PTAB

IPR2013-00134

ZTE Corp v. ContentGuard Holdings Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Digital Works Having Usage Rights and Method for Creating the Same
  • Brief Description: The ’160 patent relates to methods and systems for controlling the use of digital works. The invention describes a computer-readable medium containing a digital work that comprises a content portion, a usage rights portion with rules for rendering the content, and a "description structure" that associates the content with its corresponding usage rights.

3. Grounds for Unpatentability

Ground 1: Anticipation by EP 306 - Claims 1-2, 9, 12-13, 23, and 30-31 are unpatentable under 35 U.S.C. §102(b) as being anticipated by EP 306.

  • Prior Art Relied Upon: EP 306 (European Patent Publication No. 0 464 306).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that EP 306, which discloses a system for managing and rendering a structured electronic document (e.g., a book) according to embedded security and proprietary restrictions, teaches every limitation of the challenged independent claims. Specifically, Petitioner asserted that the "Parameter Table" shown in Figure 5 of EP 306 is the claimed "description structure." This table was described as a data structure containing a plurality of entries ("description blocks") that link specific parts of the digital work (address information) with corresponding usage rules specified by embedded tags (usage rights part), directly teaching the key limitation that was added to secure allowance of the ’160 patent. The embedded tags, based on Standardized General Markup Language (SGML), were argued to be the claimed "usage rights portion."
    • Key Aspects: This ground directly challenged the patent’s prosecution history by arguing that a single prior art reference taught the very "description structure" limitation that the Patent Owner had relied on to overcome prior art rejections.

Ground 2: Anticipation by EP 800 - Claims 1-3, 8-9, 12-13, 15-16, 20, 23, and 30-31 are unpatentable under §102(b) as being anticipated by EP 800.

  • Prior Art Relied Upon: EP 800 (European Patent Publication No. 0 567 800).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that EP 800, which is related to a reference from the original prosecution but was presented in a new light, also anticipates the claims for reasons similar to the EP 306 argument. EP 800 discloses a system for controlling the distribution of "softcopy books" using SGML tags to enforce usage rights, such as royalty payments. Petitioner mapped the "Loaded Parameter Table" of EP 800 to the claimed "description structure." This table was shown to include element coordinates (address information) that identify portions of the book and associate them with usage rights fields, such as royalty flags and validation data (usage rights part). Dependent claims related to usage fees were argued to be taught by EP 800's disclosure of royalty tags and corresponding fee amounts.

Ground 3: Obviousness over EP 306 and Perritt - Claims 2-4, 6-7, 15-18, 21, 25-26, and 34-35 are obvious over EP 306 in view of Perritt.

  • Prior Art Relied Upon: EP 306 (European Patent Publication No. 0 464 306) and Perritt (a 1993 paper titled "Knowbots, Permissions Headers and Contract Law").

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that EP 306 provides the base system for a digital work with a description structure and usage rights, as established in Ground 1. Perritt was asserted to teach a "permissions header" attached to digital works that flexibly specifies a wide variety of usage rights and associated economic terms. These terms, such as flat fees, volume-based fees, metered use fees (e.g., connect-time rate), and per-use fees, directly map to the limitations recited in the challenged dependent claims concerning different fee types and parameters.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine EP 306 and Perritt because both references address the same problem of protecting a copyright owner's interests in a digital work. A POSITA would be motivated to incorporate the flexible and varied economic models disclosed in Perritt into the foundational DRM system of EP 306 to provide a more robust and commercially versatile system.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining these teachings, as it involved applying known economic and rights-management concepts (from Perritt) to an existing data structure for managing digital rights (in EP 306).

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including EP 800 in view of Perritt; EP 306 and EP 800 in view of Wyman (Patent 5,260,999) for its teachings on license management systems; EP 306 and EP 800 in view of Porter (Patent 5,263,160) for its teachings on using pointers in data structures; and combinations further including admitted prior art on "mark-up prices."

4. Key Claim Construction Positions

  • "description structure": Petitioner argued that for the purposes of the inter partes review (IPR), the broadest reasonable construction of this term, based on the patent's specification, includes structures like a "description tree." This was defined as "a structure which describes the location of content and the usage rights and usage fees for a digital work." This construction was central to Petitioner's argument that the "Parameter Table" in EP 306 and the "Loaded Parameter Table" in EP 800, which link content location with usage rules, met this critical claim limitation.

5. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-38 of the ’160 patent as unpatentable.