PTAB

IPR2013-00076

Sony Computer EntertainMent AmERICa LLC v. Grobler BenjaMin

Title: Data Vending System
Brief Description: The ’084 patent discloses an electronic data vending system for purchasing or renting copyrighted data such as music, videos, and computer programs. The system architecture comprises a central "data depot" (main computer), one or more remote "data dispensing devices" (e.g., kiosks), and portable "data carriers" onto which users download selected data.

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 limitation of the challenged claims. For claim 1, Saigh’s system allegedly meets the "key means" and "verification mechanism" limitations through its use of a unique serial number on a portable storage device, combined with a user's PIN and software keys, to decrypt and release downloaded files. For claim 4, Saigh’s disclosure of a data rental feature—where information is either deleted immediately after a rental period or made inaccessible and deleted later—was argued to teach the claimed "data renting and removing" functionality.
- Key Aspects: Petitioner emphasized that Saigh provides new, noncumulative prior art that directly addresses the very features that were identified as novel during prosecution and formed the basis for allowance of the ’084 patent claims.

Prior Art Relied Upon: Munyan (Patent 5,761,485) and Saigh (Patent 5,734,823).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Munyan discloses an online electronic book system with a data depot (an "on-line bookstore") and a data carrier (a "Personal Electronic Book") but lacks the claimed intermediate "data dispensing device." Saigh was argued to supply this missing element by teaching the use of point-of-sale terminals (kiosks) that function as data dispensing devices and communicate with a central data bank.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the systems of Munyan and Saigh. Petitioner argued that because widespread internet access was limited at the time, incorporating Saigh's well-known kiosk-based distribution model would have been a logical and obvious way to improve the accessibility and commercial reach of the online book system taught by Munyan. Both references are in the analogous art of electronic data distribution.
- Expectation of Success: Combining these known elements from analogous fields to enhance data distribution would have been a straightforward implementation yielding predictable results.

Prior Art Relied Upon: Sachs (Patent 5,956,034) and Ackroyd (UK Application No. GB 2,305,339).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that while Sachs discloses a comprehensive data vending system for electronic books, it does not explicitly teach the "data renting and removing" functionality recited in claim 4. Ackroyd was cited to teach this exact concept, describing a system for temporary data usage defined by a predetermined time, after which the data is erased or scrambled to inhibit further access.
- Motivation to Combine: A POSITA would have been motivated to add the data rental feature from Ackroyd to the electronic book system of Sachs. Data rental was a well-known business model for content like videos and games. Implementing this feature, as taught by Ackroyd, would have been a commonsense modification to increase the commercial options and functionality of Sachs's system.
- Expectation of Success: Applying Ackroyd's known data rental and removal technique to the Sachs vending system represented a simple combination of known elements for a predictable purpose and would have been expected to succeed.
Additional Grounds: Petitioner asserted additional challenges, including that claim 1 is anticipated by Sachs and Katz, and claim 4 is anticipated by Ackroyd. Further obviousness challenges were based on combining Saigh and Sachs.

The petition advanced a specific construction for the means-plus-function term "key means" in claim 1, which it identified as a critical limitation that led to the patent's allowance.
- Proposed Function: "Performing at least one of the functions selected from: activating the data carrier for receiving data, deactivating the data carrier for receiving data, activating the data carrier for releasing data, and deactivating the data carrier for releasing data."
- Disclosed Structure: "a microprocessor linked to a hardware or software key configured with a software algorithm for performing the functions." This construction was based on disclosure of a "hardware or software key linked to a microprocessor" and the use of PINs or passwords.
- Significance: Petitioner argued this construction was essential for its invalidity case, as it allowed prior art systems that use PINs, passwords, or encryption keys (like those in Saigh and Sachs) to be mapped directly onto this supposedly novel limitation.

Petitioner argued against discretionary denial of review under 35 U.S.C. §325(d) with respect to the Ackroyd reference. Petitioner acknowledged that Ackroyd was cited in an Information Disclosure Statement (IDS) during original prosecution. However, it contended that there was no evidence the examiner ever substantively considered Ackroyd's specific teachings regarding the "data renting and removing" feature of claim 4. By presenting a new argument focused on this specific teaching, Petitioner asserted that it was presenting Ackroyd "in a new light," making review appropriate.

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