessarily after an

initial authorization of the original license. Id. Thus, Abburi discloses this

limitation.

6.


wherein the processor module is adapted to, in response to the calculated

device count exceeding the first upper limit, deny the request for

authorization

When a user of the roaming service of the DRM system of Abburirequests

license authorization, the synchronization server checks to see if the maximum

number of devices has been exceeded. Id. at 62:1926. If the maximum number

of devices is exceeded, the synchronization server does not allow access to the

requested digital content. Instead, the synchronization server gives the user a

choice to wait until one of the utilized licenses expires or to actively revoke the

licenses on another device. Id.at 62:2634. This protocol is run and enforced by

the general purpose computing system that can be used to implement the DRM


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system disclosed in Abburi, which includes processing unit 121. Id. at Fig. 12.


7.


wherein the device identity comprises unique device identifying

information

When a user connects to the roaming service synchronization server, the

user must provide a unique identifier, such as a unique Machine ID of the device

the user is using and a unique Signer Name and Signer ID of the user signing the

license. Id.at 32:3637, 68:1926. Thus,Abburidiscloses this limitation.

8.


wherein the unique device identifying information comprises at least one

user-configurable parameter and at least one non-user-configurable

parameter of the given device

When a user of the roaming service of Abburi first connects to the

synchronization server, the user provides a unique Machine ID of the device the

user is using and a unique Signer Name and Signer ID. Id.at 32:3637, 68:2329.

If the synchronization server does not find the user in its user account database, the

synchronization server creates a new account for the user with the users Machine

ID and the users Signer Name and Signer ID. Id. Thus, Abburi discloses this

limitation.


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wherein the device identity is generated by utilizing a cryptographic hash

function on the at least one user-configurable and the at least one non-

user-configurable parameters of the given device

When a user of the roaming service of Abburi first connects to the

synchronization server, the user provides a unique Machine ID of the device the

user is using and a unique Signer Name and Signer ID. Id.at 32:3637, 68:2329.

These parameters are part of the DRL, which is used by theAbburi DRM system to

validate the license. Id. at 27:3947, 30:4050, 31:1120, 32:3637. The DRL

also includes authentication data (AUTHDATA) for the unique Machine ID that

utilizes the SHA-1 cryptographic hash function on that Machine ID. Id. at

30:4550 (setting AUTHTYPE as Intel Authenticated Boot PC SHA-1

DSA512); EX1061 (SHA-1), at 1. The DRL also utilizes the MD5

cryptographic hash function on the Signer Name and Signer ID. EX1002 (Abburi),

at 31:1120, 32:4445; EX1062 (MD5), at 1. Thus, Abburi discloses this

limitation.


wherein the device identity is generated by utilizing at least one

irreversible transformation of the at least one user-configurable and the atleast one non-user configurable parameters of the given device

As discussed immediately above, the DRM system ofAbburi uses the SHA-

1 cryptographic hash function on the Machine ID and the MD5 cryptographic hash


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function on the Signer Name and Signer ID. Abburi discloses that these hash

functions are one-way hash function[s]. EX1002 (Abburi), at 44:1422. Thus,

Abburi discloses this limitation.

B. Ground II: Claims 119 and 2225 are obvious over Gilderin view of

Hu and Goringe

1. Overview of Gilder

Gilder discloses a DRM system developed by NBC Universal, Inc. at least

as early as 2006 that allows a user to share digital content with other devices so

long as the number of devices authorized to use the digital content does not exceed

a maximum preset limit. EX1003 (Gilder), at Abstract, [0007], [0008], [0010].

Gilder does this by using a registry of content and devices enabled to play the

content. Id. This license registry database stores a device identity of licensed

and active devices, which ties the digital content and license to a particular device.

Id.at [0037].


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The general flow of the DRM system of Gilder is as illustrated in Figure 17:


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In a more detailed sense:

(1) the users client application gathers account information including user

identification and information on the users device, id.at [0066];

(2) the DRM system takes that user account and user device information and

checks the license registry database to make sure that the digital content license for

that user account and user device is valid, id.at [0066], [0067], [0071];

(3) the DRM system determines the license rights associated with the

requested digital content based on information about both the user and the device,

id.at [0066], [0067];

(4) if the license is valid, the requesting device is allowed to play the

requested digital content, id.at [0067];

(5) if the license is not valid (because there is no record in the license

registry for the given user account and user device identities), the DRM system of

Gilder initiates additional logic to verify whether to issue a license anyway,

including whether the user has exceeded the maximum permitted number of

authorized devices per the particular license restrictions at issue, id. at [0052],

[0055], [0067], [0068];

(6) if the number of copies does not exceed the maximum permitted number

of authorized devices, the user and device identifying information is added to the


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license registry and the requesting device is permitted to play the content or

otherwise access the digital content, id.at [0052], [0055], [0067], [0068]; and

(7) if the current device count exceeds the maximum number of devices

authorized to use the digital content, the DRM system will not issue a license to the

user for the content or the device, id.at [0067], [0069].

