Apple Inc v. Achates Reference Publishing Inc

1. Case Identification

• Case #: IPR2013-00080
• Patent #: 6,173,403
• Filed: December 14, 2012
• Petitioner(s): Apple Inc.
• Patent Owner(s): Achates Reference Publishing, Inc.
• Challenged Claims: 1-12 and 17-19

2. Patent Overview

• Title: Method and Apparatus for Distributing Information Products
• Brief Description: The ’403 patent relates to a method for securely distributing and installing information products, such as software, using encrypted codes. The method involves decrypting a "launch code" to verify an "authentication code" before installing a product and managing rights through a modifiable encrypted "token."

3. Grounds for Unpatentability

Ground 1: Unpatentability over Ginter - Claims 1-12 and 17-19 are anticipated or obvious over Ginter, optionally in view of Beetcher.

• Prior Art Relied Upon: Ginter (5,949,876) and Beetcher (5,933,497).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ginter’s system for a Virtual Distribution Environment (VDE) discloses all limitations of claims 1-7 and 9-19 under 35 U.S.C. § 102. Ginter's encrypted "permissions record" (PERC), which controls access to electronic content, corresponds to the claimed "encrypted launch code" and "token." Petitioner asserted that the PERC contains digital signatures and validation tags that meet the "authentication code" limitation, and includes Object IDs and key blocks that serve as "indicia of information products." The process in Ginter of validating the PERC and subsequently registering the VDE object corresponds to the claimed "installing" step.
  • Motivation to Combine (for §103 ground on Claim 8): Petitioner argued claim 8 is obvious over Ginter in view of Beetcher. Claim 8 requires using the same key for initial decryption (string R) and subsequent token encryption (string T). While Ginter does not explicitly require this, Petitioner contended a POSITA would combine Ginter’s system with the teachings of Beetcher. A POSITA would combine these references because Beetcher teaches using a single, user-linked key for security, which provides the benefit of linking usage rights to a specific user—a goal also identified as important in Ginter.
  • Expectation of Success: A POSITA would have had a high expectation of success in applying Beetcher's single-key approach to the Ginter system, as both references describe analogous schemes for secure software distribution and linking access rights to end-users.

Ground 2: Anticipation by Beetcher - Claims 1-12 and 17-19 are anticipated by Beetcher.

• Prior Art Relied Upon: Beetcher (5,933,497).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Beetcher's scheme for controlling software installation and use anticipates all challenged claims under § 102. Beetcher's encrypted "entitlement key" was mapped to the "launch code" of claim 1. This key is decrypted using a "machine key" (string R) generated from the end-user's computer serial number. Petitioner argued that the machine serial number and an authorized version number, which are checked for a match, serve as the "authentication codes." The decrypted key information is then stored in a "product key table," which Petitioner mapped to the claimed "token." Crucially, Beetcher discloses that this product key table is later encrypted using the same machine key (string T) for storage, thereby anticipating claim 8's requirement that the keys be the same. Beetcher's process of checking entitlement and permitting software execution was argued to meet the "installing" limitation.

Additional Grounds

Petitioner asserted further anticipation and obviousness challenges against subsets of the claims (1, 2, 4, 5, 7, 9) based on Pettitt (5,864,620) and Bohannon (6,134,324). These references were argued to disclose analogous systems for software license management, with Pettitt using a license clearing house and Bohannon using a site configuration file to authorize software use.

4. Key Claim Construction Positions

• Petitioner argued that key claim terms should be construed consistent with Patent Owner's contentions in a concurrent litigation to show that the prior art met the claims even under those constructions. For example, "authentication code" was construed broadly as a "code used to infer the integrity of a message being sent."
• "Installing" was argued to mean "granting an end-user's computer access to an information product(s)." Petitioner asserted these constructions were central to mapping the prior art systems, which used digital signatures and enabled software execution, to the claimed limitations.
• The petition also noted that the phrase "said authorization code" in claim 1 lacks an antecedent basis, an ambiguity it argued should be considered by the Board when construing the claims.

5. Relief Requested

• Petitioner requests that the Board institute an inter partes review and cancel claims 1-12 and 17-19 of the ’403 patent as unpatentable.