Sony Computer Entertainment America LLC v. Grobler Benjamin

1. Case Identification

• Case #: IPR2013-00076
• Patent #: 6,799,084
• Filed: December 31, 2012
• Petitioner(s): Sony Computer Entertainment America LLC
• Patent Owner(s): Benjamin F. Grobler
• Challenged Claims: 1, 4

2. Patent Overview

• Title: Data Vending System
• Brief Description: The ’084 patent describes an electronic data vending system that distributes copyrighted data, such as music, videos, and software, from a central "data depot" to multiple portable "data carriers." The system uses remote "data dispensing devices" and includes a database to track owner and possessor records for each carrier.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1 and 4 - Claims 1 and 4 are anticipated by Saigh under 35 U.S.C. §102(e).

• Prior Art Relied Upon: Saigh (Patent 5,734,823).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Saigh, which was not considered during prosecution, discloses every element of claims 1 and 4. Saigh describes an information distribution system with a central information bank ("data depot") and point-of-sale terminals ("data dispensing devices") that download data to portable storage cartridges ("data carriers"). For claim 1, Petitioner asserted Saigh’s use of a unique serial number, PIN, and password to activate and decrypt files on the carrier constitutes the claimed "key means" and "verification mechanism." For claim 4, Petitioner contended Saigh’s disclosure of a "rental" feature, where data on the cartridge is automatically erased or made inaccessible after a preset time, meets the "data renting and removing" limitation. Saigh's system also included a central transactional database that maintained user and device records, mapping to the database limitations of both claims.

Ground 2: Obviousness of Claim 1 - Claim 1 is obvious over Munyan in view of Saigh under 35 U.S.C. §103(a).

• Prior Art Relied Upon: Munyan (Patent 5,761,485) and Saigh (Patent 5,734,823).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Munyan discloses an online personal electronic book system that meets most limitations of claim 1, including a data depot (an online bookstore), a data carrier (the electronic book), a key means (a security identification code), and a verification mechanism (a security circuit). However, Munyan’s system lacks an intermediary "data dispensing device," as the electronic book connects directly to the online bookstore. Saigh explicitly teaches such a device in the form of a point-of-sale terminal that communicates with a central data bank to load data onto a portable carrier.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to combine these references to solve a known problem. At the time, widespread internet access was uncommon, making Munyan’s direct-connect system less practical for mobile users. A POSITA would have looked to known solutions like the data-vending kiosks taught by Saigh to improve the accessibility of Munyan’s system. Incorporating Saigh’s well-understood point-of-sale terminal into Munyan’s online book system was presented as a straightforward modification to create a more robust and commercially viable distribution network.
  • Expectation of Success: The combination involved applying a conventional data distribution method (kiosks from Saigh) to an existing content platform (online bookstore from Munyan). Because both references operate in the analogous art of electronic data distribution and solve related problems, a POSITA would have had a reasonable expectation of success in integrating them to yield the predictable result of a kiosk-based electronic book vending system.

Ground 3: Obviousness of Claim 4 - Claim 4 is obvious over Sachs in view of Saigh under 35 U.S.C. §103(a).

• Prior Art Relied Upon: Sachs (Patent 5,956,034) and Saigh (Patent 5,734,823).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Sachs, which describes an electronic publication distribution system, teaches the core elements of claim 4: a content database ("data depot"), a host computer ("data dispensing device"), and a portable electronic book with a unique serial number ("data carrier"). While Sachs provides a complete vending system, it does not explicitly disclose the "data renting and removing" feature of claim 4, where data is usable for a limited time and then deleted or scrambled. Saigh, however, expressly teaches this functionality. Saigh’s system includes a "point of rental storage media" with an automatic erasure mechanism that deletes information after a preset time interval expires, directly teaching the missing element.
  • Motivation to Combine: A POSITA would combine Sachs and Saigh to add a valuable and well-known commercial feature—rentals—to the Sachs system. The concept of renting time-limited content like videos was common. A POSITA seeking to enhance the Sachs electronic book system would have been motivated to incorporate Saigh’s rental and data-erasure mechanism to offer customers a lower-cost, temporary access option, a predictable and desirable business improvement.
  • Expectation of Success: Implementing a time-limit and auto-delete function, as taught by Saigh, into the electronic book system of Sachs would have been a straightforward technical task for a POSITA. Since Saigh already teaches this feature in the analogous context of a data vending system, its integration into the similar system of Sachs would have been predictable and successful.

• Additional Grounds: Petitioner asserted additional anticipation challenges against claim 1 based on Sachs and Katz, and against claim 4 based on Ackroyd. Petitioner also asserted other obviousness combinations, including Saigh/Sachs and Sachs/Ackroyd, which relied on similar technical mappings and motivations to combine.

4. Key Claim Construction Positions

• Petitioner argued that the term "key means" in claim 1 is a means-plus-function limitation under 35 U.S.C. §112, ¶ 6.
  • Proposed Function: Performing at least one of: activating/deactivating the data carrier for receiving data, and activating/deactivating the data carrier for releasing data.
  • Proposed Structure: A microprocessor linked to a hardware or software key configured with a software algorithm for performing the recited functions. Petitioner noted that the ’084 patent specification fails to disclose such an algorithm but proceeded with this construction for the purposes of the IPR. This construction was central to mapping prior art software keys and authentication routines to the claimed "key means."

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1 and 4 of the ’084 patent as unpatentable.