Apple Inc v. Achates Reference Publishing Inc

1. Case Identification

• Case #: IPR2013-00081
• Patent #: 5,982,889
• Filed: December 14, 2012
• Petitioner(s): Apple Inc.
• Patent Owner(s): Achates Reference Publishing Inc.
• Challenged Claims: 1-4

2. Patent Overview

• Title: Method and Apparatus for Distributing Information Products
• Brief Description: The ’889 patent describes a method for securely distributing and installing multiple information products (e.g., software) on a user's computer. The method involves using cryptographic keys ("strings") to encrypt and decrypt authorization data ("launch code" and "token") which contains authentication codes and identifiers for the user and the products.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-4 under 35 U.S.C. § 102 over Beetcher

• Prior Art Relied Upon: Beetcher (Patent 5,933,497).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Beetcher discloses every element of claims 1-4. Beetcher describes a system for regulating software installation using an encrypted "entitlement key" that is provided to an end-user. Petitioner contended this entitlement key is the claimed "launch code." The machine key, generated from the end-user's machine serial number and used to encrypt and decrypt the entitlement key, was argued to be the claimed "string, R." Beetcher's entitlement key was said to contain an "authentication code" (a version number or the machine serial number itself), an "indicium of an end-user's identity" (the machine serial number), and indicia of multiple information products (entitlement flags for different software modules). Petitioner asserted that Beetcher's process of decrypting the entitlement key and updating permissions in a product lock table meets the "installing" limitation of claim 1. For claims 2-4, Petitioner argued that Beetcher’s rebuilding, re-encrypting, and storing of the entitlement key in a "product key table" on the user's machine constitutes the claimed creation and storage of an encrypted "token."
  • Key Aspects: The argument relies on mapping Beetcher’s hardware-linked authorization scheme directly onto the claim terms of the ’889 patent, asserting that Beetcher's "entitlement key" and "machine key" are functionally and structurally equivalent to the claimed "launch code" and "string, R."

Ground 2: Anticipation of Claims 1-4 under 35 U.S.C. § 102 over Bohannon

• Prior Art Relied Upon: Bohannon (Patent 6,134,324).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bohannon’s system for distributing software with discrete, individually encrypted portions anticipates all challenged claims. Bohannon discloses an encrypted "site configuration file" specific to each user, which Petitioner mapped to the claimed "launch code." This file contains a list of licensed products, authorized CPU-IDs, and encryption key codes, which Petitioner argued meet the claim limitations for an authentication code, end-user indicium, and indicia of multiple information products. Petitioner asserted that the encryption key used to encrypt and decrypt the site configuration file is the claimed "string, R." The final "installing" step of claim 1 was allegedly met by Bohannon's "loader module," which decrypts the site configuration file and installs the authorized software. For dependent claims 2-4, Petitioner contended that the site configuration file itself, when stored (encrypted or unencrypted) on the user's computer for reuse, constitutes the claimed "token."
  • Key Aspects: This ground centers on the argument that Bohannon's user-specific "site configuration file" is a single data structure that contains all the informational elements required by the claims' "launch code" and "token."

Ground 3: Obviousness of Claim 4 under 35 U.S.C. § 103 over Ginter in view of Beetcher

• Prior Art Relied Upon: Ginter (Patent 5,949,876) and Beetcher (Patent 5,933,497).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner first argued that Ginter anticipates claims 1-3 by disclosing a system using a "permissions record" or "PERC" (the claimed "launch code") to control access to electronic content. The PERC is encrypted and contains authentication codes (digital signatures), user information, and key blocks corresponding to different information products. However, Petitioner contended that Ginter does not explicitly teach that the key used for the initial encryption of the PERC ("string, R") is identical to the key used for re-encrypting the PERC for storage on the user's computer ("string, T"), as required by claim 4. Beetcher was introduced to cure this alleged deficiency.
  • Motivation to Combine: A POSITA would combine the teachings because both Ginter and Beetcher address the same problem of secure software distribution and share the goal of linking usage rights to a specific end-user. Beetcher was said to explicitly teach the benefit of using a single, user-specific key (i.e., the machine key) for both the initial publisher-side encryption and the subsequent user-side re-encryption of an entitlement key. Petitioner argued it would have been obvious to apply this known technique from Beetcher to Ginter's PERC system to achieve the same benefits of improved security and user-specific linkage.
  • Expectation of Success: A POSITA would have had a high expectation of success because implementing a single user-linked key as taught by Beetcher within the Ginter framework was a straightforward application of known cryptographic principles to improve a known system.

• Additional Grounds: Petitioner asserted additional anticipation and obviousness challenges, including that claims 1-4 are obvious over Beetcher in view of Ginter, Pettitt, and/or Bohannon; that claims 1-4 are anticipated or obvious over Pettitt (Patent 5,864,620) alone or in combination with other references; and that claims 1-4 are obvious over Bohannon in view of Beetcher and/or Ginter.

4. Key Claim Construction Positions

• Petitioner argued that the claims should be given their broadest reasonable construction but also demonstrated how the prior art meets the claim limitations even under the constructions Patent Owner advocated for in concurrent district court litigation.
• "installing": Patent Owner had asserted "installing" means "granting an end-user's computer access to an information product(s)." Petitioner argued that prior art systems like Beetcher, which control the execution of already-copied software via an entitlement key, meet this construction because access is only truly "granted" after successful authorization.
• "launch code" / "token": Petitioner addressed Patent Owner's proposed constructions (e.g., a "launch code" is "a password") by showing that prior art data structures like Beetcher's "entitlement key" or Bohannon's "site configuration file" functioned as passwords to unlock software and thus met the claim limitations.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-4 of the ’889 patent as unpatentable.