2. Overview of Hu

Hu discloses a DRM system that allows a user to move a digital content

license from one computer to another over time. EX1004 (Hu), at Abstract. Hu

does this by maintaining a database of user account information and identifiers of

computers licensed to use the software. Id. at Abstract, 3:513, 4:1217. In Hu,

when a user requests a license by providing account authentication information and

computer identification information to a license management server. Id.at 3:15

17, 4:2022. The license management server takes that information, authenticates

the license request, and makes a policy decision on the users license request. Idat

3:1721, 4:2226, 6:5561. That policy decision may be based on a maximum

number of computers or licenses that can use the software product at one time. Id.

at 6:647:16. The server then allows or allows or denies the license authorization

request from the user based on that policy decision. Id. at 3:2127, 4:2634, 7:19

27.


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Figure 2 ofHuis illustrative of the DRM system at a high level:

3. Overview of Goringe

Goringe discloses a DRM licensing system developed by Avaya Inc. that

allows a number of different license time periods with differing maximum number

of concurrent devices allowed during each license time period. EX1005 (Goringe)

at Abstract. Like the problem allegedly solved by the 960 Patent, the DRM

scheme of Goringe sought to solve the problem that arose when a customers usage

requirements vary periodically, yet sought to ensure that the customer did not

exceed the concurrent use restrictions set by the seller. Id.at 1:1830, 2:4655.

Goringe accomplishes this by using a Software License Schedule maintained on

a license server and stored in memory. Id.at 3:3147, Figs. 1, 2. An example of

that Software License Schedule is illustrated in Figure 2:


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The DRM system of Goringe implements the Software License Schedule

and periodic licensing scheme and restrictions by the general steps in Figure 4:


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As shown in Figure 4, when a user requests a license from the license server,

the license server determines which time period in the Software License Schedule

currently applies. Id. at 4:5660. The license server then determines the

maximum number of concurrent users authorized during the applicable time

period. Id. at 4:6064. As the DRM system of Goringe authorizes licenses, the

license server records and maintains the number of authorized concurrent users.

Id.at 4:6466. Thus, upon a license request, the license server determines whether

there is any remaining usage allowance for the request and grants, queues, or

denies the request based on a comparison of the current number of concurrent users

and the maximum allowed for the given time period. Id.at 4:665:25.

4.

Claims 1, 22, and 25 are obvious over Gilderin view of Hu

For the same reason as above with Abburi, Petitioner considers the

patentability of claims 1, 22, and 25 together for purposes of this Petition, except

where noted for the additional limitations in claims 1 and 25.

a)

A system[/method] for adjusting a license for a digital product over time

Gilderdiscloses a DRM system that allows a user to access licensed digital

content and share that digital content across a number of devices as long as a total

number of simultaneously accessible copies is below a certain limit. EX1003

(Gilder), at Abstract. The local registry of Gilder keeps track of the devices


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licensed to use the digital content over time. Id. Thus, Gilder discloses this

limitation.

b)

the license comprising at least one allowed copy count corresponding to a

maximum number of devices authorized for use with the digital product

The DRM system of Gilder limits the number of devices permitted to share

digital content to a total number of devices on which the content can be

simultaneously accessed. Id. at [0007], [0008]. Similarly, Gilderallows users

to create a copy of digital content so long as a total number of copies made by the

user remains below a desired limit. Id. at [0010]. The particular maximum

number of devices authorized can be any number desired. Id. at [0049]. Thus,

Gilderdiscloses this limitation.

c)

[a communication module for] receiving a request for authorization to

use the digital product from a given device

A user in the Gilder DRM system requests permission from a license

registry to access, play, or copy digital content. Id.at [0010], [0066]. The user

contacts the license registry server by a network, which the license registry server

uses to stay in contact with the user. Id. at [0034], [0036]. Thus, Gilder


d) a processor module in operative communication with the communication

module (claim 1)

The DRM system of Gilder includes one or more processors to receive

content, execute instructions for playing content, and process instructions and


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convey data. Id.at [0036], [0041]. These one or more processors interact with

the communications modules of the DRM system of Gilder to receive that content

and convey the necessary data. Id. at [0036]. Thus, Gilder discloses this

limitation.

e) a memory module in operative communication with the processor module

and comprising executable code for the processor module to (claim 1) /

a computer program product, comprising: a non-transitory computer-

readable medium (claim 25)

Along with the communications module and processor module, the Gilder

DRM system includes memory circuitry that communicates with the processor and

stores both configuration data for the device as well as content and applications for

execution by the processor. Id. at [0037], [0041]. Particularly, the memory

circuitry stores applications capable of executing the DRM schemes outlined in

Gilder, and may be provided by various sources. Id. at [0037]. Thus, Gilder

discloses these limitations.

f)

verify[ing] that license data associated with the digital product is valid

based at least in part on a device identity generated by sampling physical

parameters of the given device

The license registry database of Gilder stores information related to user

accounts, licensed or active devices, and other metrics used by the DRM system.

Id.at [0037]. This license registry database stores information related to licensed

or active devices by a device identity. Id. When a user of the Gilder DRM

system requests authorization to use the digital product, the users client


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application gathers account information including user identification and

information on the users device. Id. at [0066]. The DRM system then

determines the license rights associated with the requested digital product based on

that information about both the user and the device. Id.at [0066][0067].

Part of that includes an authentication process, in which the rights of the user

are verified. Id. at [0071]. More specifically, the users license rights are

verified by reviewing, among other things, device-identifying information, noted in

Figure 8 as DeviceID. Id. at [0071], Fig. 8. Thus, Gilder discloses this

limitation.

To the extent a narrow interpretation of the term physical parameters is

taken, and to the extent one could argue that Gilder does not disclose this

limitation, this limitation was well known at the time the 960 Patent was filed.

For example, Hu discloses that a user requests license authorization by sending

account identification information to the licensing server along with a

computer_id (computer identification information) that uniquely identifies the

computer on which the software is run. EX1004 (Hu), at 6:3135, 6:5561. Hu

discloses that the computer_id may be as simple as the MAC address of the

Ethernet card or more complex like, for example, a basket of hardware

identifiers such as motherboard and hard drive serial numbers. Id.at 6:3539.


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Given that the limitation was well known, it would have been obvious to a

POSA at the time the 960 Patent was filed to modify the DRM system of Gilderto

provide a computer_id including a MAC address or a basket of hardware

identifiers, such as motherboard and hard drive serial numbers, with a client

license authorization request to the licensing server such as taught byHu. EX1031

(Zatkovich Declaration), at 6065. A POSA would have looked to both Gilder

andHu as related art in a known, limited field of license management and DRM.

Id.at 5356, 60. Therefore, A POSA would have been motivated to incorporate

Hus computer_id into the user license rights verification process of Gilder to

add greater security and anti-piracy protections to Gilder over the machine ID

disclosed therein. Id.at 6062, 64.

Further, adding Hus computer_id to the DRM system of Gilder would

have been based on well-known concepts of adding increased security and anti-

piracy protections to DRM systems and does not involve modification of the

novel portions of Gilder. Id. at 6365. Thus, to the extent that Gilderfalls

short,Hu discloses this limitation.

g)

in response to the device identity already being on a record, allow[ing]

the digital product to be used on the given device

The license registry of Gilder includes a database that stores information

related to user accounts, licensed or active devices, licensed or active content, and

the number of copies currently authorized for play by the user, among other things.


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EX1003 (Gilder), at [0037]. When a user requests license authorization by, for

example, initiating playing of content, the DRM system of Gilder reviews that

license registry to determine whether a valid license is associated with the content

and the user and device:

Id.at Fig. 6, [0067]. If there is a valid license on the license registry, the device

is allowed to play the requested digital content. Id. at [0067], Fig. 6. Thus,

Gilderdiscloses this limitation.

h)

in response to the device identity not being on the record, set[ting] theallowed copy count to a first upper limit for a first time period, the allowed

copy count corresponding to a maximum number of devices authorized to

use the digital product (claims 1 and 22)

If the DRM system of Gilder does not find a valid license in the license

registry for the given user and device identifying information, the DRM system of

Gilder initiates additional logic to verify whether to issue a license. Id.at [0067],

Fig. 6. That additional logic determines if the user has exceeded the maximum

permitted number of authorized devices per the particular license restrictions at

issue at the given time. Id. at [0052], [0055], [0061], Figs. 3, 6. For example,


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Gilder discloses limiting the allowable number of float copy licenses if the user

has not synchronized with the license registry within a set amount of time. Id.at

[0061]. Thus, Gilder discloses this limitation.

l) in response to the device identity not being on the record, set the allowed

copy count to a first upper limit for a first time period after an initial

authorization of the digital product, the allowed copy count corresponding

to a maximum number of devices authorized to use the digital product

(claim 25)

In addition to the disclosures of Gilder discussed immediately above in

relation to claims 1 and 22 of the 960 Patent, Gilder further allows for float

copies, which are copies in excess of the permitted number of licenses per the

given license restrictions. Id.at [0052]. These float copies allow a user to at

least temporarily, transfer content to additional devices without having the device

that is relinquishing the license be on-line to give up its license for this

transaction. Id. at [0052], [0068]. The additional logic of Gilder that

determines if the user has exceeded the maximum permitted number of authorized

devices can also determine whether the user has also exceeded its maximum

number of float copies in excess of the maximum permitted number of

authorized devices. Id. The DRM system of Gilder does that by maintaining a

parameter called floatCount, which is variable and equal to the number of float

copies that currently have license authorization to access the digital content. Id. at

[0052].


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These float copies authorized in the DRM system of Gilder as well as the

float copy limit enforced at the given time, are necessarily after an initial

authorization of a very first copy of the digital content for that user. EX1031

(Zatkovich Declaration), at 51. Therefore, the maximum number of float

copies in excess of the maximum permitted number of authorized devices is a

first upper limit for a first time period after an initial authorization of the digital

product as recited in claim 25 of the 960 Patent. See id. Thus, Gilder discloses

this limitation.

i)

calculat[e/ing] a device count corresponding to total number of devices

already authorized for use with the digital product

To determine if a user has exceeded the maximum permitted number of

authorized devices or the maximum number of float copies in excess of those

permitted copies, the DRM system of Gilderchecks the number of copies of the

content made by the user on different devices in the local license registry.

EX1003 (Gilder), at [0055]. Thus, Gilderdiscloses this limitation.

j) when the calculated device count is less than the first upper limit,

allow[ing] the digital product to be used on the given device

The DRM system of Gilder compares the maximum permitted number of

authorized devices against the current number of devices authorized to use the

digital product. Id. at [0055]. If the number of copies does not exceed the

maximum permitted number of authorized devices, the user and device identifying


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information is added to the license registry and the users device is permitted to

play the content or otherwise access the digital content. Id.at [0055], [0067],

Figs. 3, 6.

The DRM system of Gilder also compares the maximum number of float

copies with the current number of float copies designated by the parameter

floatCount, if the user is permitted float copies per the given license restrictions

Id. at [0052]. If floatCount does not exceed the maximum number of float

copies authorized, the user and device identifying information is added to the

license registry and the users device is permitted to play the content or otherwise

access the digital content. Id.at [0052], [0068], Fig. 6.

Thus, Gilder discloses this limitation.

5. Claim 2 is obvious over Gilderin view of Hu

wherein the digital product comprises software

Gilder discloses a DRM system that allows a user to purchase, license or

otherwise obtain digital content and to play the content on a variety of devices. Id.

at Abstract. One of skill in the art at the time the 960 Patent was filed would have

understood that the digital content referred to in Gilder includes software.

EX1031 (Zatkovich Declaration), at 57. Thus, Gilder discloses this limitation.

To the extent one could argue that Gilderdoes not disclose this limitation,

this limitation was well known at the time the 960 Patent was filed. For example,


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Hu discloses a method and system for software license management that allows a

user to access a software license and move that software license from one

computer to another over time. EX1004 (Hu), at Abstract. The digital content or

digital product inHu is software. Id.

Given that the limitation was well known, it would have been obvious to a

POSA at the time the 960 Patent was filed to modify the DRM system of Gilderto

also manage digital products that are software. EX1031 (Zatkovich Declaration),

at 5759. A POSA would have looked to both Gilder andHu as related art in a

known, limited field of license management and DRM. Id. at 57, 58.

Therefore, a POSA would have been motivated to modify the DRM system of

Gilder to manage software digital products. Id. at 59. Further, adding Hus

management of software digital products to the DRM system of Gilder would have

been based on well-known concepts and does not involve modification of the

novel portions of Gilder. Id. at 5759. Thus, to the extent that Gilderfalls

short,Hu discloses this limitation.

6. Claim 3 is obvious over Gilderin view of Hu

wherein the license data comprises information that may be used to verify

whether the license for the digital product is valid

The license registry of Gil

Unified Patents Inc. v. Uniloc USA, Inc., IPR2016-01271, Paper 1 (June 29, 2016) (Petition)

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Transcript of Unified Patents Inc. v. Uniloc USA, Inc., IPR2016-01271, Paper 1 (June 29, 2016) (Petition